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BLOOMCHIC Limited [2026] ATMO 63 | Case summary | Zoe
The Applicant has argued that if the Trade Mark is found to be deceptively similar to any of the Prior Marks, that the Applications should be accepted for registration under s 44(3)(a) on the basis of honest concurrent use, s 44(3)(b) other circumstances or s 44(4) prior continuous use.
In support of the Application, the Applicant has filed Hu 1, Hu 2, Li 1 and Li 2 which are briefly summarised below.
[2]
The Applicant, incorporated in Hong Kong, is a wholesaler and retailer of clothing and fashion items and accessories. In September 2021, the Applicant commenced use of the Trade Mark for the Applicant's Goods and Services offering its products for sale on the website at https://bloomchic.com ('Website'). Initially, the Applicant was targeting the North American market but it quickly grew its customers throughout the Americas, Europe, Asia Pacific and Australia.
Despite never actively marketing the Applicant's Goods and Services under the Trade Mark in Australia, Australian consumers started purchasing the Applicant's Goods on the Website in September 2021. At its peak, the Applicant was selling hundreds of thousands' of dollars worth of the Applicant's Goods to Australian consumers on a monthly basis.
In September 2023, the Applicant released its BLOOMCHIC mobile phone application on Android and iPhone platforms ('Applicant's apps'). Since this launch, there has been an average of 1,000-1,500 downloads per month of the Applicant's apps from the Australian Android and iPhone stores resulting in over 26,000 downloads by 23 March 2025.
As a result of the inadvertent success of the Applicant's brand in Australia, in May 2025, the Applicant launched an Australian specific website at https://bloomchic.au/ ('Australian Website'). The launch of the Applicant's Australian Website resulted in significant revenue growth and increased items sold to Australian consumers from May to December 2025. Hu 2 provides sales summaries to Australian customers for:
revenue and unit sales from September 2021 to April 2025 and from May 2025 to December 2025 (excluding sales on the Australian Website);
revenue and units sold from January 2025 to December 2025 on the Australian Website.
This sales data demonstrates regular and continuous sales of clothing (bodysuits, bottoms, denim, dresses, jumpsuits, loungewear, tops and swimwear), accessories and jewellery since September 2021 as well as bags since October 2021. Further, the evidence demonstrates use of the Trade Mark since September 2021 in relation to the Applicant's Retail Services.
I am satisfied that the Applicant has made prior continuous use of the Trade Mark since before the priority date of the Class 14 Citation and is entitled to acceptance of application 2369059 under s 44(4) for the Applicant's class 14 goods. Before the priority date of 25 October 2022 of the Class 14 Citation, the Applicant sold various jewellery products such as body jewellery, bracelets, brooches, earrings, necklaces and rings, continuously to the filing date of application 2360959.
However, the Applicant's use does not predate the priority dates of any of the other Prior Marks and therefore, I must consider whether there has been honest concurrent use of the Trade Mark or other circumstances justifying acceptance of the Applications under s 44(3) in classes 18, 25 and/or 35 for the Applicant's Retail Services.
The Applicant argues that there is a compelling case for acceptance of the Applications in classes 18, 25 and 35 on the basis of either honest concurrent use or other circumstances, but given the breadth of s 44(3)(b) and the extent of overlap with s 44(3)(a), it is only necessary to consider whether there are other circumstances justifying acceptance of the relevant Applications.
For both ss 44(3)(a) and (3)(b), the criteria to be considered includes:
the degree of confusion likely between the trade marks in question;
whether instances of confusion have in fact occurred;
the honesty or otherwise of the concurrent use;
the extent of use in duration, area and volume; and
the relative inconvenience that would be caused to the respective parties if the applicant's trade mark should be registered or not registered.[14]
The decision whether to accept an application under s 44(3)(b) is to be exercised if it is proper to do so having regard to the circumstances that exist at the time that the discretion is exercised.[15]
The Applicant contends that if the Trade Mark is found to be deceptively similar to any of the Prior Marks, the case is marginal and the degree of any confusion will be low. Further the Applicant submits that it honestly adopted the Trade Mark and despite its extensive use of the mark, it is not aware of any instances of confusion. If the Applications are refused, the Applicant says it will suffer significant inconvenience. It has registered the Trade Mark in 18 countries and developed a large customer base in Australia and overseas in the past 4 ½ years. If the Applications are rejected, the Applicant will need to decide whether to use a different trade mark from the rest of the world resulting in additional expense and inconvenience, or use the unregistered mark limiting its protection in an important and successful brand or abandon the Australian market. On the other hand, the owners of the Prior Marks will not suffer any inconvenience given that none have complained about the Applicant's use of the Trade Mark and the Trade Mark would simply be another 'BLOOM' mark co-existing on the Register. Moreover, any concerns that an owner of a prior mark may have could be raised by way of opposition.
In my view, a combination of factors makes it proper to exercise the discretion to accept the Applications under s 44(3)(b) in classes 18, 25 and for the Applicant's Retail Services in class 35 notwithstanding the existence of earlier rights. The Applicant's evidence establishes that it adopted the Trade Mark without knowledge of the Prior Marks. Further, although it was not the Applicant's intention at the time of commencing use of the Trade Mark to enter the Australian market, Australian consumers located the Applicant's Website and commenced purchasing its goods in significant quantities. The Applicant's use in Australia was therefore not contrived or opportunistic but instead arose as an incident of online trade and consumer demand, and then continued openly and consistently over a period of years. The evidence demonstrates substantial and sustained trade in Australia under the Trade Mark through the Applicant's Website and more recently also from the Australian Website, with a significant and growing Australian customer base. The absence of any evidence of actual confusion and the fact that none of the owners of the Prior Marks has objected to the Applicant's use to date, weighs in favour of acceptance. Moreover, the inconvenience to the Applicant in rejecting the Applications in the face of the substantial use of the Trade Mark for a broad range of goods and associated retailing services for a number of years, outweighs any potential inconvenience to the owners of the Prior Marks, particularly given that any concerns they may have can be raised by way of opposition. Finally, whilst I have found the Trade Mark to be deceptively similar to a number of the Prior Marks, I appreciate that the question of deceptive similarity is subjective and reasonable minds may differ. In some cases such as the 769 Mark, I have found on the balance of probabilities that the Trade Mark is deceptively similar but others may take a different view. Taking all of the relevant factors into account, I am of the view that it is proper to accept the Applications in classes 18, 25 and 35.
[3]
For the reasons given above, I am satisfied that grounds for rejection exist under s 44 in respect of each of the Applications but that it is appropriate to accept the Applications on the basis indicated below and subject to an appropriate endorsement to that effect:
Application 2369059 (Class 14): Accepted under s 44(4).
Applications 2369065 (Class 18) and 2369070 (Class 25): Accepted under s 44(3)(b) for all goods in these classes.
2369074 (Class 35): Accepted for the Applicant's Services with s 44(3)(b) applying in relation to 'Online retail services; Retail services provided in online virtual environments' in class 35.
[14]John Fitton & Company Limited's Application(1949) 66 RPC 110, 112 (UK Reg.); Trade Marks Office Manual of Practice and ProcedurePart 28.4.3.
[16]
[15]Trident Seafoods Corporation v Trident Foods Pty Ltd[2019] FCAFC 100, [83] (Reeves, Jagot and Rangiah JJ).
Legislation Cited (2)
Marks Act 1995
Marks Regulations 1995
Cases Cited (3)
BLOOMCHIC Limited [2026] ATMO 63 (17 April 2026)
The challenge to the registration of the Plain Word Mark did not extend to the Fancy Word Mark or the Red Man Logo. These marks are registered, and will remain registered. We do not, however, accept that either the Fancy Word Mark or the Red Man Logo is infringed by any of the Mercato Centrale marks. An essential feature of the Fancy Word Mark is that it is in a fancy script. The monopoly it secures is not a monopoly over the plain word mercato. Rather, it secures a monopoly over that word as rendered in the fancy script depicted on the Register. To adapt the analysis of the Full Court (Allsop CJ, Besanko and Yates JJ) in Australian Meat Group Pty Ltd v JBS Australia Pty Ltd[2018] FCAFC 207; 268 FCR 623 at [78], to consider the Fancy Word Mark otherwise would be to extend the scope of the Fancy Word Mark well beyond the monopoly that was granted upon registration.[9]