2025 ATMO 209

Trade Marks Act 1995 (Cth) - opposition under section 52 - ss 58, 59 and 62A pursued - ground of opposition established under s 58 for a subset of goods and 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 Wenxia Chen ('Opponent') to registration of the following trade mark:

Fuzhou Gulou District Yijue E-Commerce Co., Ltd. ('Applicant')

Class 28: toys; toy models; toys for children; toy model kits; toy vehicles; toy models of vehicles; toy model vehicles; infant toys; toy blocks; educational toys for infants; toy construction blocks; toy construction kits; toy buildings; toy building blocks; controllers for toy planes ('Applicant's Goods')

1. The Trade Mark was examined and advertised as accepted for possible registration on 20 October 2024.
2. On 25 October 2024, the Opponent filed a Notice of Intention to Oppose the Application and a Statement of Grounds and Particulars ('SGP'). The Applicant filed a Notice of Intention to Defend the opposition on 11 November 2024.
3. The Opponent filed Evidence in Support ('EIS') on 31 January 2025. The Applicant did not file Evidence in Answer.
4. The parties were given the opportunity to request to be heard by written or oral submissions. While neither party elected to be heard, the Opponent requested a decision without a hearing. 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 EIS.

1. In the SGP, the Opponent particularised grounds of opposition under ss 58, 59 and 62A. 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 the EIS set out below. The Applicant did not file any evidence in this matter.

1. Chen claims that they have been using the Trade Mark in Australia since April 2021 on a range of development toys for children including magnetic tiles, pool toys, craft kits, robots and toddler tables.
2. Chen attests that the Trade Mark is used and registered as a trade mark in Europe, Mexico, the United Kingdom and the United States of America. Chen provides brief details of the trade mark registrations in these countries and regions.
3. Chen provides screenshots from Amazon Australia at www.amazon.com.au ('Amazon') dated 19 September 2024 referencing the sale of magnetic tiles and water marbling paint. The screenshots make reference to:
   • the brand of goods and store name as Coodoo and show use of the Trade Mark in respect of magnetic tiles and marbling paint. I note the magnetic tiles are toys for construction or building;
   • the seller of products from the Coodoo store as Chen-weilan and state the 'Date First Available' for magnetic tiles as 18 February 2024 and for marbling paints as 6 April 2021; and
   • reviews from Amazon 'verified purchasers' in Australia for the magnetic tiles, one being dated before the Relevant Date.
4. Chen provides examples of six Amazon orders to Australian consumers of magnetic tiles dated before the Relevant Date and three of water marbling paint dated after the Relevant Date.
5. Chen states that the Trade Mark is advertised through Amazon Australia and provides advertising expenditure.
6. Chen refers to email communication with the Applicant in December 2024 regarding an approach from Chen to purchase the Application. Chen proposed two different monetary offers to the Applicant. In the end the Applicant requested one month's profit of Chen's business as the purchase price. Chen exhibits copies of email correspondence between Chen and the Applicant.
7. Chen claims that the Applicant has filed a large number of trade marks for which the Applicant is not the owner. Chen provides a list of eighteen Australian trade mark applications and registrations for various trade marks filed by the Applicant ('Australian Marks'). Chen claims the Australian Marks are the same as trade marks owned and registered by other companies overseas before the Relevant Date ('Overseas Marks'). Chen exhibits details from the World Intellectual Property Organisation ('WIPO') Global Brand Database which show the Australian Marks and the Overseas Marks including trade mark numbers, trade marks, owners, filing dates, classes and countries. Chen also exhibits summary details of the Australian Marks from the Australian Trade Mark Register which include trade mark numbers, trade marks, status and classes.

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[5] and this requirement must be satisfied at the filing date of the application.[6] 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'.[7] 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.[8]
3. The concept of trade mark ownership was discussed in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Court of the 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.[9]

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[10] ('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 has been used[11] ('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[12] ('Third Requirement').
2. In summary, the SGP states that the Applicant is not entitled to registration because the Opponent first used the Trade Mark in Australia as early as 2021 in connection with toys, including toys for children, toy blocks, toy construction blocks, toy construction kits, toy buildings and toy building blocks.
3. Chen shows use of the Trade Mark in respect of magnetic tiles and water marbling paints before the Relevant Date. While the screenshots from Amazon refer to the seller as Chen-weilan and not the Opponent, the purpose of the s 58 ground is to determine whether or not the Applicant is the owner of the Trade Mark. Therefore, regardless of whether or not the Opponent was the owner of the Trade Mark in Australia in relation to the Applicant's Goods, the evidence shows use of the Trade Mark in Australia in respect of magnetic tiles and water marbling paints prior to the Relevant Date by a person other than the Applicant.
4. As the ground of opposition in s 58 can be established by showing that the Applicant is not the owner and while the burden of proof is on the Opponent, here, I find the evidence sufficient to enable a finding of fact to be made about ownership of the Trade Mark at the time of filing in respect of magnetic tiles and water marbling paints. 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 magnetic tiles and water marbling paints.
5. The Applicant's Goods however have a broad claim to 'toys; toy models; toys for children; toy model kits; toy vehicles; toy models of vehicles; toy model vehicles; infant toys; toy blocks; educational toys for infants; toy construction blocks; toy construction kits; toy buildings; toy building blocks; controllers for toy planes'. In my opinion, magnetic tiles and water marbling paints are unquestionably types of toys, infant toys, toys for children and educational toys for infants, and magnetic tiles are also a type of toy construction kit.
6. The word infant has a number of definitions including 'a baby',[13] 'a child during the earliest period of its life'[14] and 'a beginner, as in learning'.[15] I am satisfied that infant toys including educational toys are not only limited to toys for a baby but extend to toys for a young child. For this reason, magnetic tiles fall under the description 'infant toys and educational toys for infants'.
7. Further, I am satisifed that 'toy model kits, toy blocks, toy construction blocks and toy building blocks' are the same kind of thing as magnetic tiles. I am not however satisfied that 'toy vehicles, toy models of vehicles, toy model vehicles, toy buildings or controllers for toy planes' ('Subset Goods') are the same kind of thing as magnetic tiles and/or water marbling paints.
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 [1887] UKLawRpCh 91; (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.[16]

1. Justice Allsop repeated these authorities in Colorado Group Limited v Strandbags Group Pty Limited[17] 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.[18]

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.[19]

1. In my view, 'toy model kits, toy blocks, toy construction blocks and toy building blocks' are a like article of production and a kindred article to magnetic tiles. As with toy building blocks in the traditional sense, such as building bricks, magnetic tiles interlock to construct any manner of structure. Magnetic tiles are just a more modern form of a toy building block. Further, building blocks are often sold in kits for making toy models, a well know example is Lego®. Lego® produce kits for making anything from cars to buildings to animals to paintings. For these reasons I consider 'toy model kits, toy blocks, toy construction blocks and toy building blocks' are goods essentially the same and true equivalents, though they may differ in size, shape and name to magnetic tiles. Therefore 'toy model kits, toy blocks, toy construction blocks and toy building blocks' are the same kind of thing as magnetic tiles.
2. I do not consider the Subset Goods to be essentially or substantially the same as, nor a true equivalent to, nor a like article of production nor a kindred article to magnetic tiles or water marbling paints. While all the Subset Goods can be used by the same consumer as the magnetic tiles and water marbling paints, the Subset Goods cannot be used as a substitute for these goods. Toy vehicles, toy models of vehicles, toy model vehicles and toy buildings are finished articles. They are already constructed. They cannot be used to build or construct. They are not true equivalents to magnetic tiles or water marbling paints. Controllers for toy planes are also finished articles. They have a particular use to control toy planes are not equivalents in any sense of the word to magnetic tiles or water marbling paints.
3. In conclusion, I find that the second requirement succeeds in respect of 'toys; toy models; toys for children; toy model kits; infant toys; toy blocks; educational toys for infants; toy construction blocks; toy construction kits; toy building blocks' ('Conflicting Goods') but not in respect of the Subset Goods. As a consequence, the s 58 ground is successful for the Conflicting Goods.
4. 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;
   • 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. The Federal Court has substantively considered the issue of bad faith in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[20] and DC Comics v Cheqout Pty Ltd.[21] The following propositions emerge from these decisions which are relevant to the present opposition:
   • Bad faith for the purposes of s 62A must be [as at the Relevant Date] and must relate to the making of the subject of that application.[22]

• Bad faith is a serious allegation that 'impugns the character of an individual or collective character of a business' and requires correspondingly cogent evidence. The standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt.[23]

• Conduct that falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area is sufficient. Bad faith does not require dishonesty.[24] As stated by Dodds-Streeton J in Fry Consulting:

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.[25]

• The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.[26]

• All the circumstances surrounding the application to register the mark are relevant.[27]

• A prior business connection with and knowledge of the opponent by the applicant such that a person standing in the shoes of the applicant should have known that he should not have applied for a trade mark deceptively similar to that used by the opponent is sufficient for a finding of bad faith.[28]

1. The decided cases have established that assessing whether an application was filed in bad faith is a two-step test with a subjective and an objective element. The subjective element requires findings as to what the Applicant knew at the filing date. The objective element then asks: armed with that knowledge, would a person adopting proper standards of commercial behaviour consider the act of filing the trade mark to be in bad faith?
2. The Opponent bears the onus of establishing that the filing of the Application was in bad faith and it will not be easily established given the serious nature of the allegation.[29]
3. The SGP claims the following:

1. 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.
2. Referring to the details of the Australian and Overseas Marks from the WIPO Global Brand Database and Australian Trade Mark Register, even though the goods covered by these marks have not been provided, I have no reason to question the veracity of Chen's claim that the Applicant has filed a large number of trade marks of which the Applicant is not the owner.
3. I note that the majority of the trade marks of the Australian and Overseas Marks do not consist of descriptive words, well known words or obvious combinations of words such as portmanteau words, but rather they consist of highly invented and distinctive words including Gigilli, ITODOS, FishYuan, PROTECLE, FEimaX, Zonon, flintronic, Mildiso, Mingtex, morfone, MeiLiMiYu, KOONIE, Wohlmen, Skoutag and NETANY. Further, some of the Australian Marks are rendered in matching lower case or capitalisation to that of the Overseas Marks e.g. FEimaX, PROTECLE and Zonon and some have minor changes in capitalisation of letters perhaps to ensure the Australian Marks are not identical to the Overseas Marks e.g. FishYuan rather than FISHYUAN, iTODOS rather than ITODOS and MeiLiMiYu rather than MEILIMIYU. To me, this heightens the cloud over the conduct of the Applicant. In my view, it seems a highly unlikely coincidence that the Applicant adopted and filed so many unusual trade marks, including the Trade Mark, without knowledge of any of the Overseas Marks.
4. On the evidence before me, I find that the above circumstances raise an inference that the Application was filed in of bad faith which requires a response from the Applicant. The Applicant has not participated in this opposition other than filing a Notice of Intention to Defend the opposition. Therefore, the Applicant has not refuted the accuracy of the Opponent's evidence and claims nor provided evidence or submissions in response. In the absence of a response from the Applicant, I am satisfied on the balance of probabilities that a person standing in the Applicant's shoes should have known that it should not apply for the registration of the Trade Mark. The Applicant has engaged in a pattern of behaviour with respect to the filing of the Australian Marks which were already filed or registered overseas, and such conduct falls well short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons. Hence the s 62A ground of opposition is successful.
5. In the circumstances of this case, noting that in many other cases it is commercially standard to negotiate settlements around trade mark disputes, I also add that the Applicant's conduct in trying to extract a percentage of the Opponent's profits to sell the Application to the Opponent further heightens the cloud over the conduct of the Applicant.
   1. Having found the s 62A ground of opposition established for the Subset Goods, it is unnecessary that the remaining ground under s 59 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 on the balance of probabilities, the grounds of opposition under s 58 and 62A. I accordingly refuse to register the Application. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the Application be in accordance with the court's direction or order.

1. The Opponent has sought costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant 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').

[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, [4] (Kitto J).

[5] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [170] (Greenwood, Besanko and Katzmann JJ). See also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [78]-[80] (Carr J).

[6] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ).

[8] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).

[10] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

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

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

[13] Macquarie Dictionary (online at 16 September 2025) 'infant' (def. 1).

[14] Macquarie Dictionary (online at 16 September 2025) 'infant' (def. 2).

[15] Macquarie Dictionary (online at 16 September 2025) 'infant' (def. 4).

[16] [2006] FCA 160, [25].

[17] [2007] FCAFC 184, [66] and [80].

[20] [2012] FCA 81 (Dodds-Streeton J) ('Fry Consulting').

[21] [2013] FCA 478 (Bennett J) ('DC Comics').

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