Opposition by TSW PTY LTD to registration of trade mark application number 2373434 (classes 35 and 36) –

[2025] ATMO 193

TRADE MARKS ACT 1995

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

Re:Opposition by TSW PTY LTD to registration of trade mark application number 2373434 (classes 35 and 36) – DY HOME LOANS & Chinese Characters device - in the name of Y L YOUNGER PTY LTD

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Chun Fung

Applicant: Lucy Davis of Counsel instructed by Robinson Gill Lawyers

Decision:

2025 ATMO 193

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 59 considered and not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by TSW PTY LTD (‘Opponent’) to registration of the following trade mark:

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

Trade mark number

2373434 (‘Application’)

Trade mark

 (‘Trade Mark’)

Applicant

Y L YOUNGER PTY LTD (‘Applicant’)

Filing date

27 July 2023 (‘Relevant Date’)

Specification

Class 35: Advice relating to the acquisition of businesses; Advice relating to the sale of businesses; Advice relating to business management; Advice relating to business organisation; Arranging business introductions; Administration of businesses; Administration of business affairs; Administration of the business affairs of franchises; Business administration; Business advice; Business advice relating to franchising; Business advisory services; Business advisory services relating to the establishment of franchises; Business advisory services relating to the operation of franchises; Business assistance; Business assistance relating to franchising; Business assistance relating to the establishment of franchises; Business consultancy; Business consultation; Business consultancy relating to franchising; Business consultation services relating to franchising; Business franchising consultancy and administrative business support services; Management consultations relating to business; Preparation of business reports; Preparation of business statistics; Preparation of documents relating to business; Provision of assistance (business) in the establishment of franchises; Provision of assistance (business) in the operation of franchises; Provision of business advice relating to franchising; Provision of business assistance; Provision of business information relating to franchising

Class 36: Administration of financial affairs; Advisory services relating to financial matters; Brokerage services relating to financial instruments; Conducting of financial transactions; Consultation services relating to financial matters; Consultations (Financial); Emergency financial services; Financial advice; Financial advisory services; Financial advisory services for companies; Financial advisory services for individuals; Financial analysis; Financial assessments; Financial assistance; Financial banking; Financial brokerage; Financial consultancy; Financial consultation services; Financial evaluation (insurance, banking, real estate); Financial fund management; Financial information services; Financial investment; Financial investment advisory services; Financial investment management services; Financial lending; Financial management; Financial management advisory services; Financial market information services; Financial planning; Financial services; Insurance for businesses; Providing information, including online, about insurance, financial and monetary affairs and real estate affairs; Provision of information relating to financial services; Advice regarding lending services; Arranging of finance for others; Corporate financing; Credit (financing); Equity financing; Financing services; Financing of home loans; Financing of personal loans; Loan financing; Financial loan services; Advisory services relating to loan services; Loan services; Money lending; Mortgage brokerage services; Mortgage financing services; Mortgage loan services; Personal finance services

(together, ‘Applicant’s Services’)

Endorsement

The applicant has advised that the Chinese characters 萬通信貸 appearing in the trade mark may be transliterated as WAN TONG

XIN DAI which may be translated into English as TEN THOUSAND WAYS OF CREDIT LOANS

2.       The Trade Mark was examined and advertised as accepted for possible registration on 28 December 2023.

3.       On 27 February 2024, the Opponent filed a Notice of Intention to Oppose the Application. On 27 March 2024, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 26 April 2024. No evidence was filed by either of the parties.

4.       The parties were given the opportunity to either request an oral hearing or to file written submissions. The Applicant elected to be heard on the basis of written submissions and filed written submissions prepared by Lucy Davis of Counsel instructed by Robinson Gill Lawyers. The Opponent has not requested to be heard and has therefore not filed any written submissions. I have decided this matter based on the particulars set out in the SGP and the written submissions of the Applicant.

Grounds and onus

5.       The SGP nominates a single ground of opposition under s 59. The Opponent carries the burden of establishing this ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]

Discussion

[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 Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

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

Section 59

6. Section 59 provides (notes omitted):

Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

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

(b)  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 specified in the application.

7. Under s 27, an intention to use or authorise use of a trade mark in Australia is a prerequisite to a valid application for registration.

8.       It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark.[5] In Aston v Harlee Manufacturing Co, Fullagar J stated:

I do not regard his Honour [Dixon J in The Shell Co of Australia Ltd v Rohm & Haas [1948] HCA 271] as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use.[6]

[5] Aston v Harlee Manufacturing Co [1960] HCA 47, [21].

[6] Ibid.

9.       The presumption arising from filing may be challenged by evidence from the Opponent that establishes the contrary, thereby shifting the onus from the Opponent onto the Applicant and requiring evidence from the Applicant which demonstrates the intention to use the trade mark.

10.     The intention must be ‘a resolve or settled purpose’ and immediate use is not required.[7] In Ritz Hotel Ltd v Charles of the Ritz Ltd and Another, McLelland J said:

[i]n my opinion the correct view is that an unused mark is not “proposed to be used” by an applicant for registration unless that applicant has, at the time of the application, a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any limited time.[8]

[7] Re Ducker's Trade Mark (1928) 45 RPC 397, 402 (Lord Howarth MR).

[8] (1988) 15 NSWLR 158, 203.

11.     Lack of intention cannot be inferred from lack of use per se. In Suyen Corporation v Americana International Ltd, Dodds-Streeton J stated:

There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.[9]

[9] [2010] FCA 638, [207].

12.     A mere assertion of lack of intention to use does not require a response from the applicant. Further as Hearing Officer Homann said in Intel Corporation v Magnatex International Pty Ltd:

No evidence as to these matters was led by the applicant. At the same time I must also say that there was no obligation on the applicant to do so. Failure on the part of the applicant to establish affirmatively its capacity or intention to use the mark is in no sense evidence of a lack of such capacity or intention.[10]

[10] [1998] ATMO 20; (1998) 41 IPR 406.

13.     The first question for consideration is whether the Opponent has satisfied its burden of establishing a prima facie case of lack of intention to use by the Applicant. The Opponent has merely made unsubstantiated claims in the SGP[11] as follows:

[11] It appears the Opponent has incorrectly referred to the Opponent’s lack of intention to use rather than the Applicant’s.

14.     In summary, the Applicant’s submissions state that an application for registration is prima facie evidence that the Applicant intended to use the Trade Mark. The Opponent has not adduced any evidence that would undermine this prima facie position, despite bearing the onus. The mere raising of a lack of intention is not sufficient to shift the burden. Accordingly, the opposition should be dismissed.

15.     The Opponent has not provided any evidence or submissions to support the mere assertion of lack of intention to use in the SGP. As the Opponent has not provided any evidence or submissions, the Opponent has not satisfied its burden of establishing a prima facie case of lack of intention to use by the Applicant, so as to shift the burden to the Applicant to demonstrate an intention to use. The Opponent’s mere assertion of lack of intention to use is unsubstantiated and does not require a response from the Applicant. As a consequence, the Opponent has failed to establish the ground of opposition in respect of the Applicant’s Services pursuant to s 59.

Decision

1. I find that the Opponent has failed to establish the ground of opposition it nominated in the SGP. Accordingly, registration of the Application may proceed not less than one month from the date of this decision.

2. If the Registrar is served with a notice of appeal, 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.

   Costs

3. The Opponent and Applicant have sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Anne Makrigiorgos

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   15 September 2025