Paullie Skin IP Pty Ltd v Amy Ventures Pty Ltd
[2025] ATMO 208
•3 October 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Paullie Skin IP Pty Ltd to registration of trade mark application number 2385525 (classes 25) – Paullie - in the name of Amy Ventures Pty Ltd
Delegate: | Benjamin Goldsworthy |
Representation: | Opponent: Gilbert Tsang instructed by Thynne and Macartney Lawyers Applicant: Andrew Petale of Yip Legal Pty Ltd |
Decision: | 2025 ATMO 208 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 59, 60 and 62A – no grounds established – trade mark may proceed to registration. |
Background
This matter concerns an application (‘Application’) filed on 1 September 2023, for registration of a trade mark under the Trade Marks Act 1995 (Cth) (‘Act’).[1] The Application is in the name of Amy Ventures Pty Ltd (‘Applicant’). I extract further details of the Application below:
Trade mark number: 2385525
Trade mark: Paullie (‘Trade Mark’)
Priority date: 1 September 2023 (‘Relevant Date’)
Specification: Class 25: Apparel (clothing, footwear, headgear); Athletic clothing; Beach clothes; Boys' clothing; Clothing; Clothes; Children's clothing; Casual clothing; Clothing for sports; Clothing for swimming; Collars (clothing); Cyclists' clothing; Denims (clothing); Dance clothing; Girls' clothing; Headbands (clothing); Ladies clothing; Plush clothing; Playsuits (clothing); Pants (clothing); Pockets for clothing; Women's clothing; Wraps (clothing); Thongs (clothing); Jackets (clothing); Dresses; Dress shoes; Dress shirts; Dressing gowns; Evening dresses; Fancy dress costumes; Gym leggings; Leggings (leg warmers); Leggings (trousers); Shapewear (slimming underwear); Underwear
Class 35: Online retail services; Retail services; Retail clothing shop service
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
After examination of the Trade Mark under s 31, its acceptance was advertised on 2 February 2024. On 22 February 2024, Paullie Skin IP Pty Ltd (‘Opponent’) filed its Notice of Intention to Oppose. On 22 March 2024, the Opponent filed its Statement of Grounds and Particulars (‘SGP’).
On 9 April 2024, after having received the SGP on 8 April 2024, the Applicant amended the specification of goods and services by deleting the class 35 services entirely and amending the class 25 goods by further specifying the goods. The Application now seeks registration of the following goods (‘Applicant’s Goods’) (bold text being the additional text):
Class 25: Athletic clothing; Beach clothes; Boys' clothing; Clothing; Clothes; Children's clothing; Casual clothing; Clothing for sports; Clothing for swimming; Collars (clothing); Cyclists' clothing; Denims (clothing); Dance clothing; Girls' clothing; Headbands (clothing); Ladies clothing; Plush clothing; Playsuits (clothing); Pants (clothing); Pockets for clothing; Women's clothing; Wraps (clothing); Thongs (clothing); Jackets (clothing); Dresses; Dress shoes; Dress shirts; Dressing gowns; Evening dresses; Fancy dress costumes; Gym leggings; Leggings (leg warmers); Leggings (trousers); Shapewear (slimming underwear); Underwear; clothing; clothing; articles of clothing for human beings; articles of clothing for human beings; articles of clothing; articles of clothing; work clothing; work clothing; women's clothing; women's clothing; clothing of denim; clothing of denim; articles of clothing for humans; articles of clothing for humans; clothing for girls; clothing for girls; leather clothing; leather clothing; clothing for women; clothing for women; cotton clothing; cotton clothing; girls' clothing; girls' clothing; clothing for men; clothing for men; men's clothing; men's clothing; clothing of cotton; clothing of cotton; clothing of linen; clothing of linen; work clothes; work clothes; ladies' clothing; ladies' clothing; woolen clothing; woolen clothing; knitwear [clothing]; knitwear [clothing]; clothing for ladies; clothing for ladies; ready-to-wear clothing; ready-to-wear clothing; casual clothing; casual clothing; jackets being clothing; jackets being clothing; ready-made clothing; ready-made clothing; clothing for martial arts; clothing for martial arts; blouses [clothing]; blouses [clothing]; bottoms [clothing]; bottoms [clothing]; tops [clothing]; tops [clothing]; fabric belts [clothing]; fabric belts [clothing]; jumpsuits [clothing]; jumpsuits [clothing]; children's clothing; children's clothing; boys' clothing; boys' clothing; clothes for sports; clothes for sports; slipovers [clothing]; slipovers [clothing]; dresses; dresses; dress shirts; dress shirts; clothing for babies; clothing for babies; knitted clothing; knitted clothing; underwear and nightwear; underwear and nightwear; leather dresses; leather dresses; dance clothing; dance clothing; sports clothing; sports clothing; denim dresses; denim dresses; shirts; shirts; dresses for girls; dresses for girls; clothing for gymnastics; clothing for gymnastics; pants; pants; shirts for women; shirts for women; beach clothing; beach clothing; dress suits; dress suits; plush clothing; plush clothing; footwear; footwear; women's pants; women's pants; nightwear; nightwear; underwear; underwear; casual wear; casual wear; gymnastic clothing; gymnastic clothing
On 18 April 2024 the Applicant filed its Notice of Intention to Defend.
On 30 July 2024 the Opponent filed its Evidence in Support (‘EIS’) consisting of:
- a declaration of Anna Louise Paul, Director at Paullie Skin IP Pty Ltd, dated 30 July 2024 including Exhibits AP-1 to AP-15 (‘Paul’);
- a declaration of Samuel James Mangan, Director at Paullie Skin IP Pty Ltd, dated 30 July 2024, including Exhibits SM-0 to SM-12 (‘Mangan 1’); and
- a declaration of Danh Nguyen, Solicitor at Thynne and Macartney Lawyers, dated 30 July 2024, including Exhibit DN-1 (‘Nguyen 1’).
On 7 November 2024 the Applicant filed its Evidence in Answer, consisting of:
- a declaration of Amy Bain, Director at Amy Ventures Pty Ltd, dated 6 November 2024 including Annexures AB-1 to AB-7, AB-9 to AB-12 and Confidential Annexure AB-8 (‘Bain’).
On 13 January 2025, the Opponent filed its Evidence in Reply (‘EIR’) consisting of:
- a declaration of Samuel James Mangan, dated 13 January 2025, including Exhibit SM-13 (‘Mangan 2’); and
- a declaration of Danh Nguyen, dated 13 January 2025, including Exhibits DN-2 to DN-4 (‘Nguyen 2’).
The period for evidence then ended and the parties requested to be heard. On 23 June 2025, the Opponent filed its written submissions. On 30 June 20205, the Applicant filed its written submissions.
I heard the matter on 7 July 2025 by video conference. Gilbert Tsang of Counsel appeared for the Opponent, instructed by Thynne and Macartney Lawyers. Andrew Petale of Yip Legal Pty Ltd appeared on behalf of the Applicant. I am to decide this matter as a delegate of the Registrar of Trade Marks (‘Registrar’).
Evidence
EIS
Anna Paul is a director of the Opponent. Anna Paul is also declared to be an influencer. An influencer is a person with a high public profile who sometimes is used to market or promote goods, especially on their social media. Paul declares that she is:
…a media celebrity and entrepreneur, who first became famous in 2018 for posting about my daily life on my TikTok account. I was also one of the top OnlyFans creators in Australia. Exhibit AP-1 are articles on popular online websites Cosmopolitan, Fashion Journal and Pedestrian written about me and how I became famous Australia-wide and in other countries.[2]
[2] Paul, [5].
Paul declares that there was first use of the word ‘PAULLIE’ on Anna Paul’s Instagram page ‘anna_paullie’, in October 2022. Exhibit AP-2 to Paul is a screenshot from Ms Paul’s personal Instagram page, dated 27 October 2022, showing what is declared as the first use of the trade mark ‘PAULLIE’ as part of the name ‘ANNA_PAULLIE’. Paul declares this was followed at that time by millions of followers (and which is now followed by more than 7 million followers).
On 10 May 2023 the Opponent was incorporated. Paul declares that the Opponent, ‘is a member of the Paullie Skin group of companies, including also Paullie Skin Pty Ltd and Paullie Skin Holdings Pty Ltd… all of which are co-directed and half beneficially owned by Ms Paul.’[3] The Opponent refers collectively to these entities as the ‘Paullie Skin Group’. Paul declares that the Paullie Skin Group carries on the business in Australia of designing and retailing, including online at (‘Opponent’s Website’), a range of cosmetics and skin care products, accessories, scrunchies and headband products, all sold under and by reference to the trade mark ‘PAULLIE’.[4]
[3] Paul, [8] and Exhibit AP-4. See also, Mangan, Exhibit SM-1.
[4] Paul, [4], [8], [21] and Exhibit AP-12.
Paul declares that prior to the Relevant Date, plans were formed to launch a cosmetics label and by December 2022 these had progressed.[5] Various costs were incurred in the preparation of products. Internal communications between Ms Paul and Mr Mangan appear in evidence in Mangan, including mock-ups. By 15 June 2023, Mr Mangan had procured a supplier for four products.[6] By July 2023, an initial order had been placed. Between 3 to 15 August 2023, Paullie Skin Pty Ltd procured an overseas contract manufacturer to supply headbands, serum bottles, mask bottles, cleanser bottles and branded box sets.[7]
[5] Paul, [7].
[6] Paul, [14] and Exhibit AP-8.
[7] Paul, Exhibit AP-10.
The preparations are said to have led up to announcements of the launch of the Opponent’s PAULLIE range of products on social media on 29 August 2023. I attach examples of screen captures of social media posts in this regard, of the same date, below:
[8] [9]
[8] Mangan 1, Exhibit SM-2
[9] Mangan 1, Exhibit SM-3.
I attach further images of other social media posts which contain launch announcements below:
[10] [11]
[10] Mangan 1, Exhibit SM-7
[11] Mangan 1, Exhibit SM-8.
The launch of goods is said to have been scheduled for 10 September 2023.[12] However, Paul appears to suggest that sales were accepted as early as 30 August 2023.[13] The evidence states that the products were sold out within minutes of the launch. Paul contains a spreadsheet of almost 200 pages documenting the sale of goods in individual transactions which appear to be dated from 5 September 2023 onwards.[14] Most of the transactions appear to be from Australia, although there are also sales to numerous other countries.
[12] Mangan 1, Exhibits SM-9 and SM-5.
[13] Paul, [11], [18] and [19].
[14] Paul, Exhibit AP-11.
Paul specifically declares:
[the] Opponent's promotional activities prior to and on the first week of its first sale of its PAULLIE branded products on 30 August 2023 were extensive, including multiple social media posts on all of my social media accounts, my in-person promotion, and interviews I gave to various online popular fashion and news websites.
The Opponent's cosmetic, scrunchies, headband and online retail business commenced on 30 August 2023, with a six-figure waitlist that began on 10 May 2023.[15]
[15] Paul, [17]-[18].
There is no documentary evidence before me which corroborates the statement that there was a waitlist in existence that began on 10 May 2023.
Below I extract example images of some of the products referred to in Paul, these likely correspond to those mentioned in spreadsheet:
[16] [17]
[18] [19]
[16] Mangan 1, Exhibit SM-4.
[17] Paul, Exhibit AP-12, 291.
[18] Paul. Exhibit AP-12, 292.
[19] Paul, Exhibit AP-12, 291.
The evidence also includes examples of collaborations occurring after the Relevant Date, including one with the brand ‘HiSmile’.
Various financial information for the Opponent and Paullie Skin Pty Ltd for the quarter 1 July 2023 provided which shows a large amount of reported sales. An amount for sales between 30 August 2023 to 10 September 2023 is also declared and this is a substantial amount.
Mangan in part is dedicated to establishing the fame of Ms Paul, including news articles describing her fame. One of the news articles, at the website mamamia.com.au and dated 29 August 2022, describes Ms Paul as, for example, ‘one of Australia’s biggest social media influences and [having] tapped into the Gen Z market globally…’.[20] Mangan also provides a similar history to that in Paul, describing the preparation and launch of goods by the Opponent and its related entities.
[20] Mangan, Exhibit SM-0.
Nguyen 1 summarises research performed after the Relevant Date, about the url and declares on visiting that url on 21 March 2024, the website was redirected to the website (‘Applicant’s Website’). Exhibit DN-1 contains copies of the screenshots that captured when the research was conducted showing these facts.
I otherwise refer to the EIS where relevant throughout these written reasons.
EIA
Bain canvasses the history and activities of the Applicant which includes the sale of leggings under the trade mark ‘Pawlie’.
Bain also notes what appears to be past use of the words ‘PAULLIE PAWS’ on the Applicant’s Website in respect of leggings, attaching an example at Annexure AB-10 to Bain. This evidence is dated well before the launch of products by the Opponent and before the Relevant Date.
I otherwise refer to the EIA more specifically where relevant throughout these written reasons.
EIR
Mangan 2 declares a search of the Opponent’s Instagram Account. Exhibit SM-13 ‘contains a copy of the screenshots that [Mangan] captured showing that Amy Bain or the Applicant has endorsed the Opponent’s Instagram posts in the comments.’ The screen captures do show this and are dated in September 2023.
Nguyen 2 seeks to contradict Bain by other evidence captured from the Applicant’s Website. Nguyen 2 declares that when the Applicant’s Website is accessed on the Wayback Machine, the earliest capture date is 28 November 2023. A number of individual screen captures of the Applicant’s Website are also extracted in Nguyen 2.
Grounds and onus
The Opponent has the onus of establishing one of the nominated grounds of opposition.[21] The standard of proof is the ordinary civil standard of the balance of probabilities.[22]
[21] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ) (‘Food Channel’).
[22] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Opponent presses the opposition grounds under ss 59, 62A, 60 and 42(b).
The Opponent clarifies that it no longer presses the initially particularised ground of opposition under s 58. I consider this ground to be abandoned.
Consideration
Section 60
The Opponent relies upon s 60. Section 60 provides:
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.
Note: For priority date see section 12.
To satisfy s 60(a), the Opponent must establish that as at the Relevant Date another trade mark had acquired a reputation in Australia.[23] The word ‘reputation’ here means, ‘the recognition of the [trade mark] by the public generally’.[24] Something more than a reputation among a small number of persons is required and the size and extent of the class of persons may vary depending on the circumstances.[25] Reputation may be inferred from a high sale volume, together with substantial advertising expenditures and other promotions, without direct evidence of consumer appreciation of the Trade Mark.[26] The use as shown in the evidence must be use such that it indicates a connection in the course of trade the goods and/or services and the person who applied the trade mark to the goods.[27] The use of a sign as a trade mark is to be assessed as an objective question from the perspective of the ordinary consumer.[28]
[23] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘ConAgra Inc’).
[24] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[25] ConAgra Inc (n 23) [131]-[132].
[26] McCormick (n 24) [80] (Kenny J).
[27] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sunberg and Finkelstein JJ), cited with approval in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [43] (French CJ, Gummow, Crennan and Bell JJ).
[28] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 425 (Kitto J).
The Opponent relies on the use of the trade mark ‘PAULLIE’ as well as the sign (I consider these to be substantially identical and I refer to them collectively as the ‘Opponent’s Trade Mark’). The Opponent in part relies on the social media posts beginning on 29 August 2022 which announce the launch of goods. Paul also declares that there were pre-launch sales. However, there is little evidence to corroborate this other than the statement itself. Sales figures in the EIS appear to be dated from 5 September 2023. These begin with 12 sales on 5 September 2023, 1 sale on 7 September 2023 and 9 sales on 8 September 2023, all for a small volume of goods which weighs against a finding of there being a reputation as at the Relevant Date. I acknowledge that the sale of goods developed dramatically after those dates. However, I also note that all of these events occurred after the Relevant Date.[29]
[29] Paul, Exhibit AP-11.
A few days of marketing activities before the filing of a trade mark are only in specific and evidenced occasions likely to result in the generation of a reputation in another trade mark. Here the period of marketing before the Relevant Date was three days. The examples of marketing before the Relevant Date are limited to the social media posts which occasioned the launch of goods. The social media posts by Anna Paul announcing the launch of goods appear high in terms of the number of views. However, I cannot determine what number of persons actually viewed the posts as at the Relevant Date and the extent to which these viewers were located in Australia. There is no indication of the number of viewers for other social media accounts announcing the launch as at the Relevant Date.
The sales that did occur in the aftermath of the launch announcements are not necessarily indicative of a reputation in the Opponent’s Trade Mark. This is because many of those sales may equally have followed from the reputation of the individual, Anna Paul, rather than the Opponent’s Trade Mark and exposure on Anna Paul’s social media account. The sales may otherwise have resulted from events and activities occurring after the Relevant Date. It is likely that Ms Paul’s own reputation was used, at least in part, as a springboard for the initial launch of products by the Opponent, which resulted in the quantity of sales that did occur post the launch announcements.
The launch announcements made from 29 August 2023 onwards do not clearly refer to the goods to be sold, which makes it less definite that there a was any reputation in another trade mark. Even assuming that many persons saw the social media posts beginning 29 August 2023 for the launch of goods, it is difficult to discern the offer the Opponent’s Trade Mark was in respect of, other than that it might relate to nonspecific skincare or cosmetics goods. In Killer Queen, LLC v Taylor (‘Killer Queen’),[30] the Full Federal Court found that s 60 was established for the purposes of cancellation proceedings brought under s 88, relying on a reputation in the name of a celebrity singer alongside evidence from the trade. I contrast the circumstances on the evidence before me firstly as to the proximity in time of the first mention of the Opponent’s Trade Mark before the Relevant Date. In Killer Queen, the Court relied on evidence of use for a far more extensive period than three days, leading up to the filing date of the trade mark in question.[31] I also observe that there is limited evidence of use of the Opponent’s Trade Mark in relation to goods before the Relevant Date, and there appears to be no such corroborated public use before 29 August 2023.
[30] [2024] FCAFC 149 (Yates, Burley and Rofe JJ) (‘Killer Queen’). I note that the High Court has granted special leave to appeal, including in respect of the Full Federal Court decision regarding s 60.
[31] See for example, E2Interactive v Cabcharge Australia Limited [2017] ATMO 62, [54] (Hearing Officer K Brown), where a period of even 10 months of use was considered a short period of time.
There is also little to no evidence which corroborates recognition generally of the Opponent’s Trade Mark as at the Relevant Date. For there to be a reputation in a trade mark, there must be recognition of the trade mark as a trade mark in the sense that it designates the trade origin of some goods or services. The other trade mark in Killer Queen appears to have had a direct and more longstanding connection to the personality and fame of a celebrity,[32] whereas the Opponent’s evidence of a few social media posts is insufficient to establish a connection between the Opponent’s Trade Mark and the celebrity of Anna Paul as at the Relevant Date, such that there was a reputation in the Opponent’s Trade Mark. The Opponent’s evidence does not satisfy me that there was recognition of the Opponent’s Trade Mark generally, even resulting from Ms Paul’s social media exposure of the launch.
[32] Killer Queen (n 30), [283].
Whilst it is not impossible because of a short length of promotion leading up to the Relevant Date that there was a reputation, such circumstances are not likely to result in such and would require a quality of evidence not before me. Overall, I am not satisfied on the balance of probabilities that the Opponent’s Trade Mark had acquired a reputation as at the filing of the Trade Mark. Therefore, the requirements set out in s 60(a) are not made out.
Accordingly, the ground of opposition under s 60 is not established.
Section 42(b)
Section 42(b) provides:
[a]n application for the registration of a trade mark must be rejected if… its use would be contrary to law [my emphasis added].
The requirement for s 42(b) is that I am satisfied that the use of the Trade Mark would not could be contrary to law.[33] The Opponent has two main bases for its s 42(b) ground of opposition, which I now consider.
[33] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
The SGP states the following in respect of the s 42(b) ground of opposition:
Competition and Consumer Act 2010 (‘CCA’); Tort of passing off; Other
…The Opponent has used and promoted (including via its principal, Anna Paul) its trade mark PAULLIE since before the Priority Date and, by reason of that use, had at the Priority Date acquired a substantial reputation in the trade mark PAULLIE in Australia.
…By virtue of the Opponent’s reputation in its trade mark PAULLIE in Australia, the use and registration of the Opposed Mark in Australia in relation to the goods and services covered by the Application would be likely to mislead or deceive in breach of sections 18 and/or 29 of the Australian Consumer Law [‘ACL’ which is in Schedule 2 to the CCA] or would constitute passing off at common law
The requirements of s 18 of the ACL are that there be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s Services due to the conduct of the Applicant – that is, the consumer would be likely to be led into error.
Section 29 of the ACL concerns representations that are false or misleading. The expression ‘mislead or deceive’ in s 18 of the ACL is effectively equivalent to the expression ‘false or misleading’ in s 29 of the ACL.[34]
[34] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).
The test for determining whether conduct contravenes the ACL is one that is stricter than the that under s 60 of the Act. Section 60 requires only that consumers would be likely to be deceived or confused. Since I am not satisfied that the ground of opposition under s 60 has been established, it follows that on the more demanding test to be applied under the ACL, I am not satisfied that the Applicant’s use of the Trade Mark would be likely to mislead or deceive, or amount to a false or misleading representation under the ACL.
Determining whether there is passing off involves similar considerations to misleading and deceptive conduct in that there must be reputation in the relevant trade mark mark or indicia; a misrepresentation leading to deception; and damage to goodwill, or the likelihood thereof. Where a trade mark is not likely to contravene the ACL, it is also not likely to amount to passing off. In this respect, Hill J noted in Re Equity Access Pty Ltd v Westpac Banking Corporation that:
The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[35]
[35] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 771, [40] (Hill J).
Sections 52 and 53 of the Trade Practices Act 1974 (Cth) are the predecessor sections for ss 18 and 29 of the ACL. Given my findings in relation to sections 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.
Accordingly, the ground of opposition under s 42(b) has not been not established.
Section 62A
Section 62A provides that the registration of a trade mark may be opposed on the ground that the Application was made in bad faith. For this ground of opposition, I must determine whether, ‘in all the particular circumstances, the applicant’s knowledge was such that [her] decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards’.[36] This question is determined as at the Relevant Date.
[36] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [167] (Dodds-Streeton J).
The SGP states the following in respect of the ground of opposition under s 62A:
10. The Opponent reiterates the matters set out in respect of sections 59, 60 and 42(b).
11. Given the circumstances referred to in 10 above, as at the Priority Date the Applicant knew, or ought to have known, that the trade mark PAULLIE was being used by the Opponent in relation to the Opponent’s online retail business at the Paullie Website.
12. In addition, as at the Priority Date, the Applicant knew, or ought to have known, that the trade mark PAULLIE had gained, or was gaining, significant attention in the media as a trade mark for the Opponent’s goods and/or services.
13. By filing the Application, the Applicant seeks to: (a) foster the false or misleading impression that the Opponent, its goods and/or services and/or its business, is somehow affiliated with the Applicant, its business and/or its trade mark “Pawlie”; and/or (b) appropriate for itself the benefit of the reputation generated by the Opponent and its principal, Anna Paul, in the trade mark PAULLIE, by creating an association in the minds of consumers between the Opponent’s trade mark PAULLIE and the Applicant’s trade mark “Pawlie”; and/or (c) prevent the Opponent from making, or limit the Opponent’s ability to make, full use of the Opponent’s trade mark PAULLIE in respect of its current and future business activities.
14. The conduct referred to in 13 falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.
15. Further and in the alternative, since as early as the Priority Date, the Applicant has obtained the domain licence for, and continuously used, the Paullie AU Domain to redirect users to the Applicant’s Pawlie Website. To the extent that the Application was filed solely or primarily for the purpose of enabling the Applicant to obtain registration of the Paullie AU Domain to redirect the Opponent’s customers or potential customers to the Pawlie Website, the Applicant’s conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.
16. Registration should be refused under section 62A of the Act.
The Opponent submits that there is an irresistible inference that I must draw concerning the awareness of Ms Bain. The allegation is that Ms Bain had become aware of the shop at the Opponent’s Website and was aware that consumers might type a similar web address with the Australian .au extension, when trying to access the Opponent’s Website. Further, the Opponent says that I should infer Ms Bain knew of the 8 million online followers of Ms Paul and likely exposure of consumers to social media posts. The Opponent notes that the evidence shows the Applicant’s own business had a direct presence on the social media platforms used for launch announcements.
The Opponent also points to circumstances which it says Ms Bain does not explain. These include the decision on how to file the Trade Mark, noting that there is no attempt to say it was a coincidence with the launch of products announced by the Opponent and Ms Paul. The Opponent submits that an inference of awareness can be drawn on the basis of the evidence as it is not contradicted.
Just because a person has a social media account, it does necessarily follow that there will be a finding of an awareness for any content also present on that social medial platform. However, I acknowledge there is evidence of Ms Bain or a social media account likely controlled by Ms Bain dated after, though close to, the Relevant Date which appears to be interacting with social media accounts related to the Opponent or Ms Paul. Even if Ms Bain was aware of Ms Paul and the launch announcements as at the Relevant Date, because of the limited information given in the announcement that awareness could rise no higher than awareness of an upcoming skincare and cosmetics range, possibly under the sign ‘PAULLIE’.
Bain attempts to answer parts of the EIS as it might relate to s 62A. Bain notes what appears to be past use of the words ‘PAULLIE PAWS’ in material that depicts leggings. In this context, the Applicant says the filing of the Application, whatever the awareness of Ms Bain, was not underhanded. The Opponent submits that the dating of this evidence is not clear. The Opponent refers me to a screen capture of the Applicant’s Website for the specific page of the Applicant’s Website at The earliest capture appears to be dated 28 November 2023, which the Opponent submits casts doubt about the how early the use of the sign ‘PAULLIE PAWS’ might have been. In addition to this, the Opponent’s written submissions are that, individual reviews which appear in the screen capture at Annexure AB-10 to Bain do not appear in the individual screen capture dated later on 23 November 2023 at Exhibit DN-3 to Nguyen 2.[37]
[37] Opponent’s written submissions, [66]-[67].
Close inspection of the screen captures of the Applicant’s Website at the specific page shown in Nguyen 2, reveals that whilst individual reviews do not appear, under the heading ‘Paullie Paws – Casual Capri Leggings’ are the words ‘5 Reviews’. This is consistent with the evidence in Bain. The listing at Annexure AB-10 to Bain contains the 5 individual reviews, some of which are dated as early as in 2021. One of the reviews dated 5 July 2022 in a screen capture which contains the words ‘Paullie Paws – Causal Full Legging’, shows an image of what appears to be a garment with the same paw pattern as the leggings shown in the screen captures of the pages shown Bain. Further, the screen capture in DS-2 to Nguyen 2 by the Wayback Machine suggesting the absence of earlier dated captures cannot rule out the possibility such at some point earlier to the launch by the Opponent of its products. Bain also contains a direct statement that suggests that the products under the title ‘PAULLIE PAWS’ on the Applicant’s Website are those pictured and sold before the launch by the Opponent.[38] I do not consider the EIR and EIS to successfully impugn this purported use of these words, nor the explanation of events offered in Bain. It is also my assessment that the use of the words ‘PAULLIE PAWS’ in Bain offers important context and explanation as to the reasons for the filing of the Application to register the Trade Mark, even if a reaction to, or with an awareness of the launch announcements for the Opponent’s goods.
[38] Bain, [19].
The awareness of an applicant of interests in an earlier trade mark prior to the filing of an application goes only some way in establishing a ground of opposition under s 62A. The context and all of the circumstances must also be considered in combination with the ultimate question as to whether in those circumstances, commercial minded persons would consider the action of filing the Application as underhanded or unscrupulous. Ms Bain offers some explanation for the choice of trade mark,[39] as well as evidence which supports a use of a core constituent element of the Trade Mark well before the launch announcements of Ms Paul in August 2023. I accept this evidence. I also note that the filing of the Application, even in its amended form, goes no further in the specification of Applicant’s Goods than what might be considered reasonably necessary to cover a range of clothing. Some of these goods are goods in respect of which the Applicant appears to have had years of use of the words ‘PAULLIE PAWS’. There is nothing in the specification which, necessarily for example, pertains to cosmetics or skincare which was the subject of the launch announcement.
[39] Bain, [18]-[19].
Whilst the commercial decision to file the Application may have been in part influenced by an awareness of the Opponent’s or Anna Paul’s launch announcements, in this context I do not view the conduct as necessarily commercially unscrupulous. Rather, the filing of the Application appears to be the conduct of a trader concerned with the protection of their reasonably perceived extant rights in a trade mark in relation to different goods to those mentioned in the launch announcements for the Opponent’s goods.
Accordingly, the ground of opposition under s 62A has not been established.
Section 59
Section 59 provides:
59 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.
Note: For applicant see section 6.
There is an often noted notion in trade marks law that an application for registration of a trade mark attracts with it a presumption that an applicant intends to use the trade mark.[40] The onus is said to be on the opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date.[41] If the opponent makes out a prima facie case, the evidentiary onus is said to shift to the applicant to show its intention to use the trade mark at the filing date.[42] It has also long been recognised that the absence of the requisite intention to use should not be inferred from lack of use of a trade mark, particularly as there can be good reasons to defer use until a registration is secured.[43] Actual use, or absence thereof, may be relevant to the existence of the relevant intention in all of the circumstances and alongside other evidence.[44]
[40] Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J) (‘Suyen Corp’).
[41] Aston v Harlee Manufacturing Co [1960] HCA 47, [21] (Fullagar J).
[42] SuyenCorp (n 40) [190].
[43] Suyen Corp (n 40) [207].
[44] Food Channel (n 21) [74].
The SGP states the following in respect of the ground of opposition under s 59:
17. As at the Priority Date, the Applicant had no intention to use, or authorise the use of, the Opposed Mark in Australia, or to assign the Opposed Mark to a body corporate for use in Australia.
18. The Applicant has since 2020 operated an online retail business selling leggings and associated apparel at the domain name (Pawlie Website). The Applicant’s various goods have at all material times been exclusively sold under or by reference to the word ‘Pawlie’.
19. On 29 August 2023, the Opponent publicly announced, including on social media and several popular third party blogs, the launch of its online retail business selling to consumers in Australia and beyond a range of cosmetics and associated products under and by reference to Opposed Mark at the website paullie.com (Paullie Website). The launch was widely publicised, including by the Opponent's principal, Anna Paul, to her extensive network of followers on her various social media platforms, and attracted significant attention on social media and online news outlets.
20. The Applicant filed the Application on 1 September 2023, less than a week after the Opponent’s launch announcement.
21. On or about 1 September 2023, the Applicant registered in its own name the domain name for paullie.com.au (Paullie AU Domain). Since then, the Paullie AU Domain has been used to redirect users to the Pawlie Website.
22. To the best of the Opponent’s knowledge, to this day there has been no genuine use of the Opposed Mark by the Applicant.
23. In the circumstances, as at the Priority Date, the Application for the Opposed Mark was filed for purely defensive and/or tactical reasons, including possibly for the sole purpose of obtaining registration of the Paullie AU Domain
At the hearing the Opponent’s Counsel took me to several decisions concerning the shifting of the onus in matters which concern the intention to use the Trade mark.
My assessment is that the registration of a web address and redirection to another website, without more, does not here say very much about the intention to use the Trade Mark. It is on its face a normal practice for a trader to acquire some variations of a domain name which derives from a word which they have already used for some time. That there has been no use in the evidence of the Trade Mark in insolation as yet also does not necessarily compel the conclusions the Opponent presses about an intention to use. Further, the existence of another trade mark more often in use, here the word ‘pawlie’, also does not result in an irresistible initial finding of there being a lack of intention to use the Trade Mark.
What must be shown is at the time of filing the Applicant lacked an intention to use the Trade Mark. I note that there is nothing in the evidence which establishes that the Applicant could not provide the Applicant’s Goods. Otherwise, the evidence does not establish that the Applicant filed the Application, for example, for entirely speculative or defensive reasons, even if the domain name has only been used a redirector to the Applicant’s Website.
The evidence of the use of words ‘Paullie Paws’ in respect of leggings also supports a finding of the Applicant having an intention to use the Trade Mark in respect of the Applicant’s Goods, which are all forms of clothing, and my findings in that regard for the ground of opposition under s 62A apply here.
To summarise, the Opponent’s submissions largely focus on a lack of use by the Applicant and explanation of its actions by the Applicant, rather than establish a requisite lack of intention to use the Trade Mark. The evidence relied on by the Opponent, and its submissions, rise no higher than speculative allegations of there being a lack of intention to use the Trade Mark. For these reasons, I find that the evidence and the circumstances relied on by the Opponent do not establish a prima facie case that the Applicant lacked the requisite intention to use the Trade Mark for the Applicant’s Goods as at the Relevant Date. Consequently, the onus has not shifted to the Applicant. Overall, the Opponent has not discharged its onus.
Accordingly, the ground of opposition under s 59 has not been established.
Decision
Section 55 relevantly provides:
55 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.
I am not satisfied that a ground of opposition has been established. Accordingly, the Trade Mark 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 of the Trade Mark shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.
Costs
The Applicant has sought its costs, which ordinarily will follow the event. I award costs against the Opponent under s 221, in accordance with Schedule 8 to the Regulations.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
3 October 2025
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