The Applicant filed the Opposed Trade Mark after receiving this correspondence from the Opponent, and has persisted with the application.

In its submissions, the Opponent argues that the Application was filed in bad faith because it was made with prior knowledge of the Opponent's Marks and reputation, and as part of a deliberate attempt to appropriate or exploit the term SUSHI TRAIN. After becoming aware of the Applicant's use of that term in November 2023, the Opponent objected and put the Applicant on notice of its registrations and use. Although the Applicant agreed to remove the use of SUSHI TRAIN, the Application was nevertheless filed. The Opponent further contends that, despite later assertions that such use had ceased, the Applicant instead continued and expanded its use of the term at its premises and online.
Furthermore, the Opponent says that Ms Kasman already knew of the Opponent's objections because of her association with the Sushi Sushi business which had filed application 2309600 as detailed in [17]. Hence, the Opponent submits that the filing of the Application was calculated rather than inadvertent and fell short of acceptable commercial standards.
The Opponent also argues that it does not assist the Applicant to contend that 'sushi train' is merely descriptive. If the Applicant seeks to exploit the Opponent's reputation, that conduct is improper and if no such reputation exists, the Applicant is attempting to appropriate a term that should remain available to other traders. On either view, the Opponent submits that the Application was filed in bad faith.

Section 55 relevantly provides (notes omitted):

(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.

I find that the Opponent has failed to establish any of the grounds of opposition nominated in the SGP. Accordingly, registration of the Trade Mark under application 2417407 may proceed not less than one month from the date of this decision. 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the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.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.
Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations

Class 42: Services in class 42 relating to the operation of restaurants, cafes, sushi bars, takeaway food outlets and fast food outlets

Class 16: Paper; cardboard; printed matter in this class including menus, napkins, table cloths, place mats, coasters, stationery, signs and publications; packaging of paper or plastic materials including chopstick holders

Class 43: Provision of food and drinks; restaurant services; take-away (fast-food) services; catering services; sushi bars; snack bars; food preparation services; food cooking services

Evidence and/or other circumstances provided under subsection 41(4).

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, eggs; milk and milk products; edible oils and fats

Class 32: Mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages

Evidence and/or other circumstances provided under subsection 41(4).

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; plastic materials for packaging (not included in other classes)

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; sushi

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages

Class 35: Advertising; business management; business administration; office functions; retailing services; loyalty programmes; organisation and management of customer loyalty programmes; sales promotions through customer loyalty programmes (for others); organisation, operation and supervision of customer loyalty schemes

[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 ('Southern Cross') [1954] HCA 82, [4] (Kitto J).

[5] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[6] [2023] FCA 482, [55] (Jackman J).

[7] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

[8] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

[9] Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) ('Australian Woollen Mills').

[12] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

[13] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [5] (Windeyer J).

[14] Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

[15] Campomar Sociedad Limited v Nike International Limited [2000] HCA 12; (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

[16] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (French J) restating principles from Southern Cross (n 4), 594-595.

[17] Australian Woollen Mills Ltd (n 9).

[18] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc [2020] FCAFC 235; (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 9), 657.

[19] [2007] FCAFC 42, [22] (Lindgren, Emmett and Finkelstein JJ).

[20] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864 (Burchett J); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd ('PDP Capital') [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

[21] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2018] FCAFC 29; (2018) 129 IPR 238, [66] (Allsop CJ, Nicholas, Katzmann JJ).

[22] Re Frigiking Trade Mark [1973] RPC 739, 752 (Ch D).

[23] The Agency (n 6), [73] (Jackman J).

[24] Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).

[25] [2016] ATMO 76 (Hearing Officer M. Kirov).

[26] Bed Bath 'N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2025] HCA 50 (Gageler CJ, Gordon, Edelman, Jagot and Beech-Jones JJ); The Agency (n 6), [63]; PDP Capital (n 20) and Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156, [180]-[181] (Besanko, Jagot and Edelman JJ).

[27] Macquarie Dictionary (online at 18 March 2026) 'sushi train'.

[30] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) ('ConAgra').

[31] Qantas Airways Limited v Edwards [2016] FCA 729, [160] (Yates J).

[34] ConAgra (n 30), [15]; Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

[35] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

[36] [1979] RPC 410, 423 (citation omitted).

[38] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406; (2016) 122 IPR 232, [76] (Davies J).

[39] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).

[40] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).

[42] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).

[43] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J); Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer T. Williams)

[44] [1989] FCA 506, [40] (French J).

[45] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [410] (Rangiah J).

[46] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164] (Dodds-Streeton J) ('Fry Consulting').

[51] [2009] ATMO 26, [12] (Delegate Nancarrow).

Marks Regulations 1995

Sushi Jiro IP Pty Ltd v Sushi Jiro Train [2026] ATMO 49 (24 March 2026)

Sushi Jiro IP Pty Ltd v Sushi Jiro Train [2026] ATMO 49

At a glance

Court

Decision date

Source

Judgment (63 paragraphs)

Parties

Legislation Cited (4)

Cases Cited (10)

Sushi Jiro IP Pty Ltd v Sushi Jiro Train [2026] ATMO 49 (24 March 2026)