A recent Australian Trade Marks Office decision challenges the popularly-held view that proving an applicant’s “no intention to use”, in an opposition, is impossibly difficult.

In Best & Less Pty Limited v Consolidated Artists BV [2013] ATMO 56, the applicant applied to register the following mark with respect to a range of goods including soaps, perfumes, cosmetics, protective clothing, precious stones, horological instruments and advertising.

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The opponent is a well-known retailer of clothing and homewares in Australia, and has used the trade mark MANGO in Australia for a range of its goods.

The evidence showed that the applicant had only used the following mark (that is, MNG without the additional word MANGO – despite the applicant’s suggestions to the contrary).

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The opponent was successful in opposing the MNG MANGO mark in the s.59 ground, which provides that the registration of a trade mark may be opposed on the ground that the applicant does not intend to use, or authorise the use of, the trade mark in Australia.

The popularly-held view has been that this ground is very difficult to establish, as the filing of an application for registration raises a prima facie presumption of intention to use in favour of the applicant, and it is very difficult to prove another party’s lack of intention (especially if that party asserts an intention in its evidence).

However, this case proves that the presumption in favour of the applicant is in fact rebuttable and perhaps more easily so than previously thought. In this case, the hearing officer was prepared to draw inferences to indicate a lack of intention to use:

  • The hearing officer considered the very wide specification of goods and services (including those as initially filed, before amendment).
  • The opponent presented evidence of a marketplace investigation of the applicant, showing it was the MNG mark that was in use (not MNG MANGO) and that the applicant only traded in clothing, fashion accessories and retailing.
  • The hearing officer looked at the applicant’s website, which only depicted clothing and accessories under the MNG mark, with no references to plans to sell other goods.
  • The applicant did not, in its evidence in answer, adequately address the allegations of no intention to use.
  • If the applicant had business plans to make the other goods, it would have been a simple matter to adduce evidence of those plans.
  • In the absence of such evidence, one would reasonably conclude that the claimed goods were not available at the priority date (or subsequently) and that the applicant had no intention to use the trade mark in relation to those goods.

Take home lessons

From an opponent’s perspective, the decision opens-up the possibility of succeeding in an opposition against an applicant that does not appear to have the capacity or ability to trade in particular goods, or against an application containing a specification of goods that is impossibly broad.

From an applicant’s perspective, the decision shows that an applicant needs to ensure that it can prove, preferably by documentary evidence, that it did in fact have plans to use a mark when it made its application. Also, applicants cannot now simply rely on the presumption of intention to use in their favour, but should actively defend any allegations of no intention with clear evidence to the contrary.