2026 ATMO 29

Trade Marks Act 1995 (Cth) - application under section 92(4)(a) - no use or intention to use established - discretion not exercised - trade mark to be removed

1. On 22 February 2025, Dongguan Botai Er Technology Co., Ltd. ('Applicant') filed an application under s 92(4)(a) of the Trade Marks Act 1995 (Cth)[1] ('Removal Application') for complete removal of the following registered trade mark in the name of quiling chen ('Owner'):

Class 21: bathtub brushes; bathroom brushes; shower brushes; washing brushes; brushes for bathrooms; washing-up brushes; bath brushes; brushes for household use; shampoo brushes ('Registered Goods')

1. Phoebe Tan ('Opponent')[2] filed a Notice of Intention to Oppose removal of the Trade Mark on 26 February 2025 and a Statement of Grounds and Particulars ('SGP') on 25 March 2025. The Applicant filed a Notice of Intention to Defend on 28 March 2025.
2. The Opponent filed Evidence in Support ('EIS') on 2 July 2025. The Applicant filed Evidence in Answer ('EIA') on 10 September 2025. The Opponent did not file Evidence in Reply.
3. Once time for filing evidence had ended, both parties were given the opportunity to either request an oral hearing or to file written submissions. While neither party elected to be heard, the Applicant requested a decision without a hearing. I have decided this matter based on the particulars set out in the SGP and the evidence of the parties.

1. The parties filed the following evidence in this matter:

Luo Ying, President of the Applicant titled Statement on Evidence in Support ('Ying').

1. Part 9 of the Act deals with removal of trade marks from the Register for non-use.
2. In respect of this matter, s 92(4)(a) relevantly provides (notes omitted):

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:

(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:

(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;

1. In the case of an allegation of non-use under s 92(4)(a), s 100(1)(a) provides that the Opponent bears the onus of rebutting any allegation on the balance of probabilities[3] that on the Filing Date, the Owner had no intention to use, authorise the use of or assign to a body corporate, the Trade Mark in relation to the Registered Goods. Alternatively, the Opponent must establish that the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) was used by the Owner, in good faith, in relation to the Registered Goods, at any time in the period ending one month prior to the day on which the Removal Application was filed. As the Removal Application was filed on 22 February 2025, this date is prior to 22 January 2025 ('Relevant Period').
2. I note in this matter that the Opponent is neither the applicant for registration of the Trade Mark nor the registered owner.
3. In Blount Inc v Registrar of Trade Marks, Branson J observed:

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.[4]

1. Accordingly, if the Opponent establishes either the requisite intention by the Owner to use the Trade Mark at the Filing Date or good faith use of the Trade Mark in the Relevant Period, the opposition to removal will succeed.
2. In Woolly Bull Enterprises Pty Ltd v Reynolds,[5] Drummond J observed that the expression 'use in good faith' has a well understood meaning in terms of s 92, namely it is 'real, as opposed to token use in a commercial sense'. In Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd the Full Federal Court confirmed that s 92(4) requires no more than a genuine intent to use the mark for commercial purposes, and rejected other authorities that took a broader view of what constituted 'good faith'.[6]
3. Accordingly, what is required to be shown by the Opponent is that the Owner's intention or use was genuine, being for the purpose of deriving profit and establishing goodwill, and not for some other colourable purpose (such as defeating a non-use application). The elements of honesty and subjective good intentions do not inform whether the use, in terms of Part 9 of the Act, is in good faith.
4. I also have a general discretion under s 101(3) to allow the Trade Mark to remain registered even if the Opponent does not establish either the requisite intention to use or relevant use of the Trade Mark.

1. Chen makes the following three main claims:
   • They have applied the Trade Mark to shower brushes on Amazon Australia ('Amazon AU') since as early as November 2024, referring to Exhibit A;
   • They have been doing business on Amazon AU with the Trade Mark for years, referring to Exhibit B; and
   • The Trade Mark has been registered on Amazon AU, referring to Exhibit C.

1. Exhibit A comprises printouts from Amazon AU's 'Manage Orders', 'Manage All Inventory' and 'Order Details' pages. However, the 'Order Details' printouts, and all but one of the 'Manage Orders' printouts, do not display any account or seller name. Nor does any identifying seller information appear anywhere in these documents. The remaining 'Manage Orders' printout shows 'banongnong' as the account or seller name.
2. While Chen claims that the Trade Mark was applied to shower brushes on Amazon AU since as early as November 2024, the November 2024 'Manage Orders' screenshots instead show purchases of shower caps with reference to the Trade Mark, which are not included in the Registered Goods.
3. The 'Manage All Inventory' printout is headed with a seller or account name as follows:. I am satisfied that the seller or account name references the Owner. The printout shows an inventory of shower brushes under the Trade Mark as at 16 May 2025, after the Relevant Date, as follows:

I note that there is no figure for units sold or page views.

1. Exhibit B provides the following extract from Amazon AU:

I note that the extract is undated and no seller or account information is provided.

1. Exhibit C provides a printout from the Amazon brand registry which references the Trade Mark and the registration. The only dates on the document are 1 June 2025 to 7 June 2025, after the Relevant Date, under the heading Notice of Infringement.

1. The evidence provided by Ying and Ying 2 largely concerns the Applicant's prior use of the Trade Mark in a number of countries including the United States of America ('USA'), the United Kingdom, France, Canada and Germany, and evidence of registration of the Trade Mark in the USA and the European Union and a pending application in Canada. Ying 2 exhibits Amazon product listing creation records for these countries. Ying 2 claims that the Applicant launched its Amazon AU site for bath brushes, scrubbing brushes and hand-operated brushes for cleaning the skin under the Trade Mark in July 2023 exhibiting a screenshot from Amazon AU headed of the first sale of the Applicant's shower brush under the Trade Mark.
2. Ying claims that Exhibit B of Chen is actually an extract from the Applicant's Amazon AU site.
3. Ying 2 states that in late 2024, the Owner made multiple malicious complaints to Amazon AU to interfere with the Applicant's commercial use of the Trade Mark which resulted in Amazon AU removing all of the Applicant's Amazon AU listings under the Trade Mark.

1. In summary, the SGP states that the Owner has genuinely used the Trade Mark in Australia during the Relevant Period in connection with shower brushes, shampoo brushes and related products. The Trade Mark has been prominently displayed on shower brushes and their packaging sold in Australia.

Use of the Trade Mark by the Owner or an authorised user

1. I note that the only goods appearing throughout Chen that correspond to the Registered Goods are shower brushes. Accordingly, there is no use demonstrated in relation to any of the other Registered Goods.
2. I make the following observations concerning the Exhibits to Chen:
   • Exhibit A - there is nothing in Chen which corroborates a connection between the Owner and 'banongnong'. Further the 'Manage All Inventory' printouts are dated after the Relevant Date;
   • Exhibit B - the extract is undated and no account or seller information is provided; and
   • Exhibit C - this evidence is dated after the Relevant Date.
3. Where a trade mark owner relies upon only one, or few, instances of alleged use, such instances ought to be established by 'if not conclusive proof, at any rate, overwhelmingly convincing proof'.[7] The Opponent's evidence is mostly undated, dated after the Relevant Date and/or does not mention the Owner. None of this evidence assists the Opponent. As such, I cannot be satisfied that the Trade Mark has been used by the Owner in the Relevant Period in good faith for any of the Registered Goods. The evidence also does not show effective control by the Owner of any relevant use of the Trade Mark by a person other than the Owner. Therefore, I am also not satisfied the evidence establishes that any relevant transactions or activities were performed by an authorised user.

Intention to use or authorise use of the Trade Mark

1. The burden on the Opponent of establishing that the Owner had the requisite intention to use the Trade Mark at the Filing Date is not high. The filing of the Trade Mark is prima facie evidence of its intention to use the Trade Mark in respect of all of the Registered Goods claimed.[8] Once the Opponent has satisfied the initial onus, the onus then shifts to the Applicant to establish the Owner's lack of intention.[9]
2. In Secondment Pty Ltd v MCI Group Holdings SA,[10] the Hearing Officer Wilson observed:

The act of applying for a trade mark is prima facie evidence of an intention to use it, or as Dodds Streeton J phrased it in Suyen Corporation v Americana International Ltd: "[A]s possession of the requisite intention is a pre-condition of entitlement to apply, it may readily be presumed from the fact of application." Taking the intention arising from the act of filing into account, the onus may be shifted to the Applicant by making a positive statement regarding its intention to use the trade mark.

1. In Structureco Inc v Starite Distributors Pty Ltd,[11] Hearing Officer Forno said:

Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s 92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case - perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.

1. Evidence of an opponent will often make a prima facie case that there was an intention to use the trade mark by, for example, providing a declaration of an owner attesting to that intention. A clear and direct statement from a person with knowledge of the material particulars combined with the existence of the application for registration of a trade mark has been said to be sufficient to discharge the onus in this regard. Here, there is no direct statement from the Owner in the SGP or Chen regarding any intention to use the Trade Mark at the Filing Date in respect of any of the Registered Goods. In the absence of a clear statement regarding intention and in the absence of documented use during the Relevant Period, I am not satisfied that the Owner had the requisite intention to use the Trade Mark in relation to the Registered Goods. The ground for removal under s 92(4)(a) is accordingly established.

1. Even where grounds for removal have been established, s 101(3) of the Act provides that, if the Registrar or the court is 'satisfied that it is reasonable to do so', it may decide the trade mark should not be removed from the Register. The Opponent bears 'the burden of persuasion'[12]
2. The discretion provided by this section is very broad. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd,[13] the Court made the following observations regarding the discretion under s 101(3):

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:

(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.[14]

1. The SGP claims that the discretion be exercised in the Opponent's favour as the Trade Mark has been genuinely used in Australia during the Relevant Period, the removal of the Trade Mark would cause significant harm to the Owner's business and reputation and the Trade Mark has acquired distinctiveness and recognition in the Australian market. I have already held that the Opponent has not shown use of the Trade Mark in Australia in respect of any of the Registered Goods in the Relevant Period.
2. There is a public interest in maintaining the integrity (or 'purity') of the Register which generally demands that unused trade marks be removed. 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.[15]

1. The question of the public interest arises in the determination whether confusion would be caused by removing the registration. Thus, while the 'purity' of the Register is a major aspect of the public interest, another major aspect is the minimisation of the likelihood for the public to be deceived or confused as to the trade source of goods bearing a trade mark.
2. While the Opponent claims that removal of the Trade Mark would cause significant harm to the Owner's business and reputation and the Trade Mark has acquired distinctiveness and recognition in the Australian market, in my opinion there is no real likelihood that consumers will be confused if a third party were to operate under a trade mark the same or similar to the Trade Mark in respect of the Registered Goods in Australia. Among other things, there is no evidence of any use of or reputation in the Trade Mark in Australia such that confusion would arise from the registration of a similar mark. Nor is there any evidence that the removal of the Trade Mark would cause significant harm to the Owner's business and reputation.
3. On balance, in light of the above considerations, I am not persuaded that the Opponent has provided justification to allow the retention of the Registration for the Registered Goods. I do not consider it appropriate to exercise my discretion in favour of the Opponent not to remove the Registration.

1. The Opponent has not rebutted the allegation of non-use in respect of the Trade Mark and I am not satisfied it is reasonable to exercise the discretion to allow the Trade Mark to remain on the Register. I direct that one month from the date of this decision registered trade mark 2444528 be removed from the Register.
2. If the Registrar is served with a notice of appeal within the relevant timeframe, the Trade Mark shall be treated in accordance with the decision of the court.

1. Both parties have sought costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) ('Act') and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) ('Regulations').

[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of oppositions under s 52 of the Act.

[4] [1998] FCA 440 (citation omitted).

[5] [2001] FCA 261, [16] ('Woolly Bull')

[6] [2009] FCAFC 7, [52]-[56] (Tamberlin, Sundberg and Besanko JJ) ('Liquideng')

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

[8] Aston v Harlee Manufacturing Co [1960] HCA 47 (Fullagar J); Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J).

[9] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [118] (Burley J).

[10] [2013] ATMO 71, [9] (citations omitted).

[11] [2000] ATMO 31.

[12] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ).

[13] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

[14] Ibid [153] (emphasis altered) (citations omitted).

[15] [2010] HCA 130, [22] (French CJ, Gummow, Heydon and Bell JJ) (citations omitted).