Registering Too Broadly Costs You: Potentia Capital's Trade Marks Partially Removed

Registering Too Broadly Costs You: Potentia Capital's Trade Marks Partially Removed

Broad trade mark specifications look attractive on paper — maximum coverage, maximum protection. But breadth comes at a price: if you can't show genuine use across the full scope of your registration, a determined competitor can carve away the parts you haven't used. For Potentia Capital, a high-profile private equity firm, this lesson played out in a set of partial removal proceedings that saw its trade mark specifications substantially narrowed.

Background: Two Companies, One Name

Potentia Capital Pty Ltd is a well-established Australian private equity firm managing over $3 billion in assets under management. Founded in 2014, it has held POTENTIA trade marks continuously since late 2015 and built a genuine reputation in the private equity sector through investments in companies such as Ascender, Micromine, Education Horizons, CompliSpace, and Commerce Vision.

Potentia Energy Group Pty Ltd — as its name suggests — operates in the energy sector. Wanting to use the POTENTIA name for energy services, it filed three applications for partial removal under section 92(4)(b) of the Trade Marks Act 1995, targeting the specifications of Potentia Capital's three registered marks: a POTENTIA device mark (TM 1765727, Class 36), a POTENTIA word mark (TM 1963877, Classes 9, 16, 35, 41, 42), and a POTENTIA word mark in capital letters (TM 1997304, Classes 10, 42, 44).

Potentia Capital's Evidence

Potentia Capital mounted a substantial defence. Its General Counsel, Stacey Kelly, filed a declaration with 34 annexures covering LinkedIn profiles, website evidence, portfolio company information, fund documentation, and investor materials. The evidence of genuine commercial activity was comprehensive and credible.

The problem was not the quality of the evidence — it was the scope of the registrations compared to what the evidence actually showed.

The Decision: Use Proven, But Not Everywhere

Delegate Anne Makrigiorgos undertook a class-by-class analysis of each registered specification. The conclusion was consistent across all three marks: Potentia Capital had genuinely used POTENTIA for financial and investment services related to private equity — but had not demonstrated genuine use across the much broader range of goods and services specified in the registrations.

Specifications covering Classes 9 (software/technology goods), 16 (printed materials), 35 (broad business services), 41 (education and training), 42 (technology services), 44 (medical services), and 10 (medical devices) were not supported by evidence of actual use in those areas. Potentia Capital's business is private equity — its evidence was strong there, and nowhere else.

The registrations were partially removed and the specifications restricted to goods and services consistent with private equity investment activity. The registrar's discretion was considered but not exercised for the removed goods and services.

High Stakes, Both Sides Represented by Counsel

The proceedings were significant enough that both parties retained senior counsel — Luke Merrick KC for Potentia Capital and Andrew Sykes of Counsel for Potentia Energy Group, with Allens and Hamilton Locke as the respective instructing firms. The fact that parties of this calibre were fighting over specification breadth underscores a commercial reality: over-broad trade mark registrations can create bottlenecks for entirely different businesses operating under similar names in unrelated sectors.

Practical Takeaways

• Register what you use — not what you might one day use. A specification that extends far beyond your actual business activities is vulnerable to partial removal. Broader is not always better.

• Review your specifications as your business evolves. If you registered broad classes years ago and your business hasn't expanded into those areas, consider whether you need to consolidate or whether you're comfortable defending those specifications in non-use proceedings.

• Comprehensive evidence of use in your core business does not protect unrelated areas. Strong evidence of private equity services will not protect a registration covering medical devices or education software. Use must be demonstrated class by class, service by service.

• Over-broad registrations can create real problems for legitimate third parties. The trade mark system works best when registrations reflect genuine commercial activity. Speculative broad filings distort the register and invite exactly this kind of challenge.

Citation: Potentia Capital Pty Ltd v Potentia Energy Group Pty Ltd [2026] ATMO 134 (17 July 2026)

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