An application to remove a registered trade mark under the sole ground of lack of intention to use can present significant difficulties.

A common refrain in trade mark practice is “use it or lose it”. This refers to the fundamental principle that a registered trade mark must be used in relation to the claimed goods and/or services to maintain the trade mark registration. Failure to do so may lead to irrevocable loss of trade mark rights. A further fundamental principle is that an applicant for trade mark registration must have an intention to use the trade mark for which registration is being sought. Both principles are related to the fact that a trade mark is a “badge of origin” of the goods and/or services.

In Australia, any party may apply to remove a trade mark registration under section 92 of the Trade Marks Act 1995 on account of non-use of the relevant trade mark. The trade mark owner must then oppose the application for removal to contest the removal application. The trade mark owner bears an onus to rebut the allegation of non-use pursuant to the civil standard of the balance of probabilities. Broadly, the grounds for a non-use application are (i) that on the filing date of the registration, the owner had no intention to use the trade mark in good faith; and (ii) the owner has not actually used the trade mark in Australia or used the trade mark in good faith in Australia in relation to the goods/services.

Jiaxu Liu v Butterfulandcreamourous Co., Ltd [2025] ATMO 151 considered ground (i) and provides insights into the amount of evidence required to establish the intention to use the trade mark by the applicant at the filing date. Jiaxu Liu, (also referred to as the “Opponent”) owns a trade mark registration in classes 30 and 43 for the following mark:

The removal applicant was Butterfulandcreamourous Co., Ltd, who owns a franchise of premium bakery and dessert stores in Korea under the BUTTERFUL & CREAMOROUS Mark.

An application to remove a trade mark registration under the sole ground of lack of intention to use may be regarded as a difficult ground to succeed on by a removal applicant and this case demonstrates why this long-held belief has legs.

The hearing officer made the following observations of case law:

At paragraph 12 citing Structureco Inc v Starite Distributors Pty Ltd [2000] ATMO 31:

I think that, in the case of applications for removal under s.92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case – perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.

At paragraph 13 citing Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261:

I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(a).

At paragraph 14 citing Edward v Liquid Engineering 2003 Pty Ltd:

s92(4) requires no more than genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions.

From the above authorities, it is clear that the evidentiary bar to establish that there was a good faith intention to use the trade mark in Australia at the filing date is low.

Jiaxu Liu admitted that the registered mark had not been used in Australia. The owner declared that he had a good faith intention to use the trade mark in Australia at the time of registration and had plans to open physical stores in Australia in January 2026 with site selection to occur between January and June 2025. Mr Liu did not provide documentary evidence to support these assertions or any documentary evidence of demonstrable preparations to use the trade mark in Australia.

Butterfulandcreamourous Co., Ltd rebuttal of Mr Liu’s evidence constituted several assertions and circumstantial evidence regarding overseas trade marks and was fundamentally unconvincing.

Paragraph 18 sums up the hearing officer’s conclusion:

While noting the paucity of the documentary evidence provided by the Opponent in this matter, I am satisfied that the Opponent’s evidence, which includes a clear sworn statement of an intention to use the Trade Mark at the relevant date, is sufficient to shift the onus in this case to the Applicant. The EIS also contains a summary of present plans which, while not conclusively demonstrating a present intention to use the Trade Mark for the full range of Registered Goods and Services, do correspond broadly with the Registered Goods and Services (noting that it is not entirely clear what services will and will not be provided from the stores as described by the Opponent). I note that in previous cases under s 92(4)(a) I have stated that a party that held a genuine intention to use/authorise/assign a trade mark should at the minimum be able to express what its actual intention was rather than simply restate the requirements of s 92(4)(a), and if it actually held a genuine intention to use, authorise or assign the Trade Mark, explain what its business plan was. The Opponent does express its intention and goes beyond merely restating the requirements of s 92(4)(a).

The underlined text is the crux of the evidentiary bar that the trade mark owner must overcome to support an intention to use a trade mark. The case was held in favour of the trade mark owner and the registration was not cancelled.

This case shows a fundamental tension with running an application for cancellation of a trade mark under s92 on the basis of lack of intention to use in good faith at the filing date only: there is a low evidentiary bar for the trade mark owner to overcome to show good faith intention to use, while the removal applicant bears a significant onus to show that the owner’s intention to use the trade mark was not in good faith, which is understandable as it is difficult to envisage how the removal applicant can know the mind of the trade mark applicant at the filing date.

This article was written by Hedie Meka. Contact us if you require assistance with a non-use removal action.