Opposition by Wenxia Chen to registration of trade mark application number 2419678 (class 21) -

[2025] ATMO 187

TRADE MARKS ACT 1995

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

Re:Opposition by Wenxia Chen to registration of trade mark application number 2419678 (class 21) - Marrywindix - in the name of Shenzhen Juyouliangpin E-Commerce Co., Ltd.

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Intellectual Property Strategy Pty Ltd

Applicant: Baxter Patent Attorneys Pty Ltd

Decision:

2025 ATMO 187

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 58, 59, 60 and 62A pursued – ground of opposition established under s 62A – registration refused

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Wenxia Chen (‘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) (‘Act’) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

Trade mark number	2419678 (‘Application’)
Trade mark	Marrywindix (‘Trade Mark’)
Applicant	Shenzhen Juyouliangpin E-Commerce Co., Ltd (‘Applicant’)
Filing Date	11 January 2024 (‘Relevant Date’)
Specification	Class 21: Stoneware; Ornaments made of crystal; Ornamental models made of crystal; Works of art made of crystal; Non-electric kitchen machines for household purposes; Moulds (kitchen utensils); Kitchen mitts; Porcelain for kitchen use; Mixing apparatus (hand-operated) for kitchen use; Cutting boards for the kitchen; Domestic kitchen containers; Crockery for kitchen use; Crushers for kitchen use, non-electric (‘Applicant’s Goods’)

2.    The Trade Mark was examined and advertised as accepted for possible registration on 12 June 2024.

3.    On 7 August 2024, the Opponent filed a Notice of Intention to Oppose the Application. On 6 September 2024, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 15 October 2024.

4.    The Opponent filed Evidence in Support (‘EIS’) on 14 January 2025. The Applicant did not file Evidence in Answer.

5.    The parties were given the opportunity to either request an oral hearing or to file written submissions. While neither party elected to be heard, the Opponent requested a decision without a hearing. I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine. I have decided this matter based on the particulars set out in the SGP and the EIS.

Grounds and onus

6.    In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 58, 59, 60 and 62A. The Opponent carries the burden of establishing at least one 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]

Evidence

1. The Opponent filed the following EIS:

   [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).

Declarant	Date	Exhibits
Declaration of Wenxia Chen, (‘Chen’)	10 January 2025	WXC-1 to WXC-6 including Confidential WXC-5

Summary of EIS

8.    Chen states that their business began in China in 2014 and they chose the Trade Mark for a range of healing crystals, natural rose stones and love heart carved palm worry stones (‘Opponent’s Goods’). The Trade Mark was first used in the United States of America (‘US’).

9.    Chen attests that the Opponent’s Goods are sold through the Opponent’s US Amazon store exhibiting screenshots from the store together with sample orders from 2022 to 2024. I note that all prices and sales are in US dollars, to US customers for a range of goods including worry stones, shoe laces, clay tools, pacifier and sheet suspender clips, magnifying glasses, hair clips, bookends and jewellery bags. I also note that there is no reference to the availability of these products to consumers located in Australia.

10.    Chen provides annual sales order quantities from 2016 to 2024 and confidential annual sales income in US dollars for the same period.

11.    Chen provides details of their US registration 5024877 for the Trade Mark registered in 2018 covering a range of goods in class 21.[5] I note the specifications of the US registration and the Application, while not identical, cover some goods which are the same or of the same description.

[5] The specification claims ‘[ perfume sprayers sold empty; Make-up removing appliances; Heat-insulated containers for household use; ] works of art of crystal [ ; Drinking horns; Pet feeding and drinking bowls; Poultry rings; Rings for identifying birds; Bird cages; Mangers for animals; Indoor aquaria; Insect traps; Fly catchers; Bread baskets for domestic use; Corkscrews; Bottle openers; Cocktail shakers; Cutting boards for the kitchen; Funnels; Jugs; Pitchers; Kitchen utensil crocks; Cruet sets for oil and vinegar; Garlic presses; Electric devices for attracting and killing insects; Sprinklers for watering flowers and plants; Perfume burners; Sieves; Flat-iron stands; Non-electric trouser presses; Vases; Clothes racks, for drying; Holders for toilet paper; Vacuum bottles; Gardening gloves; Cages for household pets ]’.

12.    Chen provides a list of twenty Australian trade mark applications and registrations for various trade marks filed by the Applicant between 28 August 2023 and 12 March 2024 (‘Australian Marks’) including the Application and a list of twenty US trade mark applications and registrations for trade marks identical to the Australian Marks which were predominately filed earlier than the Relevant Date in a name other than the Applicant (‘US Marks’). All but one of the owners of the US Marks appear to be Chinese. The information provided in the list includes the trade mark numbers, trade marks, owners, filing dates and classes of the Australian and US Marks. Chen claims the US Marks are for similar goods but the specifications of goods have not been provided. I note that of the twenty Australian Marks, five are not in the same class as the corresponding US Marks. Chen claims that the Applicant is cybersquatting with improper motive.

13.    Chen states that most of the Australian Marks are also identical to Amazon stores and similar products owned and sold by individuals and companies other than the Applicant.

14.    Chen refers to the commercial disruption that can be caused on the Amazon platform when a person acting in bad faith files a trade mark application in e.g. Australia for a trade mark which is owned by another in the US. As the Amazon Brand Registry allows complaints to be filed by trade mark owners, these trade mark applications can then be used to lodge Amazon Brand Registry complaints against the legitimate trade mark owner in the US.

Discussion

Section 62A

15.    Section 62A provides:

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

16. Bad faith is not defined in the Act. 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.

17.    The Federal Court has substantively considered the issue of bad faith in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[6] and DC Comics v Cheqout Pty Ltd.[7] The following propositions emerge from these decisions which are relevant to the present opposition:

[6] [2012] FCA 81 (Dodds-Streeton J) (‘Fry Consulting’).

[7] [2013] FCA 478 (Bennett J) (‘DC Comics’).

·Bad faith for the purposes of s 62A must be [as at the Relevant Date] and must relate to the making of the subject of that application.[8]

[8] Fry Consulting (n 6), [145].

·Bad faith is a serious allegation that ‘impugns the character of an individual or collective character of a business’ and requires correspondingly cogent evidence. The standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt.[9]

[9] Ibid.

·Conduct that falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area is sufficient. Bad faith does not require dishonesty.[10] As stated by Dodds-Streeton J in Fry Consulting:

[10] Ibid [147]-[148] and [165].

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.[11]

·The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.[12]

·All the circumstances surrounding the application to register the mark are relevant.[13]

·A prior business connection with and knowledge of the opponent by the applicant such that a person standing in the shoes of the applicant should have known that he should not have applied for a trade mark deceptively similar to that used by the opponent is sufficient for a finding of bad faith.[14]

[11] Ibid [166].

[12] DC Comics (n 7), [62].

[13] Ibid.

[14] Fry Consulting (n 6), [156].

18.    The decided cases have established that assessing whether an application was filed in bad faith is a two-step test with a subjective and an objective element. The subjective element requires findings as to what the Applicant knew at the filing date. The objective element then asks: armed with that knowledge, would a person adopting proper standards of commercial behaviour consider the act of filing the trade mark to be in bad faith?

19.    The Opponent bears the onus of establishing that the filing of the Application was in bad faith and it will not be easily established given the serious nature of the allegation.[15]

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

20.    The SGP claims the following:

21.    For the purposes of considering the s 62A ground of opposition and determining the Applicant’s subjective intention, it is necessary to look at the circumstances surrounding the filing of the Application which includes the relevant actions of each party.

22.    Referring to the Opponent’s list of Australian and US Marks, even though only the class numbers have been provided, I have no reason to question the veracity of Chen’s claim that where the Australian and US Marks are in the same classes, they cover similar goods. Certainly, many of the goods of the Opponent’s US registration for the Trade Mark are the same or similar to those of the Application.

23.    Furthermore, I note that the majority of the trade marks in the Opponent’s list of Australian and US Marks do not consist of descriptive words, well known words or obvious combinations of words such as portmanteau words, but rather they consist of highly invented and distinctive words including Permotary, JUYOU, AUGSUN, Saipe, BronaGrand, Snamonkia, BetyBedy, Mirenlife, CERROPI, SONGZIMING, Skylety, ANYQOO, YAOMIAO, and  WELTRXE. Further, the rendering in matching lower case or capitalisation of the trade marks in the Australian Marks to that of trade marks filed in the US Marks by other persons, heightens the cloud over the conduct of the Applicant. In my view, it seems a highly unlikely coincidence that the Applicant adopted and filed so many unusual trade marks, including the Trade Mark, without knowledge of at least the US Marks.

24.    On the evidence before me, I find that the above circumstances raise an inference that the Application was filed in of bad faith which requires a response from the Applicant. The Applicant has not participated in this opposition other than filing a Notice of Intention to Defend the opposition. Therefore, the Applicant has not refuted the accuracy of the Opponent’s evidence and claims nor provided evidence or submissions in response. In the absence of a response from the Applicant, I am satisfied on the balance of probabilities that a person standing in the Applicant’s shoes should have known that it should not apply for the registration of the Trade Mark. The Applicant has engaged in a pattern of behaviour with respect to the filing of the Australian Marks which were already filed or registered in the US, and such conduct falls well short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons. Hence the s 62A ground of opposition is successful.

25.    Having found the s 62A ground of opposition established, it is unnecessary that the remaining grounds be considered.

Decision

26.    Section 55 relevantly provides:

Decision

(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.

Note:    For limitations see section 6.

27.    The Opponent has established on the balance of probabilities the ground of opposition under s 62A. I accordingly refuse to register the Trade Mark. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the Application be in accordance with the court’s direction or order.

Costs

28. The Opponent has sought costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Anne Makrigiorgos

Hearing Officer

Delegate of the Registrar of Trade Marks

11 September 2025