Zhejiang Leapmotor Technology Co., Ltd v Zhihua Liu

[2025] ATMO 165

TRADE MARKS ACT 1995

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

Re:Opposition by Zhejiang Leapmotor Technology Co., Ltd. to applications under section 92 of the Trade Marks Act 1995 (Cth) by Zhihua Liu for removal of trade mark numbers 1973610 (9, 37) – LP LEAPMOTOR (Figurative), 1973611 (12, 35, 39) –LEAPMOTOR (Figurative) and 1973612 (12, 35, 29) – LP (Figurative) – each in the name of Zhejiang Leapmotor Technology Co., Ltd.

Delegate:

Nicholas Smith

Representation:

Opponent: David Bey from Madderns

Applicant: Self-represented

Decision:

2025 ATMO 165

Trade Marks Act 1995 (Cth) - section 96 opposition: ss 92(4)(a) and (b) application for removal of three marks - Removal Opponent’s evidence shows use of one of the marks for a subset of the Registered Goods. Insufficient evidence of obstacles to use for the remaining goods and services – exercise of Registrar’s discretion appropriate for one of the remaining marks for a subset of the Registered Goods – one of the Trade Marks to be removed from the Register and two to be retained for a subset of the Registered Goods

Background

1. This decision is pursuant to an application made on 9 March 2024 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Zhihua Liu (‘Applicant’) to remove the trade marks detailed below (collectively ‘Trade Marks’) from the Register of Trade Marks.  The application is made in respect of all the goods and services for which the Trade Marks are registered (collectively ‘Registered Goods and Services’), that is, the application is for complete removal of the trade marks.

Registration No.

1973610

Lodgement date

5 December 2018

Goods and Services

Class 9: Computer software (recorded); Computer software applications (downloadable); Data processing apparatus; Vehicle radios; Radar apparatus; Navigation apparatus for vehicles (on-board computers); Remote control units (other than for use with toys); Batteries, electric, for vehicles; Battery chargers; Computer programs (downloadable software)

Class 37: Rebuilding engines that have been worn or partially destroyed, not being aviation engines; Vehicle battery charging, not including batteries for aviation vehicles; Maintenance and repair of vehicles, not being aviation vehicles; Motor vehicle maintenance and repair; Vehicle service stations (refuelling and maintenance); Vehicle breakdown repair services; Machinery installation, maintenance and repair; none of the aforesaid services in relation to aviation vehicles; custom installation of automobile interiors; Re-treading of tyres; Repair information not related to aviation vehicles

(‘1973610 Goods and Services’)

Owner

Zhejiang Leapmotor Technology Co., Ltd.

Trade Mark

(‘1973610 Mark’)

Registration No.

1973611

Lodgement date

5 December 2018

Goods and Services

Class 12: electric vehicles; remote control electric vehicles, other than toys and not being aviation vehicles; vehicles for locomotion by land, water or rail; cars; driverless cars (autonomous cars); vehicle bumpers, not for aviation vehicles; automobile chassis; bodies for vehicles, not being aviation vehicles; upholstery for vehicles, not being aviation vehicles; tires for vehicle wheels, not for aviation wheels.

Class 35: Advertising; Rental of advertising space; Business information; Administration of consumer loyalty programs; Procurement services for others (purchasing goods and services for other businesses); Import-export agencies; Marketing; Systemization of information into computer databases; Commercial administration of the licensing of the goods and services of others; Provision of an on-line marketplace for buyers and sellers of goods and services

Class 39: Car transport; Transport; Packaging of goods; Piloting; Chauffeur services; Car rental; Car parking; Car sharing services; Route planning services; Providing driving directions for travel purposes

(‘1973611 Goods and Services’)

Owner

Zhejiang Leapmotor Technology Co., Ltd.

Trade Mark

(‘1973611 Mark’)

Registration No.

1973612

Lodgement date

5 December 2018

Goods and Services

Class 12: Electric vehicles; Remote control vehicles (other than toys); Vehicles for locomotion by land, air, water or rail; Cars; Driverless cars (autonomous cars); Vehicle bumpers; Automobile chassis; Bodies for vehicles; Upholstery for vehicles; Tires for vehicle wheels

Class 35: Advertising; Rental of advertising space; Business information; Administration of consumer loyalty programs; Procurement services for others (purchasing goods and services for other businesses); Import-export agencies; Marketing; Systemization of information into computer databases; Commercial administration of the licensing of the goods and services of others; Provision of an on-line marketplace for buyers and sellers of goods and services

Class 39: Car transport; Transport; Packaging of goods; Piloting; Chauffeur services; Car rental; Car parking; Car sharing services; Route planning services; Providing driving directions for travel purposes

(‘1973612 Goods and Services’)

Owner

Zhejiang Leapmotor Technology Co., Ltd.

Trade Mark

(‘1973612 Mark’)

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

3. Zhejiang Leapmotor Technology Co., Ltd. (‘Opponent’) has opposed the applications to remove the Trade Marks, in each case filing a Notice of Intention to Oppose removal on 14 May 2024 and a Statement of Grounds and Particulars (‘SGP’) on 13 June 2024.  The respective SGPs are practically almost identical.  The Applicant filed a Notice of Intention to Defend each proceeding on 16 June 2024.

1. The parties filed the following evidence in this matter.  I note that the parties filed separate evidence in respect of each Trade Mark:

Declarant and Position 1973610 Opposition	Date	Annexures or Exhibits
Evidence in support (‘EIS’)
Jiangming Zhu, founder, chairman of the board and CEO of the Opponent (collectively with the declarations filed in the other oppositions ‘Zhu declarations’)	18 September 2024	JZ1 to JZ2
Kin Seong Leong, Trade Marks Attorney with Madderns, the Opponent’s representative (collectively with the declarations filed in the other oppositions ‘Leong declarations’)	18 September 2024	KSL1 to KSL4
Evidence in answer (‘EIA')
Zhihua Liu	27 October 2024	1 to 18
Evidence in reply (‘EIR’)
Kin Seong Leong (collectively with the declarations filed in the other oppositions ‘Leong 2 declarations’)	11 January 2025	KSL-1 to KSL-11
Qiqing Yu, IP manager of the Opponent (‘Yu declaration’)	10 January 2025

Declarant and Position 1973611 Opposition	Date	Annexures or Exhibits
Evidence in support
Jiangming Zhu, founder, chairman of the board and CEO of the Opponent (collectively with the declarations filed in the other oppositions ‘Zhu declarations’)	18 September 2024	JZ1 to JZ2
Kin Seong Leong, Trade Marks Attorney with Madderns, the Opponent’s representative (collectively with the declarations filed in the other oppositions ‘Leong declarations’)	19 September 2024	KSL1 to KSL4
Evidence in answer
Zhihua Liu	27 October 2024	1 to 15
Evidence in reply
Kin Seong Leong (collectively with the declarations filed in the other oppositions ‘Leong 2 declarations’)	11 January 2025	KSL-1 to KSL-8
Qiqing Yu, IP manager of the Opponent	10 January 2025

Declarant and Position 1973612 Opposition	Date	Annexures or Exhibits
Evidence in support
Jiangming Zhu, founder, chairman of the board and CEO of the Opponent (collectively with the declarations filed in the other oppositions ‘Zhu declarations’)	18 September 2024	JZ1 to JZ2
Kin Seong Leong, Trade Marks Attorney with Madderns, the Opponent’s representative (collectively with the declarations filed in the other oppositions ‘Leong declarations’)	19 September 2024	KSL1 to KSL4
Evidence in answer
Zhihua Liu	27 October 2024	1 to 15
Evidence in reply
Kin Seong Leong (collectively with the declarations filed in the other oppositions ‘Leong 2 declarations’)	11 January 2025	KSL-1 to KSL-8
Qiqing Yu, IP manager of the Opponent	10 January 2025

5. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 24 January 2025 the Opponent requested a hearing by video-conference.  The matter was set down for a hearing on 1 July 2025 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 14 May 2025 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 17 June 2025 (‘Opponent Submissions’).  I refer to the Opponent’s Submissions collectively notwithstanding that the Opponent filed separate documents outlining its submissions in respect of each opposition. The Applicant filed written submissions on 23 June 2025 (‘Applicant Submissions’) and indicated that they would not be present at the hearing.  I refer to the Applicant’s Submissions collectively notwithstanding that the Applicant filed separate documents outlining its submissions in respect of each opposition.  At the hearing David Bey from Madderns represented the Opponent.

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

·the Applications for Removal;

·the Notices of Intention to Oppose and SGP;

·the Opponent’s Submissions; and 

·the Applicant’s Submissions. 

The Relevant Provisions

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

92  Application for removal of trade mark from Register etc.

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

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

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

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

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

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

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

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

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

(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)used the trade mark in Australia; or

(ii)used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

Note 1:For file and month see section 6.

Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

8. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Marks is the three year period ending on 9 February 2024 (‘relevant period’).

9. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the applications for the Trade Marks,[1] and I confirm that five years since filing the applications have in fact passed.

[1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

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

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

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

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

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

in relation to the goods and/or services to which the opposed application relates ( relevant goods and/or services ); or
(b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

[…]

(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

(a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
 (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

(i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
(ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

(c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

11.    I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]  In Blount Inc v Registrar of Trade Marks, Branson J observed:

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

Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.[3]

[3] [1998] FCA 440 (citation omitted).

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

13. I further note that a single bona fide use of the Trade Marks in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[4] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[5] Little weight is to be given to assertions of use which are not supported by documentary evidence.[6]  Undated examples of use carry little, if any, weight in support of a claim for use of a trade mark within the relevant period.[7] Use of the Trade Marks by an authorised user (as defined by s 8) is taken to be use of the Trade Marks by the Opponent.[8] 

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

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

[6] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Hearing Officer Wilson).

[7] Digitus Information Systems Pty Ltd v Leap Software Developments Pty Ltd [2018] ATMO 153, [16] (Hearing Officer Wilson). See also Simon Burke v Factor Holdings Ltd [2019] ATMO 69, [24] (Hearing Officer Brown).

[8] Act s 7(3).

14.     The principles when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[9]

[9] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

15.     A further useful summary of the principles of use is set out in paragraphs 82 to 84 of the Full Court’s decision in Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Ltd that I extract below:

The primary judge referred to the summary of the relevant principles concerning use “as a trade mark” in Nature’s Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117; (2010) 87 IPR 464 (Stone, Gordon and McKerracher JJ) which was a case in which the words “luscious Lips” were used on packaged confectionary which included lip shaped lollies. The Full Court summarised the relevant principles as follows at [19]:

1. Use as a trade mark is use of the mark as a “badge of origin”, a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else: Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107; 47 IPR 481; [1999] FCA 1721 at [19] (Coca-Cola); E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 265 ALR 645; 86 IPR 224; [2010] HCA 15 at [43] (Lion Nathan).

2. A mark may contain descriptive elements but still be a “badge of origin”: Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310; (1991) 30 FCR 326 at 347–8; [1991] FCA 310; 101 ALR 700 at 723; [1991] FCA 310; 21 IPR 1 at 24 (Johnson & Johnson); Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192; 33 IPR 161; Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2001) 190 ALR 185; 54 IPR 344; [2001] FCA 1874 at [60] (Aldi Stores).

3. The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 422; [1963] ALR 634 at 636; [1963] HCA 66; 1B IPR 523 at 532 (Shell Co).

4. The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use “as a trade mark”: Johnson & Johnson at FCR 347; ALR 723; IPR 24 per Gummow J; Shell Co at CLR 422; ALR 636; IPR 532.

5. Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or “context”) of the impugned words: Johnson & Johnson at FCR 347; ALR 723; IPR 24; Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182; [2002] FCA 390 (Anheuser-Busch).

6. In determining the nature and purpose of the impugned words, the court must ask what a person looking at the label would see and take from it: Anheuser-Busch at [186] and the authorities there cited.

The fact that a mark considered as a whole is largely or predominantly descriptive does not preclude a finding that it is also acting as a brand. Similarly, the fact that a product may bear more than one brand does not mean that only one of them is used as a trade mark. As the High Court said in Allergan at [25]:

...Where there are several words or signs used in combination, the existence of a clear dominant “brand” is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods [Anheuser-Busch [2002] FCA 390; (2002) 56 IPR 182 at 228 [191]].

In Anheuser-Busch, Allsop J observed at [191]:

It is not to the point, with respect, to say that because another part of the label ... is the obvious and important “brand”, that another part of the label cannot act to distinguish the goods. The “branding function”, if that expression is merely used as a synonym for the contents of ss 7 and 17 of the TM Act, can be carried out in different places on packaging, with different degrees of strength and subtlety. Of course, the existence on a label of a clear dominant “brand” is of relevance to the assessment of what would be taken to be the effect of the balance of the label.[10]

Discussion

[10] Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Ltd [2023] FCAFC 175, [82]-[84] (Nicholas, Burley and Cheeseman JJ).

1. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five[11] years.[12] As the Trade Marks each had been registered for more than five years as at the date of the application I need only consider the application for removal under s 92(4)(b) in this case. Therefore, to successfully oppose the application the Opponent must establish that it has used the Trade Marks (or a substantially identical trade mark[13]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)). 

2. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Marks should not be removed from the Register.

   Use of the Trade Marks

3. I start by looking at the evidence in support filed by the Opponent in each matter.  The Zhu declarations give evidence that the Opponent is an electric vehicle manufacturer headquartered in Hangzhou China, founded in December 2015, which to date has released six vehicles to the Chinese market, commencing in 2020.  The evidence is that the Opponent is an entity of significant size in China and seeks to expand internationally.  The Zhu declarations state that (as of the date of the declarations) the Opponent has not entered the Australian market by reason of certification approval issues, supply chain issues, logistics, strategic planning changes and restrictions due to the Covid-19 pandemic.  They also give evidence that the removal of the Trade Marks would be prejudicial to the Opponent due to its significant scale and desire to expand internationally.

   19.     The Zhu declarations give evidence that in October 2023 the Opponent entered into a strategic agreement with the multinational automotive group, Stellantis.  As part of this agreement the parties formed of a joint venture known as Leapmotor International with exclusive rights for the manufacturing, export and sale of ‘Leapmotor’ products outside of China, and that Leapmotor International commenced the international expansion of the Leapmotor brand in 2024.  The Opponent does not provide any evidence of legal documents surrounding the formation of Leapmotor International, including any licence agreements documenting the relationship between the Opponent and Leapmotor, or agreements showing any evidence of control over Leapmotor International’s use of the Trade Marks; rather all that is provided is two media releases indicating that Leapmotor International is controlled by Stellantis on a 51/49 basis. 

   [11] Or three years for trade marks filed from 24 February 2019 onwards see changes made in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3.

   [12] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off 6th edition, 2016 Thomson Reuters, [70.510].

   [13] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

4. The Leong declarations give evidence that an auction house based in Queensland offered a Leapmotor S01 vehicle for sale on 1 July 2022.  The declarations annex a news article indicating that the vehicle was owned by an engineering firm and was being offered as a written-off salvage vehicle.  The listing is also provided which refers to the vehicle as a LEAPMOTOR vehicle and notes that the vehicle was unable to be registered in its current configuration.

5. The Leong declarations also annex media articles speculating that the Opponent at some point would launch its vehicles in Australia from between 2022 and 2023 and media articles from March to June 2024 indicating that the Opponent intended to enter the Australian market offering its electric vehicles in late 2024.  These media articles contain images of the Opponent’s vehicles (presumably taken in China) indicating that these vehicles, at least those released from 2022 onwards, contained the 1973612 Mark on the steering wheel column or as a front badge.

6. In answer, the Applicant’s evidence notes that neither the Zhu nor the Leong declarations provide any evidence of use in Australia or intention to use the Trade Marks for the vast majority of goods and services for which they are registered.  It also notes that any use of the Trade Marks outside China would be by Leapmotor International which has the exclusive rights to use the LEAPMOTOR and related marks outside of China and therefore the Opponent neither had the intention to use nor has ever actually used the Trade Marks outside China.  The Applicant notes that restrictions on Covid-19 generally ended in 2022 and 2023 and those restrictions did not prevent another Chinese car maker, BYD, from entering into the Australian market in that period.  The Applicant states that the Opponent does not manufacture battery cells and gives evidence of its interest in the marks, being the applicant for variety of marks that are being blocked by the Trade Marks.

7. The Applicant’s evidence also states that the Leapmotor vehicle sold in Australia in 2022 was an evaluation vehicle being sold for scrap due to smoke damage.

8. In reply, the Leong 2 declarations start by making a series of submissions about the impact of the Covid 19 pandemic, the similarity of the goods and services and the prejudice to the Opponent of the removal of the Trade Marks.  I note as a matter of practice and procedure that a declaration is a place for evidence not submissions and have treated this material as such.   Furthermore, to the extent evidence about the impact of the Covid-19 pandemic to a business is given it should be given by a person with direct knowledge of the impact, not by their legal representative.  I do accept and acknowledge the documentary evidence annexed to the Leong 2 declarations at KSL-07, KSL-08 and KSL-09 regarding the Covid-19 pandemic.

9. The Leong 2 declarations also confirm that the Opponent does not manufacture its own batteries and the Opponent is one of many car brands that use a third-party battery supplier.

10. The Leong 2 declarations give evidence that there are currently 9 Leapmotor car dealerships around Australia, which have been in operation since 2024 selling the Opponent’s cars.  Exhibit KSL-11 (to the Leong 2 declaration filed in the 1973610 opposition, the numbering being slightly different in the other declarations) consists of a full copy of the Australian Government’s road vehicle approval for the Leapmotor Rover product, granted 11 September 2024, indicating the extensive testing conducted prior to approval.

11. Exhibits KSL-02, KSL-05 and KSL-06 (to the Leong 2 declaration filed in the 1973610 opposition, the numbering being slightly different in the other declarations) consist of evidence of the goods and services presently offered through the Leapmotor dealerships in Australia.  KSL-02 consists of a single Instagram page from the account BRIGHTONLEAPMOTOR stating that the all-new Stellantis brand house is opening, ‘uniting parts, sales and service of an effortless customer journey’.  It does not indicate what parts or servicing are offered and does not show any usage of the device featured in the 1973612 Mark.  KSL-05 is a page from the Leapmotor website at targeted at the Australian market, indicating the features of the Leapmotor C-10 vehicle.  It primarily shows usage of the 1973611 Mark but the final page of the webpage printout contains a banner featuring the 1973612 Mark side by side with the 1973611 Mark.  KSL-05 is provided to indicate that the Opponent’s products contain ‘smart phone level infotainment with software upgrades’ and ‘Advanced Driver Assistance Functions’ which the Opponent submits are closely related to certain goods claimed by the Opponent in its specifications.  KSL-06 is another extract from the Leapmotor website indicating that the Opponent offers after-sales support including roadside assistance coverage for its vehicles.  Like KSL-05, KSL-06 primarily shows usage of the 1973611 Mark but the final page of the webpage printout contains a banner featuring the device featured in the 1973612 Mark side by side with the 1973611 Mark. 

12. In reviewing the evidence I have reached a number of conclusions:

    -I consider that the word LEAPMOTOR is substantially identical to the 1973611 Mark as the 1973611 Mark consists of the word LEAPMOTOR with a modest amount of stylisation.

    -I consider that the use of the word LEAPMOTOR is not use of 1973610 Mark, rather the 1973610 Mark contains both additional stylisation and a prominent device, being the LP device, which is an addition that substantially affects the identity of the mark.  Equally, neither the use of the 1973611 Mark solus, nor the 1973612 Mark solus, is use of the 1973610 Mark as the 1973610 Mark consists of both the LP device and LEAPMOTOR device elements.

    -I am satisfied that, at least from 2022 onwards, the electric vehicles produced by the Opponent (and sold in China) bore the 1973612 Mark on the front badge or steering column, noting that there is no evidence that any of those products were sold in Australia prior to 2024.

    -There is a legitimate question about whether the banners featured in KSL-05 and KSL-06 amount to usage of two marks, namely the 1973612 Mark side by side with the 1973611 Mark, or a single mark, containing both the elements, that is substantially identical to the 1973610 Mark, since it contains both elements (only instead of one above the other they are side by side).  The Opponent’s evidence and submissions do not assist in answering this question.  On balance, noting the separate use of the 1973611 Mark and the word LEAPMOTOR elsewhere by the Opponent, and the fact that the Opponent has chosen to register the 1973612 Mark, I consider the better interpretation to be that it shows use of the 1973612 Mark and 1973611 Mark side by side and not the 1973610 Mark.

    -Given my conclusion above, there does not appear to be any documentary evidence before me of any use of the 1973610 Mark, either during or after the relevant period.  While I note that the EIS and EIA make various assertions of use of this marks subsequent to the relevant period, little weight is to be given to assertions of use which are not supported by documentary evidence.[14]  

    -There remain two relevant evidentiary questions:

    odid the sale of the Leapmotor S01 vehicle by a third party on 1 July 2022 amount to use of the 1973611 Mark in the relevant period[15] and if so on what goods and services; and

    oon which of the 1973611 and 1973612 Goods and Services has the Opponent demonstrated use of the 1973611 and 1973612 Marks after the relevant period.

    [14] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Hearing Officer Wilson).

    [15] There is no documentary evidence before me that any of the Opponent’s vehicles produced prior to 2022 bore either the 1973610 or 1973612 Marks, and the only evidence provided of this sale is the vehicle advertisement, which simply uses the word ‘Leapmotor’.

13. In E. & J. Gallo Winery v Lion Nathan Australia Pty Limited the High Court confirmed that the sale of a small quantity of wine bearing the trade mark, absent knowledge of the owner, can still be use of the Trade Mark in Australia, indeed:

    The capacity of a trade mark to distinguish a registered owner's goods from those of others, as required by s 17, does not depend on whether the owner knowingly projects the goods into the Australian market. It depends on the goods being in the course of trade in Australia. Each occasion of trade in Australia, whilst goods sold under the trade mark remain in the course of trade, is a use for the purposes of the Trade Marks Act. A registered owner who has registered a trade mark under the provisions of the Trade Marks Act can be taken, in general terms, to have an intention to use that trade mark on goods in Australia. It is a commonplace of contemporary international trade that prior to consumption goods may be in the course of trade across national boundaries.

    An overseas manufacturer who has registered a trade mark in Australia and who himself (or through an authorised user) places the trade mark on goods which are then sold to a trader overseas can be said to be a user of the trade mark when those same goods, to which the trade mark is affixed, are in the course of trade, that is, are offered for sale and sold in Australia. This is because the trade mark remains the trade mark of the registered owner (through an authorised user if there is one) whilst the goods are in the course of trade before they are bought for consumption As affirmed by Gummow J in Wingate Marketing Pty Ltd v Levi Strauss & Co, "whilst a trade mark remains on goods, it functions as an indicator of the person who attached or authorised the initial use of the mark". During the trading period, the trade mark functions as an indicator of the origin of the goods, irrespective of the location of the first sale.[16]

    Use of the 1973611 Mark in the relevant period

    [16] [2010] HCA 15 [51]-[52]

14. In the present case I am satisfied that the sale of the Leapmotor S01 vehicle by a third party on 1 July 2022 amount to use of the 1973611 Mark as ultimately the goods were sold in the course of trade with the 1973611 Mark used to distinguish the goods as the product of the Opponent, as opposed to the product of a third party.  Furthermore, had the Opponent sold the product to the Australian entity prior to the resale this may also have been use of the Trade Mark, but the Opponent provides no information about how the third party seller obtained the vehicle.

15. The next question is what goods were sold under the 1973611 Mark by reason of the sale of 1 July 2022, with the Applicant making the submission that the Leapmotor S01 vehicle sold was a written-off salvage vehicle that was smoke damaged by fire (and unable to be registered in its current condition).  While the vehicle itself was smoke damaged and unable to be registered in the condition, ultimately the good sold under the 1973611 Mark was in fact an electric vehicle, and not any other particular good or set of parts.  Furthermore, the fact that the purchaser of the product would likely use the product for a different purpose (for salvage) then the common purpose a purchaser uses an electric vehicle for does not change the nature of the good at the time of purchase; namely that it was an electric vehicle and not in fact a discrete collection of parts.  I am satisfied on the evidence before me that the Opponent has shown use of the 1973611 Mark in the relevant period for ‘electric vehicles and cars’.

16. With respect to whether the use of the 1973611 Mark for electric vehicles and cars falls within the broader specification of ‘vehicles for locomotion by land, water or rail’, I consider that the breadth of this specification is far broader than the proven use by the Opponent in this case, which is limited to electric vehicles and cars.  In Trident Seafoods Corporation v Trident Foods Pty Limited Gleeson J stated, ‘if a description of the goods in the registration is broader than the proven use, the Registrar or the Court can redraft the registration and replace the broad description with a narrower description more closely aligned with the use proven: Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94 [291] – [306]’[17].  The goods offered by the Opponent under the Trade Mark in the relevant period are best characterised as ‘electric vehicles and cars’.  Accordingly, I am satisfied that the Opponent has used the 1973611 Mark in Australia in respect of electric vehicles and cars (‘Used Goods’) in the relevant period.  I am not satisfied that the Opponent has used the 1973611 Mark for the Registered Goods and Services other than the Used Goods (‘Remaining Goods and Services’) during the relevant period. 

    Use of the 1973611 and 1973612 Marks after the relevant period

    [17] [2018] FCA 1490, [116].

1. I next review the evidence of use of the 1973611 and 1973612 Marks subsequent to the relevant period, which is relevant to my consideration of discretion.   The Opponent does not, in its submissions, clearly specify what goods and services the 1973611 and 1973612 Marks have been used for, rather it simply asserts that there have been sales since the relevant period ended. I accept that the 1973611 and 1973612 Marks have not been abandoned and are used in connection with the sale of electric vehicles and the operation of a range of dealerships in Australia.  However there are two issues with the Opponent’s evidence.

2. The first issue is that the Opponent’s evidence of what goods and services provided by those dealerships under the 1973611 and 1973612 Marks is meagre in the extreme, consisting of a screenshot of the Instagram page of a Leapmotor dealership which states that ‘parts sales and services’ are offered and two pages from its website (the only evidence of any usage of the 1973612 Mark) indicating that Leapmotor provides a vehicle warranty and roadside assist coverage.  This material does not indicate what parts are offered, and whether those parts are offered under the 1973611 and 1973612 Marks.  This is material that is entirely within the power of the Opponent to provide and the failure to provide basic information such as whether the Leapmotor dealerships offer parts for sale under its marks, or whether any sales support services were provided to third parties gives rise to the inference that no such goods and services were offered.

3. Secondly, the evidence before me from the Zhu declarations, is that, on its face, any use of the Trade Marks would be by Leapmotor International, a 51/49 joint venture between Stellantis and the Opponent. The Opponent submits that Leapmotor International is an authorised user of the Trade Marks under the principles of s 8 of the Act. Under s 8, authorised use requires use under the control of the trade mark owner. In the Full Federal Court decision of Lodestar Anstalt v Campari America LLC,[18] Besanko J summarises the law:

   63. Section 8(1) of the Act defines a person who is an authorised user of a trade mark and the key concept in the subsection is that the trade mark is used in relation to goods or services under the control of the owner of the trade mark. Section 8(2) makes it clear that an authorised use only applies to the extent that the trade mark is used under the control of the owner of the trade mark. By reason of s 7(3) an authorised use is taken to be a use of the trade mark by the owner of the trade mark. Subsections 8(3) and (4) provide for two cases where the use of a trade mark is taken to be use under the control of the owner of the trade mark: the owner of the trade mark exercises quality control over the relevant goods or services or the owner exercises financial control over the other person’s relevant trading activities. Section 8(5) makes it clear that the meaning of the expression under the control of is not limited to the two cases identified in s 8(3) and (4) of the Act.

   [18] [2016] FCAFC 92 (Allsop CJ, Greenwood, Besanko, Nicholas and Katzmann JJ).

4. Justice Besanko later stated that:

   98.        [A]ctual control will be a question of fact and degree. A licence agreement may contain a term that sets in detail a quality standard to be achieved. The details in the agreement may be such that it is not necessary for the registered owner to give directions or instructions from time to time. The licensee, aware of its obligations, may faithfully comply with those obligations without any entreaties or demands from the licensor. The primary judge had such a situation in mind when he referred to cases where there was obedience to the trade mark owner “so instinctive and complete that instruction was not necessary”.

5. In that same case, Katzmann J commented on the construction of section 8 as follows:

   169. Section 8 provides that whether a person is an authorised user of a registered mark and whether the use of the mark by that person is an authorised use depend on whether the person uses the mark under the control of the registered owner (subss (1) and (2)). Subsections (3)–(4) reveal that use will be taken to be use under the control of the owner where, for example, the owner “exercises quality control over goods or services ... dealt with or provided in the course of trade by another person ... and ... in relation to which the mark is used” or “exercises financial control over the other person’s relevant trading activities”. Subsection (5) states that subss (3)–(4) do not limit the meaning of the expression “under the control of” but this statement is ambiguous. It might signify that “control” is not limited to quality control or financial control. On the other hand, it might signify that control is not limited by the context provided by subs (3)–(4). The former construction is the preferable one. In my opinion, the examples given in subss (3) and (4) give colour to the concept of control in s 8. The language used in the two subsections strongly suggests that — regardless of the form control might take — it is the exercise of control that matters, not merely the right to do so.

   38.     In Trident Seafoods Corporation v Trident Foods Pty Ltd (‘Trident’),[19] the Full Federal Court at paragraph 45 noted that as a matter of practicality, control could be found in circumstances where the two companies shared the same directors.  The onus under s 100 is for the Opponent to show evidence of use or authorised use of the Trade Marks by the owner of the mark in the relevant period.  The Opponent in this case provides no evidence of a trademark licence between the Opponent and Leapmotor International, no evidence of practical control, and no evidence of, for example, shared directors.  The mere fact that the Opponent owns 49% of the entity that appears to be presently using the Trade Marks in Australia is not a sufficient basis to find authorised use.[20]  I am not satisfied by the evidence before me that any use of the Trade Marks in Australia after the relevant period was authorised use by the Opponent, rather it was by Leapmotor International.

   [19] [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ).

   [20] My conclusion regarding authorised use does not interfere with my conclusion regarding the use of the Trade Mark by reason of the sale of a second hand Leapmotor vehicle in 2022 referred to in paragraph 31 above; that product was produced by the Opponent prior to the joint venture with Stellantis.

6. Specifically with respect to the class 12 goods[21], I am satisfied that Leapmotor International uses both the 1973611 and 1973612 Marks for the Used Goods; i.e. it continues to offer electric vehicles and cars under the Trade Marks.  However there is no evidence before me that either the Opponent or Leapmotor International has ever offered ‘remote control electric vehicles; driverless cars (autonomous cars)’ under the 1973611 and 1973612 Marks.  The remaining goods in this class consist of car parts.  The Opponent’s evidence is entirely unclear about which car parts are manufactured by it/Leapmotor International and offered under the 1973611 and 1973612 Marks and in which circumstances it uses third party parts.  Merely using a trade mark for a car does not amount to use for all the components in the car, in the same way that using a mark for pizza does not amount to use for cheese, and in the absence of clear evidence that, for example, the Opponent or Leapmotor International manufactures and offers for sale tyres under the 1973611 and 1973612 Marks the reference on an Instagram page to a dealer offering ‘parts, sales and service’ does not amount to use for any of the Class 12 Goods.

   [21] The 1973611 Goods and Services and the 1973612 Goods and Services are virtually identical and have been treated so in this analysis; the differences are immaterial to my conclusion.

7. In respect of the class 35 services, merely advertising one’s own products and administering a customer loyalty program for one’s business is not an offering of Class 35 services; such services are not offered in the course of trade.  With respect to the Class 39 services there is no documentary evidence before me that the Opponent or Leapmotor International offers any such services under the 1973611 and 1973612 Marks.  While I accept that the Leapmotor International offers certain after sales services such as car servicing and roadside assistance under the 1973611 and 1973612 Marks, these services do not fall within the 1973611 or 1973612 Goods and Services.

8. In summary, I satisfied by the evidence before me that the Opponent has provided, under the 1973611 Mark, the Used Goods in the relevant period.  I am also satisfied that Leapmotor International provides the Used Goods under the 1973611 and 1973612 Marks after the relevant period but am not satisfied that this is use authorised by the Opponent.  I am unsatisfied by the evidence that there is any other evidence of usage of any of the Trade Marks for any of the goods and services for which the Trade Marks are registered, either before or subsequent to the relevant period. 

   Obstacles to use

   42.   An opponent to an application for removal may rebut an allegation of non-use by establishing that a failure to use the mark in the relevant three-year period was ‘because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period’. [22]  Circumstances that may constitute an obstacle to the use of a trade mark within the meaning of s 100(3)(c) were considered by Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds, where his Honour said:

   [22] Act s 100(3)(c).

   In my opinion, circumstances within s 100(3)(c) will only exist when events arise that are capable of disrupting trade in the area of commercial activity in which goods bearing the registered owner’s mark are traded. For the statutory excuse to be made out, those circumstances must cause (in a practical business sense) non-use of the particular mark by the owner, whether or not they have an impact on any persons other than the owner of that mark who are also involved in that same area of commercial activity. There must be a causal link shown between the relevant circumstances and the mark’s non-use. This requirement arises from the fact that s 100(3)(c) creates an excuse only where the mark has not been used by the registered owner “because of” circumstances etc. It will not assist the opponent to removal to show the existence of an impediment to use of the kind referred to in s 100(3)(c) if he does not also establish that, but for that impediment, he would have used the mark.[23]

   [23] [2001] FCA 261 [55].

   43.     For the purposes of considering this ground I will not consider whether there were obstacles that prevented the use of 1973611 and 1973612 Marks for the Used Goods as the Opponent has demonstrated use of the 1973611 Mark for the Used Goods in the relevant period and, for the reasons set out later in the decision, I have decided to exercise my discretion to allow  the 1973612 Mark to remain on the Register for the Used Goods.

   44.     The Opponent asserts that the various restrictions placed as a result of the Covid-19 pandemic constituted an obstacle to the use of the Trade Marks within the meaning of s 100(3)(c).  I do not accept the Opponent’s submissions on this point.  Firstly, there appears to be no documentary evidence before me that the Opponent has ever used the 1973610 Mark including in China during the period in which Covid-19 pandemic restrictions were in place and hence I cannot find that were these restrictions not in place, the Opponent would have used the 1973610 Mark in Australia.

   45.     Secondly, there also appears to be no documentary evidence before me that the Opponent has ever used any of the Trade Marks for any of the Remaining Goods and Services, including in China and including subsequent to the relevant period.  In the absence of specific, supported evidence of how the Covid-19 pandemic was an obstacle to the Opponent’s use of the Trade Marks in Australia for the Remaining Goods and Services (as opposed to the Used Goods), I am not satisfied that the Opponent’s failure to use the Trade Marks was because of circumstances that were an obstacle to use pursuant to s 100(3)(c).

   Registrar’s Discretion

   46.     As noted in Shanahan’s Australian Law of Trade Marks and Passing Off ,the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest in the integrity of the Register will generally demand the removal of an unused trade mark.[24]  In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):

   [24] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

   The following propositions are relevant to the exercise of this discretion:

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.

   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …

   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …

   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

   (5) The range of factors considered in the exercise of the discretion has included whether or not:

   (a) there has been abandonment of the mark;

   (b) the registered proprietor of the mark still has a residual reputation in the mark;

   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d) the applicant for removal had entered the market in knowledge of the registered mark;

   (e) the registered proprietors were aware of the applicant’s sales under the mark;

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[25]

   [25] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

9. In Health World Ltd v Shin-Sun Australia Pty Ltd, on the subject of the condition of the Register, the Court said:

   [T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have “integrity” and that it be “pure”. It is a “public mischief” if the Register is not pure, for there is “public interest in [its] purity”. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied.[26]

   [26] [2010] HCA 13, [22] (French CJ, Gummow, Heydon and Bell JJ) (citations omitted).

   48.     While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[27] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[28] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[29]

   [27] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

   [28] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [29] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210] (emphasis in original).

   49.     In the present case the Opponent submits that the Trade Marks should remain on the Register because they have not been abandoned, that there is considerable reputation in the Trade Marks, that there have been significant sales under the Trade Marks since the relevant period ended, and that the removal of the Trade Marks would be highly prejudicial to the Opponent.  Notwithstanding the Opponent’s lack of evidence that its use of the 1973611 and 1973612 Marks for the Used Goods after the relevant period was authorised by it, I am satisfied on balance that it is appropriate to retain the registration 1973612 Mark for the Used Goods in Australia as it has not been abandoned, and is presently been actively used by a related entity for the sale of vehicles and related services.  This evidence, as well as the evidence of the Opponent’s significant reputation in China and media articles about the Opponent in Australian media satisfies me that the 1973612 Mark should be retained for the Used Goods in Australia as there is a genuine likelihood of significant consumer confusion were a similar device to be registered for vehicles.  There is hence a significant public interest in retention of the 1973612 Mark for the Used Goods.

   50. However, the material before me does not persuade me to exercise my discretion beyond retention of the 1973612 Mark for the Used Goods. There is no documentary evidence before me that the Opponent has ever used the 1973610 Mark or has a reputation in the 1973610 Mark. Equally there is no documentary evidence that the Opponent has any reputation in, use of or intention to use the 1973611 and 1973612 Marks for any of the Remaining Goods and Services both because there is no evidence of such use by Leapmotor International, and there is insufficient evidence that any use of the marks by Leapmotor International would be authorised use by the Opponent under s 8. Given that, I am unpersuaded that the removal of the 1973610 Mark or the 1973611 and 1973612 Marks for the Remaining Goods and Services would result in consumer confusion or practically impact on the interests of the Opponent in any way. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Remaining Goods and Services.

   Decision

   51.     The Opponent has not established its opposition to removal of the 1973610 Mark. Accordingly, I direct that registration 1973610 be removed from the Register one month from the date of this decision. 

   52.     The Opponent has partly established its opposition to the removal application for the 1973611 Mark and the 1973612 Mark. Accordingly, I direct that registrations 1973611 and 1973612 be removed from the Register in respect of all Remaining Goods and Services one month from the date of the Decision. They will remain registered for the goods listed below. 

   Class 12:  electric vehicles; cars

   53.     If the Registrar is served with a notice of appeal I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registrations be dealt with as the Court sees fit.

   Costs

   54. The Applicant has been successful in relation to the applications for removal of trade mark number 1973610 and has requested its costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs in respect of trade mark number 1973610 against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   55.     Neither party has been entirely successful in respect of the application for removal of Trade Marks 1973611 and 1973612.  As such I make no order as to costs in respect of this matter.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   19 August 2025