The Applicant would have been aware of the Opponent's use of its BRIGHTOWN trade mark and appears to have sought registration of the Trade Mark as an attempt to hijack the Opponent's trade mark.

Accordingly, the Trade Mark has been adopted in an attempt to trade off the reputation of the Opponent and the application has therefore been filed in bad faith and reflects this bad faith.

The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[27] The Opponent provides no evidence why the Applicant, would be aware of the Opponent and its essentially non-existent reputation in Australia at the time it applied to register the Trade Mark. Moreover, the Applicant gives evidence that it first used the Trade Mark in other jurisdictions in 2014 and has obtained registrations in those jurisdictions, well before any use by the Opponent of the Trade Mark. In circumstances where the evidence in support of the s 62A ground of opposition is limited and the Opponent bears the onus, I am not satisfied the Applicant's conduct in filing the application was unscrupulous, underhanded or unconscientious in character. Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62A.

The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 2364242 may proceed to registration not less than one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.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.
The Applicant has sought an award of costs in its favour. 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] Also known in this decision as the 'relevant date'.

[2] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

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

[4] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) ('Southern Cross'), see also s 29(1) Trade Marks Act 1995 (Cth).

[6] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936; (1994) 31 IPR 375 (Gummow J).

[7] Re Hicks' Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

[8] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

[9] Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14]-[18] (Hearing Officer Worth).

[10] Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) [1996] ATMO 16; (1996) 34 IPR 340.

[11] [2023] FCA 487, [20]-[21] (Kennett J)

[15] [1999] ATMO 23; (1999) 47 IPR 423, 436 (Hearing Officer Thompson).

[17] Ibid [91] (emphasis in original). Justice Heerey's decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed, the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

[18] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

[19] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502; [2004] 59 IPR 343, 353 (Wilcox J).

[20] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).

[21] [2014] ATMO 65, [50] (Hearing Officer Wilson).

[22] [2003] FCA 104, [107] (Beaumont J).

[23] [1989] FCA 506, [40] (citations omitted).

[24] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).

[27] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

Marks Regulations 1995

XIAMEN XIAOYUYAO TRADING Co., Ltd v Shenzhen Yue Er Hua Trading Co., Ltd. [2025] ATMO 82 (6 May 2025)

The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark - here, the Aachi mark - in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation. > > The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O'Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is "likely" to be deceptive or cause confusion.[11]

XIAMEN XIAOYUYAO TRADING Co., Ltd v Shenzhen Yue Er Hua Trading Co., Ltd. [2025] ATMO 82

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XIAMEN XIAOYUYAO TRADING Co., Ltd v Shenzhen Yue Er Hua Trading Co., Ltd. [2025] ATMO 82 (6 May 2025)