Chen v Xiamen Xiaoyuyao Trading Co., Ltd

[2025] ATMO 57

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Linfei Chen to registration of trade mark application number 2391579 (class 27) - YIMOBRA - in the name of Xiamen Xiaoyuyao Trading Co., Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Remarkable IP

Applicant: Kings Patent & Trade Marks Attorneys Pty Ltd

Decision:

2025 ATMO 57

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 42(b), 58, 60 & 62A claimed – s 62A established – registration refused

Background

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] brought by Linfei Chen (‘Opponent’) to registration of the trade mark detailed below filed in the name of Xiamen Xiaoyuyao Trading Co., Ltd (‘Applicant’):

   Trade Mark: YIMOBRA (‘Trade Mark’)

   Number:2391579

   Filing Date:     26 September 2023 (‘Relevant Date’)

   Specification: Class 27: Carpets; Rugs; Area rugs; Bath mats; Shower mats; Door mats; Floor mats; Non-slip bathtub mats; Non-slip shower mats; Chair mats; Rubber mats; Plastic bath mats; Textile floor mats; Automobile carpets; Beach mats; Gymnastic mats; Personal exercise mats; Personal sitting mats  (‘Applicant’s Goods’)

   [1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of acceptance of the application for possible registration on 27 February 2024, the Opponent filed a Notice of Intention to Oppose the registration on 8 April 2024, following by a Statement of Grounds and Particulars (‘SGP’) on 15 April 2024.  After obtaining an extension of time, the Applicant filed a Notice of Intention to Defend on 29 May 2024.

3. The parties then had an opportunity to file evidence in accordance with the Regulations. A declaration made by the Opponent on 29 August 2024, with Exhibits LC-1 to LC-20, was filed as evidence in support of the opposition. No other evidence was filed in the proceedings.

4. Once the time for filing evidence had ended, the parties were able to request a hearing.  The Opponent requested a decision without a hearing and the Applicant did not ask to be heard.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks and I do so based on the aforementioned materials. 

   Grounds, onus and Relevant Date

5. The Opponent’s SGP nominates grounds of opposition under ss 42(b), 58, 60 and 62A.

6. The onus of proof in an opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The rights of the parties are to be determined at the Relevant Date being both the filing date and priority date of the application.[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

   Opponent’s Evidence

7. Chen declares that he is one of two majority shareholders and the Supervisor of Yiwu Ligao Technology Co Ltd (‘Opponent’s Company’).

8. Chen attests that he created the trade mark YIMOBRA in 2016, based on places he was connected with, and chose ‘YI’ for Yiwu China, ‘MO’ for Mozambique and ‘BRA’ for Brazil.

9. According to Chen, he and the Opponent’s Company have used the Trade Mark since 23 September 2016 for products including floor mats, door mats, area mats, anti-slip mats, anti-skid mats and other mat-related goods (‘Opponent’s Products’) which are sold on Amazon.  Chen exhibits a screenshot from Amazon at (‘Amazon US’) showing that his YIMOBRA brand ranks in the top 50 of Amazon’s brand list and YIMOBRA products are ranked 4 times in Amazon’s top 25 selling bath mats.

10. The Opponent has also sold the Opponent’s Products on Amazon Australia since at least 13 November 2019 and attaches screenshots from Amazon Australia of a memory foam bath mat which was purchased and reviewed by an Australian consumer on that date.  Other extracts from Amazon Australia showing use of the Trade Mark are also provided.

11. Also exhibited to Chen is a spreadsheet of a selection of sales of the Opponent’s Goods from Amazon US to Australian consumers between July 2022 to June 2023.

12. In addition to using the Trade Mark on the Opponent’s Products, the mark is used on packaging of those products.  Further, the Opponent promotes its goods on its website at and extracts from this website are exhibited.

13. Chen provides details of his registrations for the Trade Mark in the USA, Mexico, Japan, European Union, United Kingdom and China, all of which were filed before the Relevant Date.

14. In support of the Opponent’s claim that the opposed application was filed in bad faith, the Opponent provides extracts from an Australian Trade Mark Search of IP Australia for other applications filed by the Applicant, almost all of which have received adverse examination reports.  Chen notes that the Applicant’s trade mark application 2392790 FOMANSH was opposed by two different parties on the grounds of bad faith and that the Applicant was not the owner of the mark.  I note that this application lapsed after the Applicant did not defend the oppositions.

    Discussion

    Section 62A

15. Section 62A provides that registration of a trade mark may be opposed on the ground that the application was filed in bad faith.

16. The term ‘bad faith’ is not defined in the Act but the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith which include:

    ·    persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·    persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

17. There have been two Federal Court decisions that substantively considered s 62A: Fry Consulting v Sports Warehouse Inc (No 2)[5] and DC Comics v Cheqout Pty Ltd[6] (DC Comics). The following propositions emerge from each of these two decisions relevant to the present opposition:

    [5] [2012] FCA 81 (Dodds-Streeton J) (‘Fry Consulting’).

    [6] [2013] FCA 478 (Bennett J) (‘DC Comics’).

    (a)Bad faith for the purposes of s 62A must be [as at the priority date] and must relate to the making of the subject of the application;[7]

    (b)Section 62A does not require the opponent to establish that the trade mark’s use would result in deception or confusion. However, evidence to that effect may be persuasive in considering whether the application to register a mark was in bad faith;[8]

    (c)       The onus of proving bad faith rests upon the opponent;[9]

    (d)All of the circumstances surrounding the application to register the mark are relevant;[10]

    (e)The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading;[11]

    (f)While the seriousness of an allegation of bad faith that “impugns the character of an individual or collective character of a business” requires correspondingly cogent evidence, the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt;[12]

    (g)Conduct which falls “short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area” is sufficient. Dishonesty is not required. Bad faith requires both subjective and objective elements; it is a combined test;[13]

    (h)Subjective naivety does not exclude a determination of bad faith for the purposes of s 62A.[14]

    [7] Fry Consulting (n 5), [145].

    [8] DC Comics (n 6), [76].

    [9] Fry Consulting (n 5), [145].

    [10] DC Comics (n 6), [62].

    [11] Ibid.

    [12] Fry Consulting (n 5), [145].

    [13] Ibid [147], [148] and [165].

    [14] Ibid [154].

18. It is apparent from the Opponent’s evidence that it has used and registered the Trade Mark in Australia and overseas for a number of years before the Relevant Date, for the same or similar goods to the Applicant’s Goods.  In particular, I note that the Opponent owns a registration for the Trade Mark in the Applicant’s home country of China for goods that overlap with or are similar to the Applicant’s Goods. 

19. The Trade Mark is an unusual, invented word.  The Opponent has explained how it created the Trade Mark and it is difficult to envisage how the Applicant would have arrived at the identical mark for specific goods which are similar to those supplied by the Opponent.  Whilst not impossible, it seems an unlikely coincidence that the Applicant would arrive at the adoption of the identical mark without knowledge of the Opponent’s use.  

20. Further, the Opponent claims that the Applicant has engaged in a pattern of behaviour in applying for the trade marks of other parties.  Of the eight marks noted by the Opponent, all have since lapsed.  Seven of the marks faced citations of prior trade marks.  The trade marks in question are inherently distinctive and it seems an extraordinary coincidence that the Applicant would choose the same unusual marks for the same or similar goods.    

21. In my view, the Opponent has established a prima facie case that the application was filed in bad faith.  In the absence of any evidence from the Applicant disputing the Opponent’s claims and evidence, I am satisfied on the balance of probabilities that the application was filed in bad faith.

    Decision

22. Section 55 of the Act relevantly provides:

    (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)  to refuse to register the trade mark; or

    (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

23. The Opponent has established a ground of opposition under s 62A.  Accordingly, I refuse to register trade mark number 2391579.

24. The Opponent has sought an award of costs. As the Opponent has succeeded in its opposition, I award costs against the Applicant under s 221 in the amounts set out in Schedule 8 of the Regulations.

    Tracey Berger
    Hearing Officer

    Delegate of the Registrar of Trade Marks

    14 March 2025