Trade Mark Opposition on Intention to Use and Conceptual Similarity: Can a Broad HONOR OF KINGS (Figurative) Specification Survive When Only Game Use Is Evidenced?

Introduction (Mandatory Fixed Text) Based on the authentic Australian judicial case 2025 ATMO 31 (Opposition to trade mark application 2375282 for HONOR OF KINGS (Figurative)), this article disassembles the Court’s judgment process regarding evidence and law. It transforms complex judicial reasoning into clear, understandable key point analyses, helping readers identify the core of the dispute, understand the judgment logic, make more rational litigation choices, and providing case resources for practical research to readers of all backgrounds.

Chapter 1: Case Overview and Core Disputes

Basic Information

Court of Hearing: IP Australia, before a Delegate of the Registrar of Trade Marks

Presiding Judge: Delegate of the Registrar of Trade Marks

Cause of Action: Opposition to registration under s 52 of the Trade Marks Act 1995 (Cth), relying on ss 42(b), 44, 59, 60 and 62A

Judgment Date: 12 February 2025

Core Keywords:

Keyword 1: Authentic Judgment Case
Keyword 2: Trade Marks Act 1995 (Cth) opposition
Keyword 3: Section 59 intention to use
Keyword 4: Deceptive similarity and conceptual impression
Keyword 5: Spill-over reputation and section 60
Keyword 6: Bad faith and pleading discipline

Background (No Outcome Spoilers)

This dispute arose from a trade mark application for a figurative mark incorporating the words HONOR OF KINGS together with a device element, filed across a very wide spread of goods and services in Classes 9, 41 and 42. The Opponent, a technology company with an extensive HONOR brand portfolio, objected on multiple grounds: that the Applicant lacked a real intention to use the mark in Australia for the breadth of the specification, that the mark conflicted with an earlier HONOR registration, that the Opponent’s HONOR reputation would create confusion, that use would be contrary to law through misleading conduct and passing off, and that the application was made in bad faith.

The case sits at a familiar modern fault-line: when a famous brand word appears inside a longer phrase used by a different enterprise, does the trade marks system permit a broad registration that might fence off future markets, or does the Act require tighter alignment between the legal monopoly sought and the practical business reality evidenced at the filing date?

Core Disputes and Claims

Core legal focus: Whether, at the Australian filing date, the Applicant had a real and definite intention to use HONOR OF KINGS (Figurative) in Australia for the full spread of claimed goods and services, and whether the mark should be refused because it conflicted with or traded on the Opponent’s HONOR rights and reputation, or was otherwise objectionable under the Act.

Opponent’s relief sought: Refusal of registration (or rejection of the application) under ss 42(b), 44, 59, 60 and 62A.

Applicant’s position (as revealed by the record): The Applicant filed no evidence in answer and no evidence in reply, leaving the decision-maker to determine the matter largely from the Opponent’s evidence and the written record.

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Chapter 2: Origin of the Case

The relationship between the parties was not contractual or personal. It was a collision of commercial identifiers in a regulated register. The Opponent built a consumer technology identity around HONOR and registered a large family of HONOR marks. The Applicant sought Australian registration for a composite sign containing the word HONOR plus the phrase OF KINGS and a device element, and it did so for a specification extending well beyond videogames.

The conflict did not begin as a courtroom drama with witnesses under oath. It began in the marketplace’s shadow: the register is a forward-looking monopoly. A party who secures registration can later enforce it against others in ways that reshape commercial freedom. That is why intention matters. The trade marks system is not designed to hand out broad monopolies untethered from real plans.

Detail Reconstruction

The key background event was the filing of the application in Australia (27 July 2023) with a convention priority date (31 January 2023). The specification was expansive. It included, among other things, a long list of software and entertainment items across Classes 9 and 41 and a suite of technology services in Class 42. Embedded within the Opponent’s evidence was a narrative: the Applicant’s mark corresponded to a well-known game title in China, yet outside China the game had been marketed under a different name, and the Applicant’s Australian filing appeared to reach far beyond what a game provider would ordinarily supply.

Conflict Foreshadowing

The decisive moment was not a single email or meeting. It was procedural: once the Opponent formally put intention to use in issue and filed evidence supporting a prima facie case, the Applicant chose not to respond with any documentary plan, launch roadmap, Australian marketing strategy, or internal approvals. In opposition practice, silence can become evidence’s amplifier.

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Chapter 3: Key Evidence and Core Disputes

Applicant’s Main Evidence and Arguments

No evidence filed.

Practical consequence: the Applicant left unrebutted the Opponent’s contention that the breadth of the specification was implausible and unsupported, and it provided no material to meet any shifted evidentiary onus once a prima facie case was established.

Respondent’s Main Evidence and Arguments

Opponent’s primary evidence: a declaration by a director of the Opponent, with annexures.

Modular breakdown of what that evidence did in the case:

1. Brand and portfolio architecture
   The Opponent established that it traded in technology goods under the HONOR brand and held a substantial portfolio of trade marks containing HONOR.

2. Market-facing presentation
   The Opponent’s evidence included examples of branding on products and online channels and endorsements, deployed to support reputation and commercial presence themes.

3. The Applicant’s apparent use context
   The Opponent’s evidence asserted that the Applicant offered a mobile game known in China as Honor of Kings, but that the Australian specification was far broader than a mobile game. Critically, an annexed third-party media article stated that the game had been released internationally as Arena of Valor and that there were plans for an international release under Honor of Kings in 2024.

4. The Australia gap
   The evidence did not demonstrate Australian sales or targeted Australian marketing by the Opponent for HONOR OF KINGS as a game brand. The Opponent’s strongest Australia-oriented point was not actual sales but the inference about the Applicant’s future game launch intention and the asserted mismatch between that intention and the specification’s breadth.

Core Dispute Points

1. Section 59 issue: Is there a real and definite intention to use the mark in Australia for each part of the specification at the filing date?

2. Section 44 issue: Is the Applicant’s mark substantially identical with or deceptively similar to an earlier HONOR mark for similar or closely related goods and services?

3. Section 60 issue: Did the Opponent’s HONOR mark have a reputation in Australia before the priority date, and if so, would that reputation make the Applicant’s use likely to deceive or confuse?

4. Section 42(b) issue: Would use be contrary to law, including misleading or deceptive conduct under the Australian Consumer Law or passing off?

5. Section 62A issue: Was the application made in bad faith, measured against acceptable commercial standards and the Applicant’s knowledge and conduct?

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Chapter 4: Statements in Affidavits

This matter illustrates a common dynamic in trade marks oppositions: one side’s declaration is required to carry not only facts but also the logic that links facts to statutory tests. The Opponent’s declaration performed three roles at once.

First, it built the Opponent’s narrative identity: a serious brand owner with an extensive portfolio and consumer recognition.

Second, it sought to map that identity onto Australian legal thresholds, especially reputation in Australia and the likelihood of confusion.

Third, it attacked the Applicant’s filing posture, focusing on specification breadth and the absence of any visible steps towards Australian use for many claimed items.

Comparative Boundary Between Untruths and Facts

Because the Applicant filed no affidavits, the “comparison of different expressions of the same fact” occurred indirectly. The Opponent asserted that the Applicant did not offer, nor apparently intend to offer, the game under that title outside China at the time, and that outside China the game was released under a different name. The same evidentiary package also contained the media report about an intended international release under the contested title in 2024. The record therefore contained both a limiting narrative and a forward-looking narrative, and the decision-maker had to sort which parts mattered under which statutory ground and at which date.

Strategic Intent Behind Procedural Directions

The procedural structure mattered. The Registrar’s delegate allowed the standard evidence timetable to run its course, then offered a choice: hearing or decision on the papers. The Opponent selected a decision without hearing. In that format, affidavit strategy becomes decisive because there is no cross-examination to rescue gaps, test credibility, or clarify ambiguous statements. The silence of the Applicant became strategically consequential because the Act’s intention-to-use inquiry is heavily influenced by what documentary planning exists at the filing date.

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Chapter 5: Court Orders

This case proceeded with procedural arrangements typical of oppositions:

1. Opposition commenced following advertisement of acceptance, with a notice of intention to oppose followed by a statement of grounds and particulars.

2. Evidence timetable ran: evidence in support was filed; no evidence in answer; no evidence in reply.

3. Election process: the parties were offered an opportunity to request a hearing or a decision without hearing. The Opponent requested a decision without hearing.

4. Delegation and decision on the written record: the matter was allocated to a delegate of the Registrar for determination under s 55.

5. Amendment opportunity: before final disposition, the decision-maker offered an amendment to reduce the specification to the subset for which intention to use was accepted on the evidence.

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Chapter 6: Hearing Scene: Ultimate Showdown of Evidence and Logic

Perspective: Strict, objective Third-Party Perspective.

This was not an oral contest with witnesses under cross-examination. The “showdown” occurred on paper: the statutory tests confronted a factual record built almost entirely by one party.

Process Reconstruction: Live Restoration

The decision-maker first identified the onus and standard: the Opponent carried the onus on each pleaded ground, and the civil standard applied.

The reasoning then moved in a disciplined sequence:

1. Identify the relevant date for each ground.

2. Set out the legal test, with reference to leading authorities.

3. Assess whether the Opponent’s evidence reached a prima facie threshold.

4. Consider whether any evidentiary onus shifted, and whether the Applicant rebutted it.

5. Determine the consequence for the specification: refuse the mark, or allow it to proceed, possibly with limitation.

Core Evidence Confrontation

The decisive evidentiary confrontation was between:

• the breadth of the specification, including items far beyond gaming, and
• the absence of any evidence from the Applicant explaining how, when, or why it intended to use the mark for that breadth in Australia.

The record included a concrete signal of intended game release timing. But it did not include anything resembling a plan to provide, for example, third-party software design services or the more implausible technological goods listed.

Judicial Reasoning (with Original Quotation Principle)

The decision-maker anchored the intention-to-use inquiry in established doctrine and then applied it to the reality of an expansive specification unsupported by the Applicant.

“The intention … is a real and definite intention … to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate.”

This statement was determinative because it frames s 59 as requiring more than a speculative hope. It requires a settled purpose at the filing date, even if the launch is later.

The decision-maker then emphasised the presumption flowing from filing, while explaining how it can be displaced when a prima facie case is made and the applicant remains silent.

“Where an opponent makes a prima facie case … the evidentiary onus shifts to the applicant for registration.”

This mattered because the Opponent’s case was built around implausible breadth. Once that prima facie case was accepted, the Applicant’s choice to file nothing became legally meaningful.

Finally, the logic applied a common-sense commercial lens to the specification itself.

“The range … is sufficiently broad and implausible … including ‘humanoid robots with artificial intelligence for use in scientific research’ …”

This passage was determinative because it linked the specification’s breadth to the inference that registration was being used to “cover a field” beyond expected use, a warning reflected in authorities such as Goodman Fielder Pte Ltd v Conga Foods Pty Ltd.

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Chapter 7: Final Judgment of the Court

1. Section 59 was established for all goods and services other than a narrow subset aligned to mobile games and online game services.

2. The application was amended by deleting the goods and services for which the s 59 ground was established, leaving a reduced specification aligned to the Remaining Goods and Services.

3. The other grounds were not established on the Remaining Goods and Services: ss 44, 60, 42(b) and 62A were not made out.

4. The trade mark application was permitted to proceed to registration after the applicable period, subject to any appeal.

5. Costs: No order as to costs, reflecting that each side achieved a degree of success.

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Chapter 8: In-depth Analysis of the Judgment: How Law and Evidence Lay the Foundation for Victory

[CRITICAL ORDER INSTRUCTION]: The output order of content within this chapter is: (Special Analysis → Judgment Points → Legal Basis → Evidence Chain → Judicial Original Quotation → Analysis of the Losing Party’s Failure).

Special Analysis

This decision is a practical lesson in how Australian trade marks law polices the boundary between legitimate brand protection and overreach. The most unusual feature is not the presence of HONOR inside a longer mark; it is the procedural and evidentiary posture: a wide specification, a prima facie challenge on intention, and complete non-participation by the Applicant in evidence.

It also illustrates how different opposition grounds address different mischiefs:

• Section 59 is concerned with the integrity of the register and the alignment of monopoly with genuine intended use.

• Section 44 is a structured similarity test for conflict with earlier marks in the register, assessed through the notional buyer and imperfect recollection.

• Section 60 is reputation-driven and can capture circumstances where registration would confuse because of pre-existing recognition in Australia.

• Section 42(b) and section 62A are serious allegations requiring careful pleading and evidentiary weight: “contrary to law” and “bad faith” are not lightly found.

The jurisprudential value lies in the operational approach to s 59 when the specification is expansive and the applicant stays silent. The decision-maker used the breadth itself, together with modest external indicators of intended use for a narrow segment, to justify a targeted reduction rather than total refusal.

Judgment Points

Victory Point 1: A specification can be cut down where the evidence supports intention for only a subset
The decision demonstrates a register-integrity approach: if the mark is genuinely intended for a narrow commercial use, the system can preserve that use while removing unsupported breadth. This aligns trade mark monopoly with commercial reality and reduces future enforcement overreach.

Victory Point 2: Implausible breadth is evidentiary, not merely rhetorical
The specification’s inclusion of items such as humanoid robots was not treated as harmless drafting. It was treated as a factual indicator supporting an inference that the filing aimed to “cover a field” beyond genuine plans. This is a critical practical point: the words in a specification are not neutral; they are material facts about the monopoly sought.

Victory Point 3: Silence after a prima facie case is made can be decisive under s 59
The reasoning adopts a realistic approach. When an opponent makes out a prima facie lack of intention, the applicant is the party with internal documents. The law does not require the opponent to prove the negative beyond sensible inference. A well-resourced applicant that produces nothing may face an adverse inference about intention.

Victory Point 4: Incorporating an earlier mark does not automatically mean deceptive similarity
The decision-maker accepted that the Applicant’s mark wholly incorporated HONOR, yet still found no deceptive similarity under s 44 because the additional elements changed the overall impression, visually, aurally, and conceptually. This underscores that trade marks are assessed as wholes, and meaning can break similarity even where a shared word exists.

Victory Point 5: Conceptual meaning can do heavy lifting in similarity analysis
The decision-maker reasoned that HONOR alone evokes an abstract concept, while HONOR OF KINGS with a target device evokes honour tied to royalty and warfare. That conceptual distinction supported a conclusion that consumers would not be left in reasonable doubt about source.

Victory Point 6: Spill-over reputation may be accepted, but it must still connect to likely confusion
The decision-maker accepted a form of spill-over reputation in Australia for HONOR as associated with smartphones. Yet the finding still failed because the goods/services at issue were software and game services, and the differences between marks were not overcome by the limited reputation shown.

Victory Point 7: Section 42(b) and the Australian Consumer Law require disciplined pleading and a higher persuasion burden than simple “confusion language”
The decision-maker treated the Australian Consumer Law pathway as more stringent than the s 60 confusion inquiry. Where s 60 failed, the “contrary to law” argument based on misleading conduct also failed. The decision shows that simply invoking “ACL” or “passing off” without a clear evidentiary narrative of representation, audience, and likely deception tends to be insufficient.

Victory Point 8: Bad faith is a serious allegation requiring more than inference from knowledge of an earlier brand
The decision-maker applied the touchstone of acceptable commercial standards and concluded that it was not shown that the Applicant acted unscrupulously, underhandedly, or unconscientiously. Registration of a mark corresponding to an established overseas game title was treated as capable of being bona fide, absent stronger evidence of predatory intent.

Legal Basis

Key statutory provisions applied:

• Trade Marks Act 1995 (Cth) s 55 (decision in opposition) and s 52 (opposition framework)

• Trade Marks Act 1995 (Cth) s 59 (applicant not intending to use trade mark)

• Trade Marks Act 1995 (Cth) s 44 (identical or deceptively similar marks; s 10 definition of deceptively similar)

• Trade Marks Act 1995 (Cth) s 60 (similar mark to mark with reputation in Australia)

• Trade Marks Act 1995 (Cth) s 42(b) (use contrary to law)

• Trade Marks Act 1995 (Cth) s 62A (application made in bad faith)

Key authorities used as legal scaffolding (selected, in AGLC4 style, integrated in-text):

• Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100 (real and definite intention; practical difficulty under s 59)

• Aston v Harlee Manufacturing Co (1960) 103 CLR 391 (imputation of intention from filing)

• Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808 (overbroad specification as indicator diminishing imputation)

• Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66 (substantial identity and deceptive similarity methodology)

• Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 (modern articulation of trade mark comparison principles)

• Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 (reasonable doubt and real tangible danger of confusion)

• Campomar Sociedad Limitada v Nike International Limited (2000) 202 CLR 45 (ordinary behaviour of consumers)

• Ragopika Pty Ltd v Padmasingh Isaac [2023] FCA 487 (structured approach to s 60 elements)

• Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81 (bad faith touchstones)

Evidence Chain

Conclusion = Evidence + Statutory Provisions

1. Conclusion: s 59 made out for most of the specification
   Evidence: the specification was extremely broad, including items not logically connected to a mobile game business model; there was no evidence of Australian intention for those items; the Applicant filed no rebuttal documents.
   Statutory provision: s 59 required a real and definite intention to use in Australia for the goods and services specified.

2. Conclusion: intention existed for a mobile game subset
   Evidence: external material indicating planned international release under the relevant title supported a real intention relating to mobile games and game services.
   Statutory provision: s 59 does not require immediate intention; a settled purpose suffices.

3. Conclusion: s 44 not established for the reduced specification
   Evidence: overall impression of HONOR OF KINGS (Figurative) differed from HONOR alone; visual, aural, and conceptual differences; the device and additional words changed the consumer impression.
   Statutory provision: s 44 read with s 10 and the notional buyer test.

4. Conclusion: s 60 not established
   Evidence: limited Australian-focused evidence; acceptance of a degree of spill-over reputation for HONOR in smartphones did not translate to likely confusion for software/game services given differences in marks and markets.
   Statutory provision: s 60 requires both reputation and likely deception or confusion because of that reputation.

5. Conclusion: s 42(b) not established
   Evidence: inability to show likely misleading conduct or passing off where confusion was not established on the relevant analysis.
   Statutory provision: s 42(b) requires use would be contrary to law, not merely could be.

6. Conclusion: s 62A not established
   Evidence: limited basis for inferring unscrupulous conduct; plausible bona fide rationale to register a known overseas game title; seriousness of allegation.
   Statutory provision: s 62A and the standards approach in authorities.

Judicial Original Quotation

Context: The decision-maker’s s 44 analysis turned on the holistic and conceptual comparison. The key step was recognising incorporation but still assessing the whole impression.

“The additional elements … are more than sufficient to create an overall conceptual meaning … such that consumer confusion is unlikely.”

Why this was determinative: It explains why the presence of HONOR inside the composite mark did not compel refusal. The Act protects against deceptive similarity, not against any later mark that contains an earlier word. The decision-maker treated the device and the phrase OF KINGS as altering what the mark “means” to ordinary consumers, thereby reducing the real likelihood of reasonable doubt about source.

Context: The bad faith ground required a serious, standards-based evaluation rather than suspicion.

“Bad faith imports conduct … of an unscrupulous, underhand or unconscientious character.”

Why this was determinative: It set a high bar. The Opponent’s case did not provide enough to move the allegation from inference to proof, particularly given an alternative commercial explanation for the Applicant’s filing.

Analysis of the Losing Party’s Failure

The Opponent did not lose entirely. It succeeded materially under s 59, forcing a significant reduction of the specification. However, it failed to achieve total refusal, and its failure on the remaining grounds reveals common strategic pitfalls.

1. Section 44 failure: Over-reliance on word incorporation
   The Opponent’s strongest s 44 theme was that HONOR was wholly incorporated. That is often persuasive, but it is not a complete argument. The decision-maker required proof that resemblance would cause a real likelihood of confusion, not merely that a shared element existed.

2. Section 60 failure: Reputation evidence did not tightly connect to the relevant goods/services
   Even with acceptance of spill-over reputation for HONOR in smartphones, the Opponent still had to show that the reputation would make the Applicant’s use likely to confuse for game software and game services. The evidence did not supply a tight market nexus or a persuasive confusion pathway.

3. Section 42(b) failure: “Contrary to law” needs a concrete consumer representation narrative
   The Opponent invoked the Australian Consumer Law and passing off, but without building a clear chain of representation, audience, and likely deception. Where the trade marks confusion analysis failed, the more stringent misleading conduct pathway did not succeed.

4. Section 62A failure: Serious allegation, thin evidence
   Bad faith requires more than that a party “must have known” of another’s marks. The decision-maker looked for an underhand purpose or conduct that fell short of acceptable commercial standards. The record did not demonstrate that the Applicant sought to exploit the Opponent’s reputation rather than protect its own game branding.

5. A broader lesson: Some grounds need different kinds of proof
   Section 59 can be won with careful specification analysis and inference from silence. Sections 44 and 60 generally require a richer account of consumer perception, market context, and the likely pathway to confusion. Section 62A requires evidence revealing the applicant’s improper purpose.

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Implications

1. Register strategy should mirror real strategy
   If you only have a real plan for a narrow segment, applying for everything under the sun tends to attract relatively high risk of a s 59 challenge. The register rewards credible planning, not speculative land-grabs.

2. Silence is rarely neutral in intention disputes
   When your internal documents are the natural source of proof, filing nothing tends to be treated as meaningful. If challenged under s 59, the safer approach is usually to produce at least some coherent documentary roadmap, even if the commercial rollout is staged.

3. Shared words do not automatically create legal conflict
   Trade marks are judged as wholes. The law asks whether ordinary consumers would be left in reasonable doubt about source. Conceptual meaning, device elements, and the “story” a mark tells can reduce confusion.

4. Reputation must connect to confusion, not just fame
   Even a strong overseas presence may only translate into limited spill-over recognition in Australia. The key is whether that recognition makes the later mark likely to confuse for the relevant goods/services.

5. High-allegation grounds need high-quality evidence
   Bad faith and “contrary to law” arguments are powerful when properly supported, but they tend to fail when pleaded broadly without a clear factual engine. Targeted evidence, not slogans, is what persuades.

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Q&A Session

Q1: Why did the decision-maker allow the mark to proceed at all if section 59 was established?

Because the evidence supported a real intention to use the mark for mobile game-related goods and services. The register can accommodate a narrowed monopoly that matches genuine intention, rather than forcing an all-or-nothing outcome where a legitimate subset exists.

Q2: Does the presence of the word HONOR inside HONOR OF KINGS mean the Applicant necessarily infringes the Opponent’s HONOR mark?

No. Opposition under s 44 and infringement under s 120 are related but distinct analyses. Even in opposition, the decision-maker assessed the overall impression and found consumer confusion unlikely for the remaining goods and services. Infringement would depend on actual use, context, and the statutory framework, and would need its own evidence and pleadings.

Q3: What practical step would most reduce risk when filing a broad specification?

Draft the specification to match your real launch plan and keep contemporaneous documents that show intention at the filing date: internal approvals, Australian market plans, distribution discussions, budget allocations, and product/service descriptions. If challenged, those documents often become decisive.

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Appendix: Reference for Comparable Case Judgments and Practical Guidelines

1. Practical Positioning of This Case

Case Subtype

Trade mark opposition under the Trade Marks Act 1995 (Cth) with primary focus on s 59 (intention to use) and secondary analysis under ss 44, 60, 42(b) and 62A.

Judgment Nature Definition

Final administrative decision in opposition proceedings (decision of a delegate of the Registrar of Trade Marks) with reasons, resulting in amendment of the specification and the application proceeding to registration for the narrowed goods and services.

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2. Self-examination of Core Statutory Elements

[Execution Instruction]: Based on the case type, display the corresponding core legal test standards one by one. These are for reference only; outcomes depend on evidence and circumstances, and no absolute statements are made.

Category selected: ④ Commercial Law and Corporate Law (as the closest practical toolkit category for trade and commerce conduct analysis and consumer law principles that were pleaded under s 42(b)).

Core Test 1: Contract Formation (Offer, Acceptance, Consideration, Intention)

Even though this case was not a contract dispute, trade mark conflicts often emerge alongside licensing, co-existence, and settlement negotiations. When assessing whether any co-existence promise or settlement term is enforceable, practitioners commonly consider:

1. Offer
   Is there a clear proposal capable of acceptance, with defined essential terms, such as the scope of permitted use, territories, classes, device variants, and enforcement steps?

2. Acceptance
   Was acceptance communicated clearly and in accordance with any required method, such as signing and returning an agreement, or accepting by performance in a specified manner?

3. Consideration
   Is there something of value exchanged, such as payment, mutual releases, restraint on enforcement, or permitted use rights?

4. Intention to create legal relations
   In commercial settings, intention is generally inferred, but the content and context of communications still matter. Draft settlement terms, “subject to contract” language, and incomplete negotiations can weaken enforceability.

Risk note: In trade mark disputes, informal email chains about “we are fine if you only use it for games” can be argued either way. The risk tends to be higher where the communications are vague, conditional, or expressly non-binding.

Core Test 2: Section 18 of the Australian Consumer Law (Misleading or Deceptive Conduct)

When s 42(b) is pleaded on the basis that use would be contrary to law through misleading conduct, the practical inquiry typically includes:

1. Conduct in trade or commerce
   Is the use of the mark part of commercial conduct, such as advertising, app store listings, packaging, or promotional campaigns?

2. Representation and audience
   What is being represented by the mark’s use, and to whom? Is it likely to convey that goods or services come from, are endorsed by, or are associated with another trader?

3. Likely effect on ordinary consumers
   Is the conduct likely to mislead or deceive the target audience, assessed by ordinary and reasonable members of that class, considering context?

4. Causation and materiality
   Is any likely misconception attributable to the impugned mark’s use, and is it material in the sense that it influences decision-making?

Risk note: The risk tends to be relatively higher where the mark is used in a way that amplifies association cues, such as mimicking branding style, using overlapping slogans, or marketing through the same channels to overlapping audiences.

Core Test 3: Unconscionable Conduct

While unconscionability was not determinative here, it is sometimes pleaded in broader disputes involving licensing, distribution, or platform access. The typical inquiry includes:

1. Special disadvantage
   Is one party at a substantial disadvantage affecting ability to protect its interests, such as language barriers, urgent need, or informational asymmetry?

2. Knowledge and exploitation
   Did the stronger party know or ought to have known of the disadvantage and take advantage of it?

3. Conduct against good conscience
   Is the overall conduct so harsh or exploitative that it offends equitable standards?

Risk note: In trade mark settlement contexts, the risk tends to rise where a stronger party pressures a weaker party into oppressive terms without time for advice.

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3. Equitable Remedies and Alternative Claims

[Execution Instruction]: Analyse whether the parties can utilise principles of Equity or other Common Law doctrines to launch a counter-attack when statutory law is inapplicable, identifying feasible alternative paths.

Promissory Estoppel and Proprietary Estoppel

Potential applicability in trade mark conflicts can arise when one party assures another that it will not enforce rights, or that certain branding will be tolerated, and the other party invests substantially in reliance.

Key elements to examine:

1. Clear and unequivocal promise or representation
   For example, a written assurance that a party will not oppose, will permit use in Australia, or will limit enforcement to certain classes.

2. Reliance
   Did the relying party adopt the branding, invest in marketing, localise content, or enter distribution deals because of the assurance?

3. Detriment
   Would the relying party suffer detriment if the promisor resiles, such as sunk marketing costs, loss of launch windows, or platform delisting?

4. Unconscionability
   Would it be against conscience to permit the promisor to go back on its assurance?

Result reference: Even where a formal agreement is absent, Equity may restrain a party from resiling where reliance and detriment are sufficiently established.

Unjust Enrichment and Constructive Trust

Less common in pure trade mark oppositions, but sometimes relevant in joint ventures or co-development:

1. Benefit at another’s expense
   For example, one party funding brand-building that is then captured by another through registration and enforcement.

2. Against conscience to retain
   Is it unjust for the benefiting party to retain the advantage without compensating the contributor?

Result reference: Remedies may include restitutionary orders, account of profits arguments in broader litigation contexts, or equitable declarations in appropriate cases.

Procedural Fairness (Administrative Law Flavour in Registry Decisions)

Although oppositions are governed by statutory procedure, a party may sometimes contend that procedural fairness was denied, such as lack of opportunity to be heard or unfair refusal of extensions. Any such argument would require:

1. Identifying the procedural step said to be unfair
2. Demonstrating practical injustice
3. Connecting the unfairness to the outcome

Risk note: Such challenges tend to be relatively high risk if the record shows that the party had a clear opportunity to file evidence and chose not to.

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4. Access Thresholds and Exceptional Circumstances

[Execution Instruction]: Reveal the hard thresholds and identify exceptional exemptions, using non-absolute language.

Regular Thresholds

1. Opposition timing and procedural compliance
   Trade mark opposition steps must be taken within prescribed periods, including filing the notice of intention to oppose, statement of grounds and particulars, and evidence stages. Missing procedural windows tends to be a relatively high risk pathway to losing by default.

2. Section 59 filing-date focus
   The key “intention to use” assessment is anchored at the Australian filing date. Post-filing developments may have limited weight unless they illuminate what was truly intended at filing.

3. Burden and standard
   The opponent carries the onus, and the balance of probabilities standard applies, but evidentiary dynamics can shift where a prima facie case is made and the applicant is the natural repository of evidence.

Exceptional Channels

1. Specification amendment pathway
   Where a ground is established only for part of the specification, the applicant may be permitted to amend to remove the vulnerable items. This can preserve a legitimate core while avoiding total refusal.

2. Honest concurrent use and other circumstances under s 44
   If an applicant can show honest concurrent use or other circumstances making acceptance proper, registration may still be possible even where similarity thresholds would otherwise cause rejection. However, reliance on these pathways tends to require robust evidence.

Suggestion: Do not abandon a potential registration strategy solely because a broad filing attracts opposition risk. Carefully consider whether narrowing the specification early, aligned to real commercial plans, can reduce vulnerability while protecting the core market.

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5. Guidelines for Judicial and Legal Citation

Citation Angle

It is recommended to cite this case in legal submissions or debates involving:

• The operation of s 59 where the specification is substantially broader than plausible intended use.

• The evidentiary effect of an applicant’s failure to rebut a prima facie case on intention.

• The role of conceptual meaning and additional elements in defeating a s 44 deceptive similarity claim, even where an earlier mark is wholly incorporated.

Citation Method

As Positive Support: Where your matter involves an overbroad specification and minimal evidence of planned use, this authority can support the proposition that a prima facie case may shift the evidentiary onus and justify narrowing.

As a Distinguishing Reference: If the opposing party cites this case, emphasise the uniqueness of your matter, such as concrete Australian launch documents for each claimed item, stronger market nexus, or clearer consumer confusion pathways.

Anonymisation Rule: In discussion of parties, use procedural titles such as Opponent and Applicant. Avoid real names.

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Conclusion

A trade mark is not merely a badge of origin; it is a legal monopoly. This decision shows that the Australian system tends to reward precision and evidence, and it tends to distrust broad monopolies unmoored from real plans. The golden sentence: Everyone needs to understand the law and see the world through the lens of law. The in-depth analysis of this authentic judgment is intended to help everyone gradually establish a new legal mindset: True self-protection stems from the early understanding and mastery of legal rules.

Disclaimer

This article is based on the study and analysis of the public judgment of IP Australia (2025 ATMO 31), aimed at promoting legal research and public understanding. The citation of relevant judgment content is limited to the scope of fair dealing for the purposes of legal research, comment, and information sharing.

The analysis, structural arrangement, and expression of views contained in this article are the original content of the author, and the copyright belongs to the author and this platform. This article does not constitute legal advice, nor should it be regarded as legal advice for any specific situation.

Source file: :contentReference[oaicite:0]{index=0}

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