gui lin shen hu shang mao you xian gong si v Shiyu Zhang

[2025] ATMO 156

TRADE MARKS ACT 1995

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

Re:Opposition by gui lin shen hu shang mao you xian gong si to registration of trade mark application 2408120 (28) – OleFun – in the name of Shiyu Zhang

Delegate:

Nicholas Smith

Representation:

Opponent: Ryan Campbell

Applicant: Thomas Riggs

Decision:

2025 ATMO 156

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 60 and 62A considered – neither established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by gui lin shen hu shang mao you xian gong si (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Shiyu Zhang (‘Applicant’): 

Application Number:	2408120
Filing Date[1]:	23 November 2023
Goods:	Class 28: Toy animals; Toys in the form of drawing apparatus for children; Toy automobiles; Plastic models being toys; Building blocks (toys); Tactile educational toys (playthings); Toy aeroplanes; Building games; Remote-controlled toy vehicles; Rubber toys (playthings); Toy dolls; Dart games; Stuffed toys; Playthings in the form of animals; Children's playthings (‘Applicant’s Goods’)
Trade Mark:	OleFun	(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

1. Unless otherwise indicated, any references to sections or regulations in this decision 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 the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 10 May 2024.  The SGP raised grounds of opposition under ss 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 18 May 2024. 

   Evidence

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Zhouyu Jiang, CEO of the Opponent (‘Jiang 1’)	20 June 2024	1 to 10
Evidence in answer
Shiyu Zhang (‘Zhang declaration’)	27 November 2024	SX1 to SX2
Evidence in reply
Zhouyu Jiang (‘Jiang 2’)	17 January 2025

1. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The parties jointly requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar of Trade Marks (‘Registrar’) for a decision based on the written record.

2. I am a delegate of the Registrar and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 55 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

3. The Opponent is Chinese toy company.  

4. The relevant claims/statements in Jiang 1 and 2 can be summarised as follows:

   ·     The Opponent created the OleFun mark in 2019 as a combination of the Spanish word ‘ole’ and the English word ‘fun’ and has used its mark in Australia for years.  It sells its products through various e-commerce platforms such as Amazon and eBay and through offline physical stores.  It has offered its products through Amazon Australia since October 8, 2021 and has sold products in Australia since January 6, 2022.

   ·     Since January 6, 2022, it has sold $95,574 worth of toys through Amazon Australia and spent $5,574 in advertising.  

   ·     The Opponent’s toys have a considerable reputation as high quality products being recommended by Amazon as ‘Amazon’s Choice’ and have received positive feedback from Amazon reviewers.

   ·     The Opponent has reviewed the Applicant’s evidence and notes that the evidence of the Applicant’s website appears to postdate the date of the opposition and suggests that the website was created temporarily.  The Opponent identifies no evidence that the Applicant has used the Trade Mark in China and considers that the packaging for the product provided by the Applicant is simplistic and missing relevant product information such as a barcode or description.

5. The Exhibits to in Jiang 1 and 2 display images of the Opponent’s OleFun products on Amazon, showing the date launched, date of first sale (January 6, 2022) and evidence of customer appreciation (noting that much of the evidence of sales and customer appreciation postdates the relevant date).  

   The Applicant

6. The Applicant’s evidence in the Zhang declaration is that he created the Trade Mark in 2020 as a combination of the Spanish word ‘ole’ and the word ‘fun’ and he uses the Trade Mark for a single set of dinosaur toys.  The Applicant exhibits photos of its products said to bear the Trade Mark.

   Grounds of Opposition, Onus and Standard of Proof

7. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 60 and 62A.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

8. 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 date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of s 60.[4]

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

   [3] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) (‘Southern Cross’), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 60

9. Section 60 is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

10. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

11. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

    The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

    The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[5]

    [5] [2023] FCA 487, [20]-[21] (Kennett J)

12. In McCormick & Co Inc v McCormick[6], Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[7]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[8]

    [6] [2000] FCA 1335.

    [7] Ibid, [81].

    [8] (1992) 33 FCR 302, 343.

13. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[9]

    [9] (1999) 47 IPR 423, 436 (Hearing Officer Thompson).

14. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered.  The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[10] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[11]

    [10] [2000] FCA 1587.

    [11] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

15. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    The trade mark/s had acquired reputation before the priority date of the trade mark being opposed

    The opponent’s mark is Olefun. Which has been used in AU for years since 2021.

    The Opponent submits that the Applicant’s sign and the Earlier mark is identical.

    2.The Opponent submits that the goods covered by the Application in class 28 are closely similar to the goods covered by the Earlier mark.

    3.In light of the identity of the Applicant's sign and the Opponent's Earlier Mark, and the close similarity of goods covered by the Application in Class 28, and goods covered by the Earlier Mark in Class 28, the Application should be cancelled under TRADE MARKS ACT as there would be a likelihood of confusion on the part of the public in the Australian which includes the likelihood of association with the Earlier Mark.

    4.The Opponent's Marks enjoy a reputation in the AU in relation to printing products. Opponent's Marks is an internationally-renowned, highly prestigious, Electronics. The Application is visually and aurally highly similar to each of the Opponent's Marks. Conceptually the Application is similar to a medium-high degree, which will easily be seen by the relevant public as an extension of the Opponent's Marks. As a result of the similarities between the marks and the extensive reputation enjoyed by the Opponent, the public will make a link between the mark the subject of the Application and the Opponent's Marks.

    5.Use of the Application without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the Opponent's Marks. The Application, if not invalided, will take unfair advantage of the repute of the Opponent's Marks by riding on the coat-tails of the prestigious reputation the Opponent has generated in many years of use and through significant financial investment during that time. The Application will inevitably benefit from the prestige of the Opponent's Marks without paying any financial compensation for such advantage.

    6.The distinctive character of the Opponent's Marks will suffer detriment from the use of the Application in relation to the applied for goods and services, as invalided, due to the dilution and possible diversion of consumers to Electronics Products, as listed in Class 28 of the Application, offered at a lower quality and price to those of the Opponent such that the Opponent's Marks will suffer a diminished distinctive character and reduced ability for the Opponent's Marks to identify its own prestigious perfume. The use of the Application may, for example deceive consumers that there is an economic connection to the Opponent.

    7.The opponent has continuously used the earlier mark, in the AU in relation to the above goods and has generated protectable goodwill in the mark.

    8.The later mark, covers identical or similar goods to those in relation to which the opponent has used the earlier mark, and is clearly similar to the earlier mark.

    28.Use of the later mark is likely to be contrary to the law of passing of because it would constitute a misrepresentation, for example based on consumer assumption of an economic connection of some kind between the parties when none exists, damage to the opponent's goodwill is an inevitable consequence.

    10.The Opponent submits that the Application Mark has been filed in bad faith.

    11.The Opponent therefore submits that there was a dishonest intention on the part of the Applicant at the time of filing as the Applicant is not currently using the trade mark (or allowing someone else to use it with their consent) or have a bona fide (good faith) intention to use.

16. Much of the SGP for the s 60 ground appears to be is a mixture of repetition, claims that have no relevance to the s 60 ground and assertions of reputation in areas that appear to be entirely unconnected to the Opponent’s business, such a reputation in as electronics and perfume.  I will limit my consideration to the basic requirements of s 60 being the question of whether the Opponent had established a reputation in OleFun in Australia at the relevant date and if so whether by reason of that reputation use of the Trade Mark would be likely to deceive or cause confusion.   

17. At the relevant date the Opponent had sold toys under the OleFun mark in Australia for approximately 22 months.  While the Opponent states that its sales in Australia were $95,574, this figure is calculated as of 20 June 2024; the sales figure at the relevant date would be lower.   While the Opponent states that it sells its products through broader channels, its only evidence of use in Australia is a modest number of sales through Amazon Australia for 22 months prior to the relevant date.  The sales figures provided are comparatively tiny given the very significant size of the market for children’s toys in Australia.  Finally, much of evidence of esteem, being the fact that certain products offered by the Opponent are advertised as Amazon Choice or Amazon Bestseller, post-dates the relevant date and there is no evidence that this esteem was in place at the relevant date.  Given the limited sales, limited marketing and limited evidence of third-party reputation at the relevant date, the requirements of s 60(a) are not satisfied.

18. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Section 62A

19. Section 62A is reproduced below:

    62A Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

20. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·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.

21. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[12]:

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[13]

    [12] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).

    [13] [2012] FCA 81, [147].

1. Her Honour continued later in the same decision:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[14]

   [14] Ibid [165]-[166].

2. The Opponent has particularised this ground of opposition in the SGP as follows:

   1.The Opponent submits that the Applicant’s sign and the Earlier mark is identical.

   2.The Opponent submits that the goods covered by the Application in class 28 are closely similar to the goods covered by the Earlier mark in Class 28.

   3.In light of the identity of the Applicant's sign and the Opponent's Earlier Mark, and the close similarity of goods covered by the Application in Class 28, and goods covered by the Earlier Mark in Class 28, the Application should be cancelled under TRADE MARKS ACT as there would be a likelihood of confusion on the part of the public in the Australian which includes the likelihood of association with the Earlier Mark.

   4.The Opponent's Marks enjoy a reputation in the AU in relation to printing products. Opponent's Marks is an internationally-renowned, highly prestigious, Electronics. The Application is visually and aurally highly similar to each of the Opponent's Marks. Conceptually the Application is similar to a medium-high degree, which will easily be seen by the relevant public as an extension of the Opponent's Marks. As a result of the similarities between the marks and the extensive reputation enjoyed by the Opponent, the public will make a link between the mark the subject of the Application and the Opponent's Marks.

   5.Use of the Application without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the Opponent's Marks. The Application, if not invalided, will take unfair advantage of the repute of the Opponent's Marks by riding on the coat-tails of the prestigious reputation the Opponent has generated in many years of use and through significant financial investment during that time.

   The Application will inevitably benefit from the prestige of the Opponent's Marks without paying any financial compensation for such advantage.

   6.The distinctive character of the Opponent's Marks will suffer detriment from the use of the Application in relation to the applied for goods and services, as invalided, due to the dilution and possible diversion of consumers to Electronics Products, as listed in Class 28 of the Application, offered at a lower quality and price to those of the Opponent such that the Opponent's Marks will suffer a diminished distinctive character and reduced ability for the Opponent's Marks to identify its own prestigious perfume. The use of the Application may, for example deceive consumers that there is an economic connection to the Opponent.

   7.The opponent has continuously used the earlier mark, in the AU in relation to the above goods and has generated protectable goodwill in the mark.

   8.The later mark, covers identical or similar goods to those in relation to which the opponent has used the earlier mark, and is clearly similar to the earlier mark.

   28.Use of the later mark is likely to be contrary to the law of passing of because it would constitute a misrepresentation, for example based on consumer assumption of an economic connection of some kind between the parties when none exists, damage to the opponent's goodwill is an inevitable consequence.

   10.The Opponent submits that the Application Mark has been filed in bad faith.

   11.The Opponent therefore submits that there was a dishonest intention on the part of the Applicant at the time of filing as the Applicant is not currently using the trade mark (or allowing someone else to use it with their consent) or have a bona fide (good faith) intention to use.

3. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[15]  Furthermore, the SGP under this ground suffers from the same issues that have been covered under the s 60 ground and thus I will limit my consideration to the basic requirements of s 62A being whether the application was made in bad faith.  In the present case I am entirely unsatisfied on the evidence before me that the Opponent had any reputation in the Olefun mark at the time the Applicant conceived or started using the Trade Mark (stated in the Applicant’s evidence to be 2020) or (if I do not accept the Applicant’s unsupported evidence) at the time it applied to register the Trade Mark in Australia.  There is simply no evidence before me other than a shared trade mark (that I accept could be conceived independently given that it is a combination of two common words that do make a somewhat allusive reference to the feeling obtained by playing with toys) that would suggest that the Applicant was aware of the Opponent when it supposedly conceived the Trade Mark or at the relevant date.  In circumstances where the evidence in support of the s 62A ground of opposition is very limited and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character.  Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62A.

   [15] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

   Decision

4. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2408120 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   6 August 2025