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Scott Coulthart

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No Use? No Worries: ETO Brand Wins Back Its Mark

When ETO Group (formerly ETORO Group) lost its “ETO” trade mark in a non-use battle before IP Australia, most would have assumed the fight was over … but it wasn’t.

The Delegate had ruled that “ETO” hadn’t been used in Australia for the relevant three-year period — a fatal finding under s 92(4) of the Trade Marks Act 1995.

But ETO appealed. And when the non-use applicant — ETO Gruppe Technologies GmbH — filed a submitting notice and the Registrar declined to appear, the Federal Court stepped in to set things straight.

The decision: ETO Group Pty Ltd v ETO Gruppe Technologies GmbH [2025] FCA 1253 (Markovic J, 15 October 2025)

⚖️ A Procedural Reversal — and a Lesson in Persistence

Under s 104 of the Trade Marks Act 1995 (Cth), a non-use appeal to the Federal Court is a hearing de novo. The Court “stands in the Registrar’s shoes” and considers the matter afresh, not merely reviewing for error.

But what happens when no one contests the appeal?

Markovic J followed a clear line of authority from Hungry Spirit Pty Ltd v Fit n Fast [2020] FCA 883 and Thomas v Monsoon Group Pty Ltd [2025] FCA 911:

The Court may reverse a delegate’s decision without a full merits hearing — provided there’s “no self-evident reason” not to.

In other words, if the non-use applicant walks away and the Registrar doesn’t object, the Court can reinstate the mark, so long as there’s no obvious factual or legal barrier.

🏷️ The Facts in a Nutshell

  • The ETO mark (No. 1683956) was registered in Class 36 for “investment and brokerage services” since 2015.

  • ETO Group operates a licensed forex and CFD trading platform — under the corporate name ETO Group Pty Ltd and brand ETO Markets.

  • Evidence showed use of “ETO” on promotional materials, stationery, client agreements, and financial disclosure documents — enough to suggest ongoing commercial use, even if some activity involved brand variations (like “ETO Markets”).

🧩 Why the Court Stepped In

Markovic J found no self-evident reason not to reverse the delegate’s decision, noting:

  1. The non-use applicant (ETO Gruppe) no longer wished to prosecute its case.

  2. The Registrar didn’t intervene.

  3. There was some evidence of genuine use in Australia.

Accordingly, the appeal was allowed, the delegate’s decision was set aside, and the non-use application was dismissed. Costs were left open for written submissions.

💡 IP Mojo Take

This one’s more procedural than punchy — but it’s important.  It shows that even if a delegate removes your mark for non-use, all is not lost:

  • Appeals aren’t just for errors. A de novo hearing resets the board.

  • Submissions matter. If the other side files a submitting notice, the Court can restore your mark without re-litigating use.

  • Use evidence still counts. The Court must still be satisfied there’s no “self-evident” reason to uphold removal.

In short: if your opponent drops their challenge, your mark can live to fight another day.

⚙️ Practical Takeaways

  • Always retain use evidence — even peripheral or mixed-brand material can prove vital.

  • If you win on procedure, you still win — the Register is restored.

  • And if you’re the non-use applicant? Think carefully before walking away. You might hand victory back to the brand owner.

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Cards Against Humanity Plays the Non-Use Card — And Loses

When “Cards Against Humanity” tried to scrub “Cards Against Humidity” from the Trade Marks Register, the battleground was section 92(4)(a) of the Trade Marks Act — non-use and intention to use.

The applicants argued that the local owners never really intended to use the Cards Against Humidity parody-style mark and hadn’t done so.

However, the Delegate reminded us of a long-standing principle: filing itself is prima facie evidence of intent to use. Even a single act of use, if genuine and convincing, can be enough to keep a mark alive.

The opponent produced evidence — workshops, printed materials, testimony from participants — sufficient to show the Cards Against Humidity mark wasn’t a pure squatting play.

Result: Cards Against Humanity’s removal action failed.

Why it matters

  • Non-use isn’t automatic — opponents must prove both lack of intent and lack of use.

  • Minimal use can suffice — one bona fide act may keep a mark registered.

  • Evidence discipline — declarations, workshop flyers, even attendee testimony, all counted.

💡 IP Mojo Take

The decision (Cards Against Humanity v Cards Against Humidity [2025] ATMO 201) shows how low the bar can be to defend against non-use removal.

For applicants, it’s a reminder not to assume a quirky parody mark is vulnerable just because the evidence of use looks thin.

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Where in the World Is Patent Infringement?

Scidera v MLA and the Offshore Method Problem

What happens when half your invention lives in the cloud — or, worse, on another continent?

That’s the question Rofe J has just (on 10 October 2025) refused to shut down in Scidera, Inc v Meat and Livestock Australia Ltd (No 2) [2025] FCA 1236.

The decision keeps alive a fascinating issue: can you infringe an Australian method patent when some of the steps happen overseas?

The background: cows, code and cross-border science

Scidera holds a patent for a method of identifying genetic traits in cattle by analysing single-nucleotide polymorphisms (SNPs) — essentially, genetic markers associated with desirable characteristics like feed efficiency or milk yield.

Zoetis, a major player in animal genetics, collects biological samples from Australian cattle but ships them to its US affiliate for lab testing on Illumina “SNP Chips”. The raw genetic data are then transmitted back to Australia, where they’re integrated into local systems to produce breeding-value reports for Australian farmers.

Scidera sued, alleging that this end-to-end process uses its patented method in Australia, even though the “wet-lab” work is performed offshore.

Zoetis’s strike-out strategy

Zoetis sought summary dismissal of all infringement claims, arguing that:

  1. All essential integers of the claimed method occur in the US — specifically the physical SNP testing — so nothing is “used” in the patent area as required by s 13 of the Patents Act 1990 (Cth); and

  2. Allowing an “in-substance” or “partial” use theory would contradict the territorial limits of Australian patents.

If one step happens in Missouri, they said, there’s simply no infringement in Mudgee.

Scidera’s reply: the trait inference matters

Scidera countered that the patent is not limited to laboratory steps. The act of identifying or inferring the trait — which occurs when Australian data are processed into EBV and ABV reports — is part of the claimed method itself.

On that view, the relevant exploitation occurs in Australia, even if some earlier testing work is done abroad. Scidera also invoked UK authority such as Menashe v William Hill and Illumina v Premaitha, where courts adopted an “in-substance” approach to cross-border method claims.

The Court: too novel for summary execution

Rofe J agreed that Zoetis’s application raised a novel question of law never before determined in Australia:

“Whether all the essential integers of a claimed method or process must be performed within the patent area for there to be infringement of said method or process claim that does not result in a product.”

Her Honour wasn’t persuaded that Zoetis’s narrow, “all-steps-in-Australia” construction was obviously correct. Citing Beach J’s earlier reasoning in Meat & Livestock Australia v Cargill Inc (2018) 129 IPR 278, Rofe J noted that the patent claimed “a method for identifying (or inferring) a trait” — not merely the physical act of testing DNA.

Because the alleged infringing process also included domestic analysis and reporting steps, and because claim construction and common-general-knowledge issues required expert evidence, summary dismissal was inappropriate.

Zoetis’s application was dismissed with costs.

The legal heartbeat: territoriality vs technology

Section 13 of the Patents Act grants the patentee the exclusive right to “exploit the invention” within the patent area — Australia. For product claims, that’s simple: you make or sell a thing here.

But for method claims, exploitation means using the method. When the method’s steps span jurisdictions — as in distributed computing, AI pipelines, or biotech testing — where exactly does “use” occur?

Zoetis urged a hard territorial rule: unless every essential step happens in Australia, there’s no infringement.

Scidera urged a functional test: if, in substance, the method is put into effect here, that’s enough.

Rofe J didn’t decide between them — but by letting the case proceed, she signalled that Australian law may yet evolve beyond the rigid “all integers here” rule.

Why it matters

This skirmish goes far beyond cattle genotyping. It has implications for:

  • Cloud computing and AI – where model training or data processing occurs overseas.

  • Medical diagnostics – where patient samples are analysed offshore, but reports are issued locally.

  • Software as a Service – where code execution crosses borders invisibly.

If the Court ultimately accepts Scidera’s reasoning, offshoring one step won’t guarantee safety from infringement — especially where the commercial benefit and control remain in Australia.

💡 IP Mojo Take

Cross-border collaboration is the new normal, but patent boundaries still cling to old-world geography.

Scidera v MLA may become Australia’s test case for digital and distributed inventions, forcing courts to define where a “method” actually happens when its neurons fire on different sides of the planet.

The takeaway for innovators and counsel:

  • Map your process flow against territorial rights, not just claim language.

  • Offshoring may reduce cost but not always risk.

  • And when a patent claim uses the word “comprising”, expect the court to look at the whole method, not just the bit that happens in the lab.

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Legacy Protects Its Legacy: Iconic Charity Defeats Opportunistic Slogan

“Leave a Legacy, Not a Lost Life.” It sounds noble — but when filed as a trade mark for charitable fundraising and counselling, it ran into an immovable obstacle: LEGACY, the century-old Australian veterans’ charity.

Legacy opposed under section 60 of the Trade Marks Act 1995 (Cth), pointing to its towering reputation: over a hundred years of service to veterans’ families, national campaigns like Legacy Week, coins, stamps, and even a tunnel named in its honour.

The Delegate agreed. The evidence showed LEGACY is a household name and an Australian icon. The slogan would cause real confusion, especially as both parties operated in the same charitable and counselling space.

Why it matters

  • Reputation wins — even without deceptive similarity, s 60 protects iconic marks.

  • Charitable space is no free-for-all — opportunistic filings will be blocked.

  • Public interest dimension — where a mark is part of national heritage, confusion is not tolerated.

💡 IP Mojo Take

Legacy’s centenary case reinforces that reputation is the most powerful weapon in opposition. If your brand is iconic, s 60 is your shield.

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Privacy’s First Big Hit: Australian Clinical Labs Fined $5.8 Million for Data Breach Failures

When 86 gigabytes of patient data — including health, financial and identity information — hit the dark web after a ransomware attack, the fallout was always going to be brutal.

Now, in Australian Information Commissioner v Australian Clinical Labs Limited (No 2) [2025] FCA 1224, the Federal Court has handed down a $5.8 million penalty — marking the first civil penalty judgment under the Privacy Act.

And it’s a warning shot for every business holding personal information in Australia.

⚖️ The Case in a Nutshell

Australian Clinical Labs (ACL) — one of the country’s largest private pathology providers — bought Medlab Pathology in late 2021.

What it didn’t buy (or even check properly) were Medlab’s crumbling IT systems: unsupported Windows servers, weak authentication, no encryption, and logs that deleted themselves every hour.

In February 2022, the inevitable happened — a ransomware group calling itself “Quantum” infiltrated Medlab’s servers, exfiltrated 86GB of data, and dumped it online.

ACL’s response was painfully slow. Despite early signs of exfiltration, it:

  • Relied almost entirely on an external consultant’s limited review;

  • Concluded (wrongly) that no data had been stolen;

  • Ignored early warnings from the Australian Cyber Security Centre; and

  • Waited over three months before notifying the OAIC.

🧩 The Breaches

Justice Halley found ACL had seriously interfered with the privacy of 223,000 individuals through three major contraventions of the Privacy Act 1988 (Cth):

  1. Breach of APP 11.1 — Failure to take reasonable steps to protect personal information from unauthorised access or disclosure.

    • The Medlab systems were riddled with vulnerabilities.

    • ACL failed to identify or patch them after acquisition.

    • Overreliance on third-party providers compounded the problem.

  2. Breach of s 26WH(2) — Failure to carry out a reasonable and expeditious assessment of whether the incident was an eligible data breach.

    • ACL’s “assessment” was based on incomplete data and unsupported assumptions.

    • The Court called it unreasonable and inadequate.

  3. Breach of s 26WK(2) — Failure to notify the Commissioner as soon as practicable after forming the belief that an eligible data breach had occurred.

    • ACL delayed nearly a month after confirmation that personal and financial information was on the dark web.

Each breach amounted to a “serious interference with privacy” under s 13G, attracting civil penalties.

💰 The Penalty Breakdown

ACL agreed to pay a total of $5.8 million:

Contravention Section Penalty
Breach of APP 11.1 (223,000 contraventions, treated as one course of conduct) s 13G(a) $4.2 million
Failure to assess breach s 26WH(2) $800,000
Failure to notify OAIC s 26WK(2) $800,000
Total $5.8 million

ACL also agreed to pay $400,000 in costs.

While the theoretical maximum exceeded $495 billion, the Court accepted the agreed penalty as being within the permissible range — particularly given ACL’s cooperation, remorse, and post-breach reforms.

⚙️ “Reasonable Steps” — The New Legal Standard

This judgment finally gives judicial colour to APP 11.1’s “reasonable steps” requirement.
Justice Halley said reasonableness must be assessed objectively, considering:

  • the sensitivity of the information;

  • the potential harm from unauthorised disclosure;

  • the size and sophistication of the entity;

  • the cyber risk landscape; and

  • any prior threats or attacks.

Critically, “reasonable steps” cannot be outsourced — delegation to an IT vendor does not discharge responsibility.  ACL’s overreliance on StickmanCyber was no defence.

🚨 Why It Matters

This decision rewrites the playbook for privacy compliance in Australia:

  • Civil penalties are real — the OAIC now has judicial precedent for enforcement.

  • Each affected individual counts — the Court held that each person’s privacy breach is a separate contravention.

  • “Serious” breaches will be taken seriously — health and financial data, inadequate security, and systemic failures will all tip the scales.

  • M&A due diligence must cover cybersecurity — buying a business means inheriting its data liabilities.

  • Notification delays will cost you — the OAIC expects “as soon as practicable,” not weeks or months.

💡 IP Mojo Take

Privacy can’t be treated anymore like it is just a paperwork exercise — it’s a governance test you can fail in the Federal Court.

This case cements privacy law as a compliance discipline with teeth.

The OAIC now has a roadmap for future actions — and the Court has made clear that “reasonable steps” means measurable, auditable, and proactive security governance.

For corporate Australia, this is ASIC v RI Advice for the health sector — but under the Privacy Act instead of the Corporations Act.

Expect to see:

  • Increased OAIC enforcement in healthcare, finance, and tech sectors;

  • Board-level scrutiny of data protection measures; and

  • Class actions waiting in the wings, armed with a judicial finding of “serious interference with privacy.”

The privacy bar has just been raised — permanently.

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Damages or Profits? The Federal Court Forces Patentees to Choose

How long can a successful patentee delay the choice between damages and an account of profits?

In VMS v SARB (No 13) [2025] FCA 1078, Justice Burley confronted that very question — and ordered the patentee to make its election within 21 days.

The dispute

  • Vehicle Monitoring Systems (VMS) had succeeded on parts of its patent infringement case against SARB and the City of Melbourne.

  • The trial judge retired; the case was remitted for pecuniary relief.

  • VMS wanted to delay electing between damages and profits until after more evidence was in.

The ruling

  • Justice Burley held that while patentees should make an “informed choice”, that doesn’t mean indefinite delay.

  • Guided by Island Records v Tring and Australian cases (LED Builders, Australian Mud Company), the Court balanced:

    • Patentee rights: not forced to gamble in the dark.

    • Court efficiency: s 37M Federal Court Act requires just, quick, inexpensive resolution.

  • Result: VMS ordered to elect within 21 days.

Why it matters

  • For patentees: Don’t expect to hold off forever — the Court wants efficiency.

  • For infringers: Push for early election to limit procedural drag.

  • For practitioners: Timing of election is now firmly part of litigation strategy, not just an end-of-trial formality.

Takeaway

This case sharpens the line between informed choice and delay tactics.

The Court’s message is clear: patentees must choose their remedy earlier than many may have hoped.