2026 ATMO 19

Trade Marks Act 1995 (Cth) - opposition under section 52 - ss 42(b), 58, 60 and 62A pursued - ground of opposition established under s 58 for a subset of goods and s 62A for the remainder of the goods - registration refused

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Maple Holistics LLC ('Opponent') to registration of the following trade mark:

Class 3: Shampoos; Shampoos for pets (non-medicated grooming preparations); Herbal anti-dandruff shampoo; Hair conditioning rinses; Baby shampoo; Hair conditioner; Natural oils for cosmetic purposes; Ethereal oils; Hair fixers; Deodorant sprays for personal use; Massage oils, not medicated; Oil for the body; Non-medicated lip balms; Facial creams (cosmetic); Toilet soap; Shower gels; Non-medicated preparations for the care of the scalp; Oils for the hair ('Applicant's Goods')

1. The Trade Mark was examined and advertised as accepted for possible registration on 11 June 2024.
2. On 28 June 2024, the Opponent filed a Notice of Intention to Oppose the Application. On 23 July 2024, the Opponent filed a Statement of Grounds and Particulars ('SGP'). The Applicant filed a Notice of Intention to Defend the opposition on 13 August 2024.
3. The Opponent filed Evidence in Support ('EIS') on 20 November 2024. The Applicant did not file Evidence in Answer.
4. The parties were given the opportunity to either request an oral hearing or to file written submissions. The Opponent requested a hearing by written submissions and filed submissions prepared by Chelsea Peters and Francesca Colubriale of Spruson & Ferguson on 28 November 2025. I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine. I have decided this matter based on the particulars set out in the SGP and the evidence and written submissions of the Opponent.

1. The SGP nominates grounds of opposition under ss. 42(b), 58, 60 and 62A.
2. The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]

1. The Opponent filed a declaration of Netanel Mahalli, Chief Marketing Officer of the Opponent dated 19 November 2024 with Exhibits 1 to 13 including Confidential Exhibit 12 ('Mahalli').
   1. According to Mahalli, the Opponent is a cosmetic and beauty supplies company that manufactures hair, skin, and body care products with naturally derived ingredients. The Opponent has used the trade marks MAPLE HOLISTICS ('Word Mark') and the stylised marks and ('Stylised Marks') (together 'MAPLE HOLISTICS Marks') in relation to cosmetics and toiletry preparations including hair care and body care preparations, perfumery, and essential oils ('Opponent's Goods') since 2012.
   2. Mahalli states that the Opponent has registered and applied for the MAPLE HOLISTICS Marks in several jurisdictions exhibiting a schedule of the Opponent's worldwide trade mark registrations in the United States of America ('USA') in 2013, 2014, 2021 and 2022, United Kingdom ('UK') and Europe ('EU') in 2018 and an application in Canada in 2020.
   3. Mahalli claims that the Opponent promotes and sells the Opponent's Goods via a number of platforms, including:
      • the Opponent's website at https://mapleholistics.com/ ('Opponent's Website') which has always been accessible to Australian consumers, exhibiting screenshots of the Opponent's Website including Wayback Machine screenshots dated between 2012 and 2023;
      • Amazon Australia ('Amazon AU') storefront called Maple Holistics AUS exhibiting extracts from Amazon AU showing the brand as Maple Holistics together with verified reviews from Australian customers dating from 2019 to 2024 for hair shampoos, conditioners, oils and serums, massage oils, diffuser oils and essential oils;
      • social media sites namely Facebook (2012) with 16,000 followers exhibiting posts since 2019, Instagram (2015) with 10,800 followers exhibiting posts since 2019, X (2013) with 3,178 followers exhibiting posts since 2019, Pinterest with 400 followers exhibiting undated screenshots, TikTok (2020) with 5,566 followers exhibiting undated screenshots and YouTube (2018) with 526 subscribers; and
      • product packaging exhibiting undated examples of packaging.
   4. Mahalli provides a list of on-line third-party publications where the Opponent has received media coverage. I note that these are not Australian publications and no Australian readership numbers are provided. Further the only products referred to in these publications are massage oil, hair care products, essential oils and sunscreen.
   5. Mahalli provides a table of confidential revenue and advertising spend from 2019 to 2024 in relation to the MAPLE HOLISTICS Marks in Australia and globally. While global revenue and advertising spend is impressive, the Australian figures are modest and there is no indication as to which of the Opponent's Goods the Australian revenue figures refer.
   6. Mahalli claims the Applicant has a history of applying to register trade marks owned by other traders in Australia providing the following list ('List') and exhibiting screenshots dated in October 2024 from the third party websites and Amazon storefronts:

Section 58**

1. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
2. The right to registration under the Act depends upon ownership of the trade mark and not ownership by registration[15] and this requirement must be satisfied at the filing date of the application.[16] Ownership of a trade mark may be established 'either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use'.[17] Authorship in this context is not predicated on being the first to coin the trade mark, instead it refers to the first to adopt the trade mark with an intention of using it in Australia in respect of the claimed goods and/or services.[18]
3. The concept of trade mark ownership was discussed in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Federal Court observed:

[O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant's claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[19]

1. The default position under the Act is that the Applicant is prima facie considered to be the owner of the Trade Mark. Consequently, it is the Opponent who bears the evidential onus of establishing that the Applicant was not the owner of the Trade Mark at the Relevant Date. To achieve this, the following requirements must be satisfied:
   • the trade mark relied upon by the Opponent is at least substantially identical to the Trade Mark[20] ('First Requirement');
   • the goods claimed by the Trade Mark are the 'same kind of thing' as the goods for which the trade mark relied upon by the Opponent have been used[21] ('Second Requirement'); and
   • a person other than the Applicant has the earlier claim to ownership based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register the Trade Mark or (b) any actual use of the Trade Mark[22] ('Third Requirement').
2. In summary, the SGP states that since at least 2019, the Opponent has used the Word Mark in Australia, which is identical or substantially identical to the Trade Mark, in connection with the Opponent's Goods being goods that are 'the same kind of thing' as the Applicant's Goods. The Applicant is therefore not the owner of the Trade Mark.
3. The Opponent submits that the Word Mark and the Trade Mark are identical and the Stylised Marks and the Trade Mark are substantially identical. Given the Word Mark is the most similar to the Trade Mark, it is convenient to confine my discussion to a comparison of the Word Mark and the Trade Mark. Although I agree that the actual words in the Word Mark and the Trade Mark are identical, the words appear in different letter case. Therefore, they are not strictly identical as they are not the very same,[23] but they are certainly substantially identical as a total impression of similarity emerges from a comparison between the two marks.[24]
4. Mahalli shows use of the Word Mark in Australia in respect of 'hair shampoos, conditioners, oils and serums, massage oils, diffuser oils and essential oils' ('Used Goods') through the Amazon AU storefront from as early as 2019 and continuous use to 2024. The reviews from Amazon AU 'verified purchasers' from Australia directly review the Used Goods. On the evidence before me I am satisfied that a person other than the Applicant first used the Trade Mark in Australia in respect of the Used Goods.
5. I am however not satisfied that Mahalli shows use of the Word Mark or the Stylised Marks in Australia by the Opponent in respect of any other goods. While the Opponent's Website, social media sites and third party publications show use in the USA on the following further goods 'skin toners, body scrub, body wash, hand soap, after sun lotion and bath soak', there are deficiencies in this evidence as it does not demonstrate that the Opponent's Website was directed or targeted to Australian consumers.
6. In Ward Group Pty Ltd v Brodie & Stone plc, Merkel J explained:

[T]he use of a trade mark on the internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, ... if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded.[25]

1. In International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Ltd,[26] Logan J held that trade marks on a British website constituted use in Australia by marketing to Australians through a drop-down link to a page containing certain products marketed and sold in Australia.
2. The Opponent's Website does not show any direct connection to Australia or indication that the website has been promoted in the Australian marketplace. As such, the Opponent's Website does not support use of the Word Mark or the Stylised Marks on goods other than the Used Goods.
3. The Opponent has also failed to establish that the social media posts or uses are directed to Australia or that any of the followers (which are modest) are from Australia. There is no indication that anyone in Australia viewed the posts nor any evidence of comments, reactions or interactions from anyone in Australia. Nor are there any social media analytics for any of the platforms. Accordingly, without more, I am not satisfied that the social media posts represent use of the Word Mark or the Stylised Marks in Australia on goods other than the Used Goods.
4. Further, there is no evidence that the third party online publications are publications directed to Australian consumers and nor is there evidence of Australian readership or view numbers.
5. In conclusion, on the evidence before me, I am only satisfied that a person other than the Applicant first used the Word Mark and the Stylised Marks in Australia before the Relevant Date in respect of the Used Goods.
6. The Applicant's Goods claim 'shampoos, shampoos for pets (non-medicated grooming preparations), herbal anti-dandruff shampoo, hair conditioning rinses, baby shampoo, hair conditioner, natural oils for cosmetic purposes, ethereal oils, hair fixers, deodorant sprays for personal use, massage oils, not medicated, oil for the body, non-medicated lip balms, facial creams (cosmetic), toilet soap, shower gels, non-medicated preparations for the care of the scalp, oils for the hair'. In my view the goods 'shampoos, shampoos for pets (non-medicated grooming preparations), herbal anti-dandruff shampoo, hair conditioning rinses, baby shampoo, hair conditioner, natural oils for cosmetic purposes, ethereal oils, hair fixers, massage oils, not medicated, oil for the body, non-medicated preparations for the care of the scalp and oils for the hair' ('Conflicting Goods') are the same as or the same kind of thing as the Used Goods.
7. This leaves 'deodorant sprays for personal use, non-medicated lip balms, facial creams (cosmetic), toilet soap and shower gels' ('Subset Goods'). I am not satisfied that the Subset Goods are the same kind of thing as the Used Goods.
8. The meaning of 'same kind of thing' was considered by Finkelstein J at first instance in Colorado Group Limited v Strandbags Group Pty Limited where he stated:

It follows that proprietorship by first use is proprietorship in relation to the goods or classes of goods on which the mark has been used. The proprietor is entitled to have his mark registered in respect of those goods. This entitlement is not confined to identical goods or classes of goods. Registration may also be obtained for goods or classes of goods which is or are "a thing [or things] of the same kind" (Jackson & Co v Napper (1886) 35 Ch D 160, 178) or "like articles of production" (Columbia Mill Company v Alcorn, [1893] USSC 246; 150 US 460, 464 (1893)) or "articles of merchandise of the same kind" (Colman v Crump, 70 NY 573, 578 (1877)) or "kindred articles" (The Collins Co v Oliver Ames & Sons Corporation, 18 F 561, 570 (1882)), if there be any difference between these expressions. See also Edwards v Dennis (1885) 30 Ch D 454.[27]

1. Justice Allsop repeated these authorities in Colorado Group Limited v Strandbags Group Pty Limited[28] and further stated:

The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes ... This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same" (Hemming H B, Sebastian's Law of Trade Marks, 4th Ed at p 91) or "goods essentially the same ... though they pass under a different name owing to slight variations in shape and size". (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act.[29]

Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name.[30]

1. In my view, the Subset Goods are not essentially or substantially the same as, nor a true equivalent to, nor a like article of production nor a kindred article to the Used Goods. While all the Subset Goods can be used by the same consumer as the Used Goods, the Subset Goods cannot be used as a substitute for the Used Goods.
2. In conclusion, I find the s 58 ground is successful in respect of the Conflicting Goods but not the Subset Goods. I will now consider the remaining grounds with respect to the Subset Goods.

The registration of a trade mark may be opposed on the ground that the application was made in bad faith

1. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:
   • persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
   • persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks; and
   • persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
2. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2), Dodds-Streeton J made the following comments, quoting from Harrison's Trade Mark Application:[31]

Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton 'the Robin Hood test'. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

... The words 'bad faith' suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[32]

1. Her Honour continued later in the same decision:

The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant's mental state in the combined test preferred in Harrison.

Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[33]

1. In DC Comics v Cheqout Pty Ltd,[34] Bennett J noted that

Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person's behaviour fell short of acceptable commercial standards.

1. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[35]
2. In summary, the SGP provides that since at least 2019 the Opponent has been using the Word Mark in connection with the Opponent's Goods. There appears to be no legitimate reason justifying the Applicant's adoption of a trade mark that is identical or substantially identical to the Word Mark. Thus, applying to register the Trade Mark is conduct that would be regarded as falling short of acceptable commercial behaviour.
3. For the purposes of considering the s 62A ground of opposition and determining the Applicant's subjective intention, it is necessary to look at the circumstances surrounding the filing of the Application which includes the relevant actions of each party.
4. The Opponent submits that the list of trade mark applications filed by the Applicant for marks which are substantially identical with or deceptively similar to trade marks owned by a person other than the Applicant is enough to infer that the Applicant has a pattern of filing applications and seeking registration of trade marks which are the same as or similar to the trade marks of other traders.
5. The List evidence does not show that the owners of the trade marks are third parties and not the Applicant as the Amazon and websites screenshots do not provide any ownership or use details. However, I am aware that oppositions in respect of trade mark numbers 2410476 and 2403653 have succeeded under the s 58 and/or 62A grounds and for five of the applications in the List, when an adverse report was issued, the applications were allowed to lapse. Thus, in respect of at least trade mark numbers 2410476 and 2403653, the Applicant has on the balance of probabilities engaged in a pattern of filing applications for the trade marks of other parties.
6. The Word Mark is a distinctive mark and the Opponent has, well before the Relevant Date, registered the Word Mark in the USA, UK and EU and applied for the Word Mark in Canada for a wide range of skin care, hair care, essential oils and massage oil products. In the EU and UK, the registrations extend to pet care cleaning and grooming products. In my view, it seems a highly unlikely coincidence that the Applicant adopted and filed the identical words Maple Holistics as a trade mark for goods which are similar or the same as the Opponent's Goods without knowledge and awareness of the Opponent's use and registration of the MAPLE HOLISTICS Marks. I consider that the adoption of the Trade Mark clouds the conduct of the Applicant.
7. Despite the Opponent's allegations that the Trade Mark has been filed in bad faith, the Applicant has not provided an answer, evidence nor an explanation for adopting the Trade Mark which had been clearly used by the Opponent in Australia and the USA for the majority of the Applicant's Goods before the Relevant Date. The Applicant has also not refuted the accuracy of any of the Opponent's evidence, claims or submissions, nor provided evidence or submissions in response. In my view, these circumstances further enhance the cloud over the Applicant's conduct and taken together establish a prima facie case that the Application was filed in bad faith.
8. In the absence of any response from the Applicant, on the balance of probabilities, I am satisfied that a reasonable person standing in the Applicant's shoes should have known that applying for the Trade Mark was improper and fell short of acceptable commercial behaviour observed by reasonable and experienced persons. Accordingly, the ground of opposition under s 62A is successful for the Subset Goods.
9. Having found the s 62A ground of opposition established for the Subset Goods, it is unnecessary that the remaining grounds under ss 60 and 42(b) be considered.

(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

1. The Opponent has established the s 58 and s 62A grounds of opposition nominated in the SGP and I accordingly refuse to register the Trade Mark. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Application should be in accordance with the Court's order or direction.

1. The Opponent has sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Applicant under s 221 in the amounts set out in 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').

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

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

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, 595 (Kitto J).