Opposition by Jiaxu Liu to an application under section 92 of the

[2025] ATMO 151

TRADE MARKS ACT 1995

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

Re:Opposition by Jiaxu Liu to an application under section 92 of the Trade Marks Act 1995 (Cth) by Butterfulandcreamourous Co., Ltd for removal of trade mark number 2314429 (classes 30, 43) – BUTTERFUL & CREAMOROUS (Fancy) – in the name of Jiaxu Liu

Delegate:

Nicholas Smith

Representation:

Opponent: Remarkable IP

Applicant: FB Rice Pty Ltd

Decision:

2025 ATMO 151

Trade Marks Act 1995 (Cth) - section 96 opposition: ss 92(4)(a) application for removal - intent to use inherent in filing of Trade Mark application – opponent asserts its intention at the filing date to use the Trade Mark – Trade Mark to remain on Register in its current form

Background

1. This decision is pursuant to an application made on 30 January 2024 under ss 92(4)(a) of the Trade Marks Act 1995 (Cth) (‘Act’) by Butterfulandcreamourous Co., Ltd (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods and services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

2314429

Filing date

11 November 2022

Goods and Services

Class 30: Pastries; Coffee; Tea-based beverages; Confectionery; Ice cream; Pizza; Tea (not medicinal); Honey; Cereal preparations; Pasta; Cereal based snack food; Rice based snack foods; Vermicelli; Condiments; Bread; Cakes; Puddings; Profiteroles; Wrap (sandwich); Cocoa beverages with milk

Class 43: Cafe services; Canteen services; Ice cream parlour services; Teahouse services; Snack-bars; Bar services; Washoku restaurant services; Decorating of food; Cake decorating; Information and advice in relation to the preparation of meals; Food reviewing services [provision of information about food and drinks]; Booking of restaurant seats; Arranging hotel accommodation; Salad bar restaurant services; Cafeteria services; Cake baking; Accommodation bureaux (hotels, boarding houses); Rental of drink dispensing machines; Rental of cooking apparatus; Rental of chairs, tables, table linen, glassware

(‘Registered Goods and Services’)

Owner

Jiaxu Liu

Trade Mark

(‘Trade Mark’)

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3. Jiaxu Liu (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 26 March 2024 and a Statement of Grounds and Particulars (‘SGP’) on 11 April 2024.  The Applicant filed a Notice of Intention to Defend on 26 April 2024.

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

Declarant and Position	Date	Annexures or Exhibits
Evidence in support (‘EIS’)
Jiaxu Liu (‘Liu declaration’)	31 July 2024
Evidence in answer (‘EIA')
Daihwan Kim, Chief Executive Officer of the Applicant (‘Kim declaration’)	12 November 2024	DK-01 to DJ-07
Evidence in reply
N/A (None filed)

5. 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 Applicant 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 for a decision based on the written record.

6. I am a delegate of the Registrar of Trade Marks and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the evidence listed earlier in this decision:

·The Application for Removal; and

·The Notice of Intention to Oppose and SGP.

The Relevant Provisions

7. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 relevantly provides:

92  Application for removal of trade mark from Register etc.

(4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

   (a)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)  to use the trade mark in Australia; or

(ii)  to authorise the use of the trade mark in Australia; or

(iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

(iv)  has not used the trade mark in Australia; or

(v)  has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

8. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

100  Burden on opponent to establish use of trade mark etc.

(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

(a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the opposed application relates ( relevant goods and/or services ); or
(b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or

9.    I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[1]  In Blount Inc v Registrar of Trade Marks, Branson J observed:

Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.[2]

10.     In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

Discussion

[1] Pfizer Products Inc. v Karam [2006] FCA 1663, [26] (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.

[2] [1998] FCA 440 (citation omitted).

1. Though the onus is, in terms of s 100, on the Opponent in this matter, that onus is not particularly arduous.  In Aston v Harlee Manufacturing Co[3] Fullagar J observed:

   [3] [1960] HCA 47, [21].

   […] the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on … a motion to expunge, the burden must rest on … the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.

2. While this observation was made in proceedings under the Trade Marks Act 1955 (Cth), where the onus was on ‘the person aggrieved’ (that is, an applicant for removal), the principle has been held to be sound under the Act. In Structureco Inc v Starite Distributors Pty Ltd[4] the Registrar’s delegate Mr Forno said:

   Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s.92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case - perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.

   13. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(a),[5] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[6] In the present case the Applicant acknowledges that they have not used the Trade Mark in Australia. 

   14. In addition, the issue of whether the Opponent is the proper owner of the Trade Mark does not bear on the ultimate question under s 92(4)(a) of the Act. In Edward v Liquid Engineering 2003 Pty Ltd, Gordon J stated (with emphasis added):

   Having considered the evidence led, and submissions made, I was poised to answer that question in the affirmative and uphold the appeal, on the basis that "good faith" for the purposes of s 92(4) requires no more than genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions: see generally E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [187] - [192] (examining the meaning of "good faith" under related provisions of the TMA). However, during the course of the hearings it became apparent that what LE 2003 really wanted, and should have applied for in the first place, was the expungement of the registrations by Edwards under s 88 of the TMA on the basis that Edwards was not the owner of the unregistered marks: ss 52 and 58 of the TMA. I therefore delayed giving judgment in VID 934 of 2006 so that a separate application could be brought on that basis and the matters resolved together.[7]

   15.     As addressed by Gordon J[8] above, an action under s 92 of the Act is not the appropriate place to determine the ownership of a registered trade mark. That question must be litigated in an action for cancellation brought under ss 58 and 88 of the Act.

   Evidence

   [4] [2000] ATMO 31.

   [5] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

   [6] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

   [7] [2008] FCA 970 [8].

   [8] [2008] FCA 970 [8].

3. The Opponent’s evidence in this matter consists of a declaration by the owner of the mark who states that he had a good faith intention to use the Trade Mark in Australia at the time of registration and has plans to open physical stores in Australia in January 2026 with site selection to occur between January and June 2025.  The Opponent provides no documentary evidence in support of these statements or any documentary evidence of demonstrable preparations to use the Trade Mark in Australia.

4. In response the EIA gives evidence that the Applicant has recently acquired the business assets of a company that since 2019 has run a franchise of premium bakery and dessert stores in Korea under the BUTTERFUL & CREAMOROUS Mark.  The Applicant’s predecessor in title entered the Chinese market in 2020.  The EIA submits that the EIS does not show an intention to use the Trade Mark for the full range of services for which it is sought to be registered in class 43 because the purported physical stores do not demonstrate an intention to provide the class 43 services.  The EIA notes that the Trade Mark is registered in China by a different entity to the Opponent and no evidence is provided by the Opponent of any use by the Opponent of the Trade Mark anywhere in the world.  Finally, the Applicant states that the Opponent has sought to apply for six registered trade marks in Australia, a number of which are variants of the Trade Mark, including ‘BUTTERFULL & GREAMINESS’.

5. While noting the paucity of the documentary evidence provided by the Opponent in this matter, I am satisfied that the Opponent’s evidence, which includes a clear sworn statement of an intention to use the Trade Mark at the relevant date, is sufficient to shift the onus in this case to the Applicant. The EIS also contains a summary of present plans which, while not conclusively demonstrating a present intention to use the Trade Mark for the full range of Registered Goods and Services, do correspond broadly with the Registered Goods and Services (noting that it is not entirely clear what services will and will not be provided from the stores as described by the Opponent). I note that in previous cases under s 92(4)(a)[9] I have stated that a party that held a genuine intention to use/authorise/assign a trade mark should at the minimum be able to express what its actual intention was rather than simply restate the requirements of s 92(4)(a), and if it actually held a genuine intention to use, authorise or assign the Trade Mark, explain what its business plan was. The Opponent does express its intention and goes beyond merely restating the requirements of s 92(4)(a).

   [9] SANSAI JAPAN AUSTRALIA PTY. LTD v SMD Technologies Australia Pty Ltd [2023] ATMO 61, [19] (Hearing Officer Smith).

6. The Applicant’s evidence is circumstantial and does not satisfy its onus to demonstrate that the Opponent lacked an intention to use the Trade Mark at the time of registration. The fact that the Opponent has registered multiple related marks in Australia could suggest that they are indeed seeking to run a business in Australia, perhaps using multiple related marks that play on the words ‘butter’ and ‘creaminess’. The absence of a registration of a corresponding mark in China has little or no bearing on an intention to use the mark in Australia. The question of whether the Opponent sought to register the Trade Mark in awareness of or take advantage of the reputation of the Applicant in South Korea is one that is best determined by an application for cancellation potentially raising grounds of s 62A under the Act, and in any event I am not satisfied by the material before me (noting that there is limited evidence of the Applicant’s reputation in China or any information about any connection between the Opponent and Applicant) that I can reach the conclusion implicitly sought by the Applicant that the application was not made with a good faith intention to use the Trade Mark and was instead made for a nefarious purpose.

7. I am satisfied that at the relevant date the Opponent intended to use the Trade Mark for the Registered Goods and Services. The Opponent has established its opposition in relation to s 92(4)(a).

   Decision

   21.     I decide that the Opponent has established its opposition to removal in respect of the Registered Goods and Services and I decline to remove the Trade Mark from the Register. 

   Costs

   22. The Opponent has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   1 August 2025