Sichuan Chuanwazi Food Co Ltd v Chuan Zhao - [2025] ATMO 172

TRADE MARKS ACT 1995

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

Re:Opposition by Sichuan Chuanwazi Food Co., Ltd to registration of trade mark application number 2362470 (30, 43) – Chinese characters and Chuan Wazi (Figurative) - in the name of Chuan Zhao

Delegate:

Louise Tuohy

Representation:

Opponent: AU TM Pty Ltd

Applicant: Not represented

Decision:

2025 ATMO 172

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 44, 43, 58, 58A, 60 and 62A considered – none established – trade mark to proceed to registration

Background

This matter concerns an opposition by Sichuan Chuanwazi Food Co., Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark application (‘Application’) in the name of Chuan Zhao (‘Applicant’):
[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Trade mark number:              2362470
Trade mark:   (‘Trade Mark’)
Filing date:  7 June 2023
Specification:   Class 30: Sauce mixes; Sauce (edible); Satay sauces; Stir fry sauces; Brown sauce; Canned sauces; Cooking sauces; Fish sauce (condiments); Curry sauces; Flavourings in the form of concentrated sauces; Flavourings in the form of dehydrated sauces; Food dressings (sauces); Mixes for preparing sauces; Pasta sauce; Sauces (condiments); Sauces containing nuts; Sauces flavoured with nuts; Sauces for rice; Sauces for pasta; Savoury sauces; Vegetable pastes (sauces); Spicy sauces; Sauces for chicken; Salsa (condiment or sauce); Ketchup (sauce); Sambal sauce (ground red pepper sauce); Sambal oelek (ground red pepper sauce); Pepper sauces; Ground pepper; Pepper; Pepper vinegar; Dried sauce in powder form; Sauce powders; Curry powder; Mustard powder for culinary purposes; Chilli powder; Hot chilli bean paste; Peppers (seasonings); Blends of seasonings; Dried herbs (seasonings); Dried culinary herbs (seasonings); Dry seasonings; Flaxseed for culinary purposes (seasoning); Food pastes (seasonings); Garden herbs, preserved (seasonings); Ginger paste [seasoning]; Linseed for culinary purposes (seasoning); Preserved culinary herbs (seasonings); Preserved herbs (seasonings); Processed seeds for use as a seasoning; Seasoned salt for cooking; Seasoning marinade; Seasoning mixes; Seasonings; Sesame seeds (seasonings); Cinnamon (spice); Caraway seeds (spice); Dukkah consisting primarily of spices; Curry spices; Cloves (spice); Nutmegs (spice); Pizza spices; Spice extracts; Spice mixes; Spice preparations; Spiced salt; Spices; Food pastes (spices); Curry (spice); Dried chilli (spice); Food flavourings made from vegetables (other than essential oils)
Class 43: Restaurants; Restaurant services; Self-service restaurants; Salad bar restaurant services; Take-away restaurant services; Restaurant services for the provision of fast food; Theatre restaurants (provision of food and drink)
(‘Applicant’s Goods and/or Services’)
Endorsement:  The Chinese characters in the trade mark are transliterated as CHUAN WAZI and translated into English as SICHUAN CHILD.
The Application was examined as required by s 31 and advertised for possible registration on 8 November 2023.
On 4 January 2024 the Opponent filed a Notice of Intention to Oppose the registration followed by its Statement of Grounds and Particulars (‘SGP’) on 22 January 2024. The Applicant filed a Notice of Intention to Defend the opposition on 29 February 2024.
Thereafter the Opponent filed evidence in support in accordance with the Regulations as follows:

Declaration of Michael John Farlam, Director of AU TM Pty Ltd, representative for the Opponent, made on 27 May 2024, with Exhibits CWZ1 to CWZ13.

The Applicant did not file any evidence in answer.
Once the time for filing evidence had ended, the parties were given an opportunity to request a hearing. Neither party requested to be heard and the Opponent requested a decision without a hearing. I am a delegate of the Registrar of Trade Marks (‘Registrar’) and this matter has been allocated to me to determine. I do so based on the aforementioned materials.

Grounds of Opposition, Relevant Date and Onus

In the SGP the Opponent nominated grounds of opposition under ss 43, 44, 58, 58A, 60 and 62A.
The date at which the rights of the parties are to be determined is the filing date of 7 June 2023 (‘Relevant Date’). The filing date is also the priority date for the purposes of ss 44 and 60.
The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

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

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Discussion

The Opponent

The Opponent is a Chinese corporation registered on 10 March 2015. The Opponent is a foodstuffs manufacturer which supplies wholesalers with a range of food product.

The Applicant

No information regarding the Applicant has been provided.

Section 58

Section 58 provides:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

In the SGP the Opponent particularises the ground of opposition under s 58 as follows:

First use was February 2022. Services of which the trade mark is used:On-line promotion of computer networks and websites; Demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and homeshopping services; Publicity; Providing business information via a web site; Commercial administration of the licensing of the goods and services of others; Business management of hotels; Import-export agencies; Marketing; Sales promotion for others in the field of condiments, seasonings, spices, seasoning mixes and relish (condiment); Provision of an online marketplace for buyers and sellers of goods and services.

To establish this ground, the Opponent must show use in Australia, by some person other than the Applicant, of a trade mark that is identical or substantially identical to the Trade Mark,^[4] in relation to goods and/or services that are the ‘same kind of thing’ as the Applicant’s Goods and/or Services.[5] The trade mark relied on by the Opponent must have been used in the course of trade prior to the filing date, or prior to the date of first use of the Trade Mark, whichever is earlier.[6]
[4] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68, [62] (Gummow J).
[6] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
The test for whether trade marks are substantially identical was set out by Windeyer J in The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited as follows:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.^[7]
[7] (1963) 109 CLR 407, 415.
More recently, the Full Federal Court considered the test for substantial identity in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[8] and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd,[9] finding that the test requires that the trade marks are considered side by side while having regard to the essential features or dominant cognitive cues of the marks. For the purposes of comparison, I have reproduced the respective trade marks below:
[8] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ).
[9] [2017] FCAFC 83 (Greenwood, Jagot, and Beach JJ).

Trade Mark

Opponent’s Mark

On a side-by-side comparison I find that the respective trade marks are substantially identical. The essential elements in both trade marks are the same three Chinese characters, with the words CHUAN WAZI underneath being the transliteration of the Chinese characters. This is the manner in which both trade marks will be recalled. Although the respective trade marks are represented in different styles/fonts, I consider the different stylisation of the trade marks to be slightly more than a ‘change of style’[10] but less than the changes in the relevant trade marks considered in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd[11] where the stylised tail in the letter ‘d’ formed a significant part of the registered trade mark and the new trade mark incorporated new embellishments as well as a change in font. For these reasons the total impression emerging from a side-by-side comparison is one of resemblance.
[10] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135, [117] (Bennett J).
Farlam declares that the Opponent has had a presence in the Australian marketplace for a considerable period prior to the filing of the Application. Exhibits CWZ11, CWZ12 and CWZ13 to Farlam comprise copies of purchase and/or sales contracts, invoices and a packing list of foodstuffs under the product name CHUAN WA ZI destined for the Australian marketplace dated between 2021 and 2022.
Exhibits CWZ4 to CWZ7 to Farlam comprise extracts from the Internet Achieve Service Wayback Machine for the Opponent’s website (‘Website’) dated 2014, 2015 and 2022. The Website pages show use of the following trade marks in the header:

2014 and 2015

2022

Exhibit CWZ7 to Farlam also provides an image of a sauce bottle featuring the Opponent’s product labeling on the Website which I have reproduced below:

In my assessment of the evidence, I am not satisfied that the evidence shows use of the Opponent’s Mark in Australian in relation to its services. The evidence of purchase orders/sales contracts and invoices show that the supplier of the goods is the Opponent, however they do not demonstrate use of the Opponent’s Mark. Moreover, the Opponent’s Website is directed to users worldwide and not specifically targeted to Australian consumers. I also note that the goods promoted on the Website don’t appear to feature the Opponent’s trade mark (as per image reproduced at paragraph 20).
Under s 58 the burden is on the Opponent to provide clear, dated evidence that its trade mark has been used in respect of particular services and the evidence before me does not satisfactorily satisfy this burden. As such I am not satisfied that the Opponent has used its trade mark on or in relation to its services in Australia prior to the Relevant Date.
The ground of opposition under s 58 has not been established.

Section 44

Section 44 relevantly provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
In the SGP the Opponent particularised the ground of opposition by reference to its trade mark listed below:
Trade mark number:              2397293
Trade mark:        (‘Opponent’s Mark’)
Filing date:  18 October 2023
Priority date:     24 May 2023[12]
Specification:  Class 35: On-line promotion of computer networks and websites; Demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and homeshopping services; Publicity; Providing business information via a web site; Commercial administration of the licensing of the goods and services of others; Business management of hotels; Import-export agencies; Marketing; Sales promotion for others in the field of condiments, seasonings, spices, seasoning mixes and relish (condiment); Provision of an online marketplace for buyers and sellers of goods and services.
(‘Opponent’s Services’)
[12] Convention priority claimed on basis of Chinese application number 71790268. Note: convention claims are valid even if the foreign application on which it is based does not achieve registration.
To satisfy the s 44 ground of opposition the Opponent must establish that the Trade Mark is substantially identical, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar goods and/or services or closely related goods and/or services.
From the information set out in the SGP and verified on the Register of Trade Marks the Opponent’s Mark is held in a name other than that of the Applicant and has a priority date earlier than the Relevant Date.
I have already found that the Trade Mark is substantially identical the Opponent’s Mark.
The next consideration is whether the Applicant’s Goods and/or Services are similar or closely related to the Opponent’s Services.
Section 14 relevantly provides:
Definition of similar goods and similar services
[…]
(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services.
The Applicant’s Services in class 43 are broadly for Restaurant services. In comparison the Opponent’s Services in class 35 cover On-line promotion of computer networks and websites; Demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and homeshopping services; Publicity; Providing business information via a web site; Commercial administration of the licensing of the goods and services of others; Business management of hotels; Import-export agencies; Marketing; Sales promotion for others in the field of condiments, seasonings, spices, seasoning mixes and relish (condiment); Provision of an online marketplace for buyers and sellers of goods and services. The nature and purpose of these specific services are different, they are targeted to different consumers and are not provided by the same traders or through the same trade channels. As such I do not consider that the Applicant’s Services are the same or of the same description as the Opponent’s Services.
Whether the Applicant’s Goods are closely related to the Opponent’s Services involves different considerations. In the Registrar of Trade Marks v Woolworths, French J made the following observations:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”… it is a term of wider import than “similar”…[13]
[13] [1999] FCA 1020, [37].
In light of the above authority, I do not consider that the Applicant’s Goods in class 30 are closely related to the Opponent’s Services in class 35. The Applicant’s Goods are foodstuffs intended for the improvement of the flavour of food. In comparison, the Opponent’s Services are business and promotional services for others with the primary elements in the promotion mix being advertising, direct marketing and publicity. Therefore, I do not consider that the Applicant’s Goods are closely related to the Opponent’s Services.
I consider the dissimilarity between the goods and services is a strong indication that there is not a trade connection between the parties. As such consumers of the Applicant’s Goods and Services provided under the Trade Mark would not be confused between the services offered by the Opponent under its Mark.
The ground of opposition under s 44 has not been established.

Section 58A

Section 58A provides:
58A Opponent’s earlier use of similar trade mark
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the purposes of Part 17A.
(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a) first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b) has continuously used the similar trade mark in respect of those goods or services since that first use.
In the SGP the Opponent particularises the ground of opposition under s 58A as follows:
2397293 The trade mark was first used in February 2022. Use has been continuous. Services of which the trade mark is used are On-line promotion of computer networks and websites; Demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and homeshopping services; Publicity; Providing business information via a web site; Commercial administration of the licensing of the goods and services of others; Business management of hotels; Import-export agencies; Marketing; Sales promotion for others in the field of condiments, seasonings, spices, seasoning mixes and relish (condiment); Provision of an online marketplace for buyers and sellers of goods and services.

For s 58A to apply, the Trade Mark must have been accepted for registration under the provisions of s 44(4). In this matter the Trade Mark was not accepted under the provisions of s 44(4). As such this ground of opposition is not available to the Opponent.

Section 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.
In the SGP the Opponent particularises the ground of opposition under s 60 as follows:
The trade mark/s had acquired reputation before the priority date of the trade mark being opposed On-line promotion of computer networks and websites; Demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and homeshopping services; Publicity; Providing business information via a web site; Commercial administration of the licensing of the goods and services of others; Business management of hotels; Import-export agencies; Marketing; Sales promotion for others in the field of condiments, seasonings, spices, seasoning mixes and relish (condiment); Provision of an online marketplace for buyers and sellers of goods and services.
To satisfy s 60 the Opponent must establish that the trade mark upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.
In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ 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’.12F9F[14]
[14] [2000] FCA 1335, [81].
Justice Kenny also referred to the decision of Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG, where Delegate Thompson:
[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 the 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.14F11F[15]
[15] (1999) 47 IPR 423, 436.
What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltee provided 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.F12F[16]
[16] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).
Farlam states that the Opponent has had a presence in the Australian marketplace for a considerable period prior to the filing of the Application. Exhibits CWZ11, CWZ12 and CWZ13 to Farlam comprise copies of purchase and/or sales contracts, invoices and a packing list of foodstuffs under the product name CHUAN WA ZI destined for the Australian marketplace dated between 2021 and 2022.
Farlam declares that the Opponent has promoted and advertised the Opponent’s Mark on its Website over the past 12 years.[17]
[17] Farlam, Exhibits CWZ4 to CWZ7.
Farlam states that the Opponent’s Mark has received online reviews. Exhibit CWZ10 to Farlem comprises a copy of a review posted on the Weee Asian Groceries (an American online Asian supermarket) website dated 24 April 2023. The review recommends the Opponent’s Oily Chili Sauce.
In my assessment of the evidence, I find that the Opponent has failed to sufficiently evidence the breath of the Australian public that are likely to be aware of the Opponent’s Mark by quantitative or qualitative dimensions.
There are no sales or advertising figures, and the evidence of purchase orders/sales contracts and invoices are de minus. The promotion of the Opponent’s Mark on its Website is directed to users worldwide and not specifically targeted to Australian consumers. Moreover, evidence of consumer recognition of the Opponent’s Mark is from an American online retailer and there is no evidence that the review was posted by an Australian consumer.
Overall, the evidence is insufficient to establish, as a matter of fact, that the Opponent’s Mark had acquired a reputation in Australia amongst a significant or substantial number of consumers.
As I have found that the Opponent’s Mark has not acquire a reputation in Australia before the Relevant Date, there is no need for me to consider the second limb of s 60.
The Opponent has not established the ground of opposition under s 60.

Section 43

Section 43 provides:
43 Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

In the SGP the Opponent particularises the ground of opposition under s 43 as follows:

Identical wording to the mark owned by the opponent will lead to confusion in the marketplace. It will lead to consumer's believing that the goods offered by the applicant are in some way connected to the services offered by the opponent.

To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark itself. Justice Gyles in Pfizer Products Inc v Karam commented:
‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question …[18]
[18] [2006] FCA 1663, [53].
This section requires the Opponent to demonstrate that there is a connotation in the Trade Mark (or a part of it) and that because of the connotation, use of the Trade Mark would be likely to deceive or cause confusion.
As to whether there is a connotation associating the Trade Mark with the Opponent, I note that the connotation cannot arise from a comparison with another trade mark.[19] It is ss 44 and 60 that are concerned with whether use of a trade mark would be likely to deceive and cause confusion by reason of similarity with another trade mark in Australia. The authorities do recognise that deception or confusion may arise from a perceived sponsorship or endorsement in the name of a well-known institution or celebrity persona.[20] However, the Opponent has not established that its Mark is well-known and does not appear to depend on a connotation arising from the Trade Mark, but upon the Trade Mark’s similarity to the Opponent’s Mark.
[19] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [140] (Greenwood, Katzmann, and Rangiah JJ) (‘Primary Health Care’).
[20] See: McCorquodale v Materson [2004] FCA 1247, [60] (Kenny J).
I do not consider that the Trade Mark is likely to deceive or cause confusion because of any connotation in the Trade Mark.
The Opponent has not established the ground of opposition under s 43.

Section 62A

Section 62A provides:
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.
In the SGP the Opponent particulasises the ground under s 62A as follows:
The application intends to gain an advantage by being deceptively similar to the mark owned by the opponent and gain market share by association with an existing brand that has developed significant good will.
The Act provides no guidance on the meaning of the term ‘bad faith’. The Explanatory Memorandum to the Trade Marks Bill 2006 (Cth) provided that the new ground has been introduced to cater for situations (among others) ‘in which a person has deliberately set out to gain registration of a trade mark, or adopted a trade mark in bad faith’.
In DC Comics v Cheqout Pty Ltd, Bennett J observed that all of the circumstances surrounding the application to register a trade mark are relevant.[21] Moreover, conduct after the filing of an application can be used to shed light on the Applicant’s subjective intent at the time of filing.[22]
[21] [2013] FCA 478, [62].
[22] Ibid, [71].
The test for bad faith incorporates subjective and objective elements. That is, I must consider what the Applicant actually knew at the filing date, and then consider whether, armed with that knowledge its decision to file the Trade Mark would be considered to be in bad faith by persons who adopt proper standards of behaviour in business. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry’) Dodds-Streeton J made the following comments, quoting from Harrisons’s Trade Mark Application:
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.[23]
[…]
[23] [2012] FCA 81; Harrison’s Trade Mark Application [2004] EWCA Civ 1028.
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.[24]
[24] Fry (n 7) [2012] FCA 81, [147], [165]-[166].
The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[25] Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register the Trade Mark in respect of the Applicant’s Goods and Services, was a decision made to take advantage of the good-will associated with the Opponent’s Mark, noting that I have already found the evidence to be insufficient for the purposes of s 60(a). In circumstances where there is no evidence in support of the s 62A ground 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.
[25] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).
The Opponent has not established the ground of opposition under s 62A.

Decision

Section 55 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.

The Opponent has not established any of the grounds of opposition nominated in the SGP. Therefore, trade mark application number 2362470 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, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.

Costs

Both parties sought an award of 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 line with Schedule 8 of the Regulations.

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

29 August 2025

[5] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

[11] [2021] FCAFC 128, [161] (Jagot, Nicholas and Burley JJ).