The Applicant has been successful in relation to the applications for removal of trade mark number 1973610 and has requested its costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs in respect of trade mark number 1973610 against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Neither party has been entirely successful in respect of the application for removal of Trade Marks 1973611 and 1973612. As such I make no order as to costs in respect of this matter.

[1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

[2] Pfizer Products Inc. v Karam [2006] FCA 1663, [26] (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.

[3] [1998] FCA 440 (citation omitted).

[4] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

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

[6] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Hearing Officer Wilson).

[7] Digitus Information Systems Pty Ltd v Leap Software Developments Pty Ltd [2018] ATMO 153, [16] (Hearing Officer Wilson). See also Simon Burke v Factor Holdings Ltd [2019] ATMO 69, [24] (Hearing Officer Brown).

[9] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

[10] Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Ltd [2023] FCAFC 175, [82]-[84] (Nicholas, Burley and Cheeseman JJ).

[11] Or three years for trade marks filed from 24 February 2019 onwards see changes made in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3.

[12] M Davison, I Horak Shanahan's Australian Law of Trade Marks and Passing Off 6th edition, 2016 Thomson Reuters, [70.510].

[13] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

[14] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Hearing Officer Wilson).

[15] There is no documentary evidence before me that any of the Opponent's vehicles produced prior to 2022 bore either the 1973610 or 1973612 Marks, and the only evidence provided of this sale is the vehicle advertisement, which simply uses the word 'Leapmotor'.

[18] [2016] FCAFC 92 (Allsop CJ, Greenwood, Besanko, Nicholas and Katzmann JJ).

[19] [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ).

[20] My conclusion regarding authorised use does not interfere with my conclusion regarding the use of the Trade Mark by reason of the sale of a second hand Leapmotor vehicle in 2022 referred to in paragraph 31 above; that product was produced by the Opponent prior to the joint venture with Stellantis.

[21] The 1973611 Goods and Services and the 1973612 Goods and Services are virtually identical and have been treated so in this analysis; the differences are immaterial to my conclusion.

[24] M Davison, I Horak Shanahan's Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

[25] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

[26] [2010] HCA 13, [22] (French CJ, Gummow, Heydon and Bell JJ) (citations omitted).

[27] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

[28] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

[29] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210] (emphasis in original).

Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018

Marks Regulations 1995

Zhejiang Leapmotor Technology Co., Ltd v Zhihua Liu [2025] ATMO 165 (19 August 2025)

The primary judge referred to the summary of the relevant principles concerning use "as a trade mark" in Nature's Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117; (2010) 87 IPR 464 (Stone, Gordon and McKerracher JJ) which was a case in which the words "luscious Lips" were used on packaged confectionary which included lip shaped lollies. The Full Court summarised the relevant principles as follows at [19]:

Use as a trade mark is use of the mark as a "badge of origin", a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else: Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107; 47 IPR 481; [1999] FCA 1721 at [19] (Coca-Cola); E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 265 ALR 645; 86 IPR 224; [2010] HCA 15 at [43] (Lion Nathan).
A mark may contain descriptive elements but still be a "badge of origin": Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310; (1991) 30 FCR 326 at 347-8; [1991] FCA 310; 101 ALR 700 at 723; [1991] FCA 310; 21 IPR 1 at 24 (Johnson & Johnson); Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192; 33 IPR 161; Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH ; ; at ().

...Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods [Anheuser-Busch [2002] FCA 390; (2002) 56 IPR 182 at 228 [191]].

In the present case I am satisfied that the sale of the Leapmotor S01 vehicle by a third party on 1 July 2022 amount to use of the 1973611 Mark as ultimately the goods were sold in the course of trade with the 1973611 Mark used to distinguish the goods as the product of the Opponent, as opposed to the product of a third party. Furthermore, had the Opponent sold the product to the Australian entity prior to the resale this may also have been use of the Trade Mark, but the Opponent provides no information about how the third party seller obtained the vehicle.
The next question is what goods were sold under the 1973611 Mark by reason of the sale of 1 July 2022, with the Applicant making the submission that the Leapmotor S01 vehicle sold was a written-off salvage vehicle that was smoke damaged by fire (and unable to be registered in its current condition). While the vehicle itself was smoke damaged and unable to be registered in the condition, ultimately the good sold under the 1973611 Mark was in fact an electric vehicle, and not any other particular good or set of parts. Furthermore, the fact that the purchaser of the product would likely use the product for a different purpose (for salvage) then the common purpose a purchaser uses an electric vehicle for does not change the nature of the good at the time of purchase; namely that it was an electric vehicle and not in fact a discrete collection of parts. I am satisfied on the evidence before me that the Opponent has shown use of the 1973611 Mark in the relevant period for 'electric vehicles and cars'.
With respect to whether the use of the 1973611 Mark for electric vehicles and cars falls within the broader specification of 'vehicles for locomotion by land, water or rail', I consider that the breadth of this specification is far broader than the proven use by the Opponent in this case, which is limited to electric vehicles and cars. In Trident Seafoods Corporation v Trident Foods Pty Limited Gleeson J stated, 'if a description of the goods in the registration is broader than the proven use, the Registrar or the Court can redraft the registration and replace the broad description with a narrower description more closely aligned with the use proven: Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94 [291] - [306]'[17]. The goods offered by the Opponent under the Trade Mark in the relevant period are best characterised as 'electric vehicles and cars'. Accordingly, I am satisfied that the Opponent has used the 1973611 Mark in Australia in respect of electric vehicles and cars ('Used Goods') in the relevant period. I am not satisfied that the Opponent has used the 1973611 Mark for the Registered Goods and Services other than the Used Goods ('') during the relevant period.

Zhejiang Leapmotor Technology Co., Ltd v Zhihua Liu [2025] ATMO 165

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Zhejiang Leapmotor Technology Co., Ltd v Zhihua Liu [2025] ATMO 165 (19 August 2025)