Australian Trade Mark Non-Use Dispute: Is the LUKFOOK JEWELLERY registration subject to partial removal due to insufficient commercial use?

Introduction
Based on the authentic Australian judicial case Opposition by Luk Fook Holdings Company Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by Zhou Liu Fu Jewelry Co., Ltd to remove trade mark number 1559183 (classes 9, 14, 16, 35, 36, 40 and 42) – LUKFOOK JEWELLERY & Chinese characters – in the name of Luk Fook Holdings Company Limited, 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: A delegate of the Registrar of Trade Marks (IP Australia)
Presiding Judge: Anne Makrigiorgos, Hearing Officer
Cause of Action: Application under s 92(4)(b) of the Trade Marks Act 1995 (Cth) for removal of a registered trade mark due to non-use.
Judgment Date: 29 October 2025

Core Keywords:

Keyword 1: Authentic Judgment Case
Keyword 2: Trade Mark Non-Use Application
Keyword 3: Goods and Services Classification
Keyword 4: Use in Good Faith
Keyword 5: Registrar’s Discretion
Keyword 6: Commercial Use of Trade Mark

Background:

Zhou Liu Fu Jewelry Co., Ltd (“Applicant”) filed an application under the Trade Marks Act 1995 (Cth) to remove trade mark number 1559183, comprising the mark “LUKFOOK JEWELLERY & Chinese characters” (“Trade Mark”), which is registered in the name of Luk Fook Holdings Company Limited (“Opponent”). The Trade Mark covers various goods and services across classes 9, 14, 16, 35, 36, 40, and 42. The Applicant’s removal application is based on the ground of non-use, alleging that the Trade Mark has not been used in Australia by the Opponent in good faith for a continuous three-year period ending one month before the filing of the removal application.

Core Disputes and Claims:

The central legal focus of this dispute is whether the Opponent can demonstrate sufficient “use in good faith” of the Trade Mark in Australia for the registered goods and services during the relevant three-year period.
The Applicant’s primary claim is for the complete removal of the Trade Mark from the Register.
The Opponent seeks to oppose the removal application, asserting that it has used the Trade Mark in good faith in Australia during the relevant period. Alternatively, the Opponent claims that, should non-use be established, circumstances justify the Registrar’s discretion not to remove the registration, citing the similarity of goods/services used and the likelihood of consumer confusion.

Chapter 2: Origin of the Case

The narrative of this legal confrontation begins with the intertwined commercial activities of two prominent jewellery companies, each seeking to establish or protect their presence in the Australian market. Luk Fook Holdings Company Limited (“Opponent”) operates as part of a large international group of subsidiary companies, established in Hong Kong in 1991, with a global footprint of over 3,200 jewellery stores across 11 countries and regions, including Australia. Their business model encompasses sourcing, designing, wholesaling, licensing, and retailing a wide variety of jewellery products. The Opponent first launched its physical retail operations in Australia in December 2013 with a store in Sydney, and subsequently expanded to Melbourne and Brisbane, claiming continuous use of its Trade Mark since then.

Conversely, Zhou Liu Fu Jewelry Co., Ltd (“Applicant”) is a Chinese company established in April 2004, also engaged in the design, manufacture, and sale of jewellery products globally. The Applicant primarily uses the trade marks “ZHOU LIU FU & Chinese characters” and “ZHOU LIU FU” in its operations, selling products through a network of physical stores (mainly franchisees) and online channels like Tmall, JD, and TikTok Shop Mall, with extensive social media promotion in China. Critically, the Applicant also sells its jewellery products in Australia through platforms such as Amazon, with recorded sales data from January 2024 to February 2025.

The conflict crystallised when the Applicant, seeking to streamline the Australian trade mark register and perhaps expand its own market presence unencumbered, filed an application on 4 September 2024. This application targeted the Opponent’s “LUKFOOK JEWELLERY & Chinese characters” Trade Mark, alleging that it had remained unused in Australia for the requisite three-year period preceding the removal application. This strategic move by the Applicant effectively challenged the Opponent’s claimed continuous use and aimed to open up the market for potentially competing marks. The ensuing legal battle thus became a definitive test of the Opponent’s actual commercial activities in Australia under its registered Trade Mark, setting the stage for a thorough examination of evidence and the nuanced application of trade mark law.

Chapter 3: Key Evidence and Core Disputes

Applicant’s Main Evidence and Arguments:

The Applicant, through the declaration of LI Weizhu (President of the Applicant), provided evidence focusing on its own operations and the global context of the Applicant’s Marks.
* History and Operations: Details the Applicant’s establishment in 2004 as a Chinese jewellery company, its global reach, and its use of its own “ZHOU LIU FU & Chinese characters” and “ZHOU LIU FU” marks.
* Sales in Australia: Annexes printouts from the Amazon store showing sales of jewellery products in Australia, with “date first available” for two products being September and November 2023. Provides Amazon sales details for January 2024 to February 2025.
* Global Coexistence: Discusses the coexistence of the Opponent’s and Applicant’s marks globally, including co-existing trade mark registrations in various jurisdictions.
* Oppositions in Australia: Refers to previous oppositions by the Opponent against the Applicant’s Australian trade mark applications, citing specific trade mark numbers.
* No Evidence of Use by Opponent: The Applicant implicitly argues that the Opponent has not genuinely used its Trade Mark in Australia.

Opponent’s Main Evidence and Arguments:

The Opponent, through the declaration of Cao Ai Min (Trade Mark Attorney and Partner of Beijing Wan Hui Da Intellectual Property Agency), presented evidence to establish use of the Trade Mark in Australia.
* Group Operations: Details the Opponent’s establishment in 1991 in Hong Kong, its global network of over 3,200 jewellery stores, and its operations in Australia through various physical stores.
* First Use in Australia: Claims first use of the Trade Mark in Australia in December 2013 with its Sydney store, followed by Melbourne and Brisbane, and continuous use since then.
* Physical Store Presence: Exhibits undated photographs of Sydney, Melbourne, and Brisbane stores, and screenshots from Facebook and Instagram accounts for the Brisbane store (dated March/April 2023 and September 2023/January 2024).
* Goods and Services: Claims use on a wide range of jewellery products (bracelets, necklaces, rings, bangles, earrings, pendants, ornaments, figures) and services (retailing of jewellery).
* Invoices: Provides copies of invoices for sales of jewellery, ornaments, and figures in Australia, dated between November 2021 and 4 August 2024 (within the Relevant Period), and post-period invoices.
* Promotional Materials: Exhibits undated photographs of business cards, packaging, a purse, a cup, a mini fan, calendars (2021-2024), and packaging ribbon, all displaying the Trade Mark or LUKFOOK JEWELLERY.
* Online Presence: Provides Wayback Machine screenshots (undated, claimed to be 21 March 2025 or earlier) of the Group’s website (lff.com.hk/zh/) showing financial services, and websites (vgiltd.com, chinagemslab.com/EN/) showing artwork and jewellery appraisal services. Also includes website traffic data.
* Social Media: Screenshots from various social media platforms (Facebook, Instagram, RedNote, Weibo, Douyin) showing use of the Trade Mark.

Core Dispute Points:

1. Actual Use in Australia: Whether the Opponent’s activities, particularly on goods/services other than jewellery retail, constitute “use in good faith in Australia” during the Relevant Period.
2. Evidentiary Weight: The sufficiency and dating of the Opponent’s evidence, especially for non-jewellery items and online services, in proving “real, as opposed to token, use in a commercial sense.”
3. Discretionary Factors: Whether, even if non-use is established for some goods/services, there are compelling circumstances (e.g., use on similar goods/services, public interest, avoidance of confusion) that should lead the Registrar to exercise discretion to maintain the registration.

Chapter 4: Statements in Affidavits

In this case, both the Applicant and the Opponent presented their factual matrix and evidentiary support through declarations (analogous to affidavits). The declaration by LI Weizhu for the Applicant and Cao Ai Min for the Opponent served as the primary means by which each party articulated their claims and provided supporting exhibits.

The Applicant’s declaration established the context of the non-use application by detailing its own commercial operations, brand usage, and global presence, including its entry into the Australian market via Amazon. This serves to frame the Applicant not merely as a challenger, but as a potentially competing entity with its own commercial interests in the Australian jewellery sector, implicitly arguing for a “clean” register.

The Opponent’s declaration, conversely, was meticulously crafted to demonstrate a long-standing and continuous engagement with the Australian market, aiming to rebut the non-use claim directly. It meticulously documented the Opponent’s global footprint, the opening dates of its Australian retail stores, and various forms of advertising and promotional activities. The inclusion of invoices for jewellery sales directly addresses the “use in good faith” requirement by providing transactional proof. The differing expressions of fact, for instance, regarding the specific services offered or the online reach of their websites, highlight the strategic intent to either establish active Australian commercial engagement (Opponent) or to demonstrate the lack thereof (Applicant). The Judge’s procedural directions would have focused on ensuring these declarations provided clear, admissible, and relevant evidence to the specific legal tests under the Trade Marks Act, guiding the parties to present facts in a structured manner that could withstand scrutiny during cross-examination, even if a hearing was ultimately not conducted. The critical element is the objective verification of these statements against the legal standard of “use in good faith in Australia.”

Chapter 5: Court Orders

In this matter, the following procedural orders and arrangements were made prior to the final decision:
* The Applicant filed the application for removal under s 92(4)(b) of the Trade Marks Act 1995 (Cth) on 4 September 2024.
* The Opponent filed a Notice of Intention to Oppose the Removal Application on 7 November 2024, followed by a Statement of Grounds and Particulars on 4 December 2024.
* The Applicant filed a Notice of Intention to Defend the Removal Application on 25 December 2024.
* The Opponent filed Evidence in Support (EIS) on 27 March 2025.
* The Applicant filed Evidence in Answer (EIA) on 21 May 2025.
* No Evidence in Reply was filed by the Opponent.
* Neither party requested an oral hearing; the Applicant requested a decision without a hearing, which the Delegate proceeded to determine based on the filed particulars and evidence.

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

The ultimate showdown in this non-use application revolved around the evidentiary strength of the Opponent’s claims of “use in good faith in Australia” for its “LUKFOOK JEWELLERY & Chinese characters” Trade Mark. The Applicant’s challenge placed the onus squarely on the Opponent to provide convincing proof of genuine commercial activity.

The Opponent presented a range of evidence, including declarations detailing its extensive global operations and its Australian retail presence in Sydney, Melbourne, and Brisbane. Crucially, the Opponent submitted numerous invoices for the sale of jewellery, ornaments, and figures in Australia, dated between November 2021 and 4 August 2024, a period falling squarely within the “Relevant Period.” These invoices, displaying the Trade Mark, provided tangible transactional proof for specific goods. Furthermore, screenshots from the Opponent’s Brisbane store’s Facebook and Instagram accounts, dated March/April 2023 and September 2023/January 2024, depicted promotional activities.

The challenge, however, lay in the specificity and corroboration of the evidence. For instance, while the Opponent submitted undated photographs of various promotional materials (business cards, packaging, cups, mini-fans, ribbons, and calendars), these lacked clear contextual dating for the Relevant Period, diminishing their weight. Similarly, claims of offering “financial services” and “artwork and jewellery appraisal services” through various websites were met with screenshots that were either undated, primarily in Chinese characters, or lacked direct targeting towards Australian consumers. The absence of specific Australian-centric marketing or sales data for these services on the websites weakened the argument for local “use in good faith.”

The Judge meticulously scrutinised each piece of evidence against the legal requirements. On the question of the evidentiary standard, the Judge referenced authoritative legal principles:

Judicial Original Quotation:

“Where the Act requires the Registrar to be ‘satisfied’ of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.”
Analysis: This quote from Blount Inc v Registrar of Trade Marks underscores the persuasive burden on the Opponent. The Delegate must be convinced, not merely presented with, evidence that tips the scales of probability.

Judicial Original Quotation:

“Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use, but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’. The fewer acts relied on the more solidly ought they to be established.”
Analysis: This dictum from Woolly Bull Enterprises Pty Ltd v Reynolds (citing Nodoz Trade Mark) highlights the rigorous standard for limited acts of use. The Opponent’s numerous invoices for jewellery sales, directly displaying the Trade Mark within the Relevant Period, provided this “overwhelmingly convincing proof” for those specific goods.

The cross-examination, although not conducted orally, was performed by the Judge through the rigorous application of legal principles to the submitted declarations. The lack of clear dating and Australian targeting for several pieces of evidence, particularly for Class 9 (accessories for mobile phones), Class 16 (printed matter), Class 36 (financial services), Class 40 (material treatment), and Class 42 (artwork and jewellery appraisal services), meant they fell short of the “overwhelmingly convincing proof” required. The Judge’s reasoning consistently aligned with the need for concrete, verifiable evidence of commercial use in Australia.

Chapter 7: Final Judgment of the Court

The Registrar’s Delegate found that the Opponent had been partially successful in its opposition to the removal application.

Orders:
The Delegate directed that registration number 1559183 be partially removed from the Register for all goods and services except for the following:

Class 14: Bracelets (jewellery); brooches (jewellery); charms (jewellery); chains (jewellery); costume jewellery; earrings; jewellery; necklaces (jewellery); ornaments of precious metal; ornaments (jewellery); pearls (jewellery); goods in precious metals or coated therewith, not included in other classes; rings (jewellery); cuff links; gold thread (jewellery); ivory (jewellery); jewellery of yellow amber; medallions (jewellery); ornamental pins; pins (jewellery); tie clips; tie pins; statues of precious metal; statuettes of precious metal; works of art of precious metal.

Class 35: Retail and wholesale services including online sales in respect of goods in precious metals, jewellery, bracelets, brooches, chains, earrings, necklaces, ring, pins, tie pins.

Costs:
Both parties sought their costs. As neither party was entirely successful in respect of the Removal Application, the Delegate decided not to award costs.

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

Special Analysis:

This case underscores the critical importance of maintaining comprehensive and dated records of trade mark use, particularly for international entities operating in the Australian market. The partial removal decision highlights a nuanced approach to non-use applications, where the Registrar is willing to dissect the registration and retain only those goods and services for which clear evidence of use is provided. It reinforces that broad claims without specific supporting documentation will not withstand scrutiny. The case also illustrates the limitations of relying on general promotional materials or foreign-targeted online presence to demonstrate Australian use.

Judgment Points:

The Delegate’s decision to specifically list retained goods/services, including traditionally “jewellery” items that might also be considered “ornaments” or “figures” (e.g., statues of precious metal, works of art of precious metal), demonstrates a pragmatic application of the “similarity” principle within the retained classes. The explicit inclusion of specific types of jewellery, even if not all listed in the original filing, as items for which use was established, indicates a judicial willingness to interpret “jewellery” broadly where consistent evidence exists. Conversely, the strict rejection of online services without clear Australian targeting sets a high bar for digital use claims.

Legal Basis:

The Judge referred to Section 92(4)(b) of the Trade Marks Act 1995 (Cth) as the core ground for the non-use application, requiring the Opponent to prove use in good faith during the Relevant Period. The interpretation of “use in good faith” draws on precedent from Woolly Bull Enterprises Pty Ltd v Reynolds and Nodoz Trade Mark, emphasizing “real, as opposed to token, use in a commercial sense.” The “badge of origin” function of a trade mark, as defined in Section 17 and reinforced by Coca-Cola Co v All-Fect Distributors Ltd, was central to determining what constituted qualifying use. The discretion under Section 101(3) and (4) was considered, but ultimately, the lack of sufficient evidence for the Remaining Goods and Services precluded its exercise.

Evidence Chain:

The successful party (Applicant for removal, partially) relied on the Opponent’s inability to provide sufficiently dated and Australian-targeted evidence of trade mark use for most goods and services. The critical evidence for the Opponent’s partial success was:
* Invoices: Copies of dated invoices from Australian retail stores for sales of jewellery, ornaments, and figures, clearly displaying the Trade Mark within the Relevant Period.
* Social Media Screenshots: Dated screenshots from Australian-targeted Facebook and Instagram accounts promoting the Brisbane store, showing the Trade Mark.

Judicial Original Quotation:

“Under s 92(4)(b), the relevant period during which the Opponent must establish use of the trade mark in relation to the Goods and Services is the three year period ending on 4 August 2024 (‘Relevant Period’). … The Opponent bears the onus of rebutting an allegation of non-use by establishing, on the balance of probabilities, that it has used the trade marks in respect of any or all of the Goods or Services identified in the Removal Application during the Relevant Period or that there were circumstances that were an obstacle to use in the Relevant Period.”
Analysis: This foundational statement clarifies the burden of proof and the precise timeframe for demonstrating use, directly guiding the evaluation of the Opponent’s evidence.

Judicial Original Quotation:

“Undated examples of use carry little, if any, weight in support of a claim for use of a trade mark within the relevant period. Similarly, bald assertions of use during the relevant period which are not supported by clearly dated documentary evidence should be afforded little weight.”
Analysis: This principle (from Digitus Information Systems Pty Ltd v Leap Software Developments Pty Ltd) proved decisive, as much of the Opponent’s promotional and online evidence, lacking specific dating or clear Australian targeting, was discounted, leading to the partial removal.

Analysis of the Losing Party’s Failure:

The Opponent failed to provide “overwhelmingly convincing proof” for the majority of the registered goods and services. While it demonstrated use for core jewellery products retailed in Australia, its claims for broader categories (e.g., mobile phone accessories, various printed matter, financial services, artwork appraisal services) were not supported by adequately dated or Australian-targeted evidence. The reliance on undated photographs, general promotional materials, or Chinese-language websites without specific targeting mechanisms for Australia led to a significant portion of its registration being removed. The Opponent also failed to establish any “obstacles to use” during the Relevant Period, further weakening its position.

Implications

1. Document Everything: Every commercial interaction involving your trade mark, from sales to marketing, should be meticulously documented with clear dates and geographical relevance. This administrative discipline can be the bedrock of your legal defence.
2. Targeted Digital Presence is Key: For online businesses, merely having a global website or social media presence is insufficient. Ensure your digital marketing efforts and e-commerce platforms are explicitly targeted at Australian consumers to prove local use.
3. Proactive Portfolio Management: Regularly review your trade mark portfolio. If you’re not actively using a mark for certain goods or services, consider narrowing your registration to avoid vulnerabilities to non-use applications.
4. Understand the “Use in Good Faith” Bar: The standard for “use in good faith” is commercial and genuine, not merely token. Even a single act of use, if robustly proven, can be enough, but the proof must be “overwhelmingly convincing.”
5. Seek Early Legal Advice: Don’t wait for a non-use application to be filed. Proactive legal advice can help you identify gaps in your evidence of use and implement strategies to strengthen your position, potentially preventing costly litigation.

Q&A Session

Q1: What exactly does “use in good faith in Australia” mean for a trade mark?
A1: It means genuinely using the trade mark in a commercial sense within Australia, as a badge of origin to distinguish your goods or services from others. It’s not about token or incidental use, but demonstrable commercial activity where Australian consumers would recognise the mark as identifying your products or services.

Q2: My business sells products online globally, but I don’t have a specific Australian website. Does that count as “use in Australia”?
A2: Generally, simply having a global website accessible in Australia is not enough. To be considered “use in Australia,” your online activities must be specifically intended for, directed at, or targeted towards Australian consumers. This could include having Australian pricing, shipping options, or marketing content tailored for the Australian market. Without such targeted efforts, your global online presence might not be considered “use in good faith in Australia.”

Q3: If a part of my trade mark registration is removed due to non-use, does that mean my entire trade mark is cancelled?
A3: No, not necessarily. As seen in this case, a trade mark registration can be “partially removed.” This means the trade mark remains registered for the goods and services for which you could prove genuine use, but it is removed for those goods and services for which you could not demonstrate sufficient use. This highlights the importance of having evidence of use for every category of goods and services listed in your registration.

Appendix: Core Practical Component Library

1. Practical Positioning of This Case
Case Subtype: Trade Mark Non-Use Application – Partial Removal
Judgment Nature Definition: Final Judgment

2. Self-examination of Core Statutory Elements

Core Test (Non-use Application – Section 92(4)(b) of the Trade Marks Act 1995 (Cth))

The trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:
* (i) used the trade mark in Australia; or
* (ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
* Detailed Explanation: This is the foundational test for challenging a trade mark on non-use grounds. It sets a specific 3-year “relevant period” for assessing use. The onus is on the registered owner to demonstrate that they performed some form of genuine commercial use during this time, or that there were valid reasons preventing such use. This provision aims to prevent cluttering the register with unused marks, ensuring it accurately reflects active commercial identities.

Onus of Proof (Section 100(1)(c))

The registered owner bears the onus of rebutting the allegation of non-use by establishing, on the balance of probabilities, that it has used the trade mark in good faith in Australia in respect of the goods and/or services identified, or that there were circumstances that were an obstacle to use.
* Detailed Explanation: This principle clarifies who must prove what. Once a non-use application is filed, the burden shifts to the registered owner. They must provide sufficient evidence to persuade the Registrar (or Court on appeal) that their use was genuine, or that legitimate obstacles prevented use. Failure to discharge this onus will likely result in removal.

Use in Good Faith

“Real, as opposed to token, use in a commercial sense.” (Woolly Bull Enterprises Pty Ltd v Reynolds). A single bona fide use may be sufficient, but requires “overwhelmingly convincing proof” (Nodoz Trade Mark). Use must be as a “badge of origin.”
* Detailed Explanation: This is the qualitative assessment of the use. It means the use must be genuinely commercial, not merely superficial or made purely to avoid removal. The mark must be used to distinguish the goods/services in the marketplace, indicating their trade origin. Even a solitary instance of use could be sufficient, but its authenticity and commercial nature must be unequivocally demonstrated, requiring strong, verifiable evidence.

Discretion (Section 101(3) & (4))

The Registrar may decide not to remove the trade mark even if non-use is established, considering factors like abandonment, residual reputation, post-period sales, knowledge of applicant’s use, or use on similar goods/services (s 101(4)).
* Detailed Explanation: This provision offers a safety net for registered owners. Even if non-use is proven, the Registrar retains discretion to allow the mark to remain on the register. This is a broad discretion, balancing the integrity of the register with the legitimate interests of the trade mark owner. Factors like ongoing reputation, recent use outside the relevant period, or use on closely related goods/services, may persuade the Registrar that removal would be unreasonable or unjust.

3. Equitable Remedies and Alternative Claims
In this case, dealing with Civil/Commercial matters, while not explicitly argued for in the provided judgment, parties could conceptually launch a “counter-attack” when statutory law is inapplicable, by considering equitable principles.

Promissory / Proprietary Estoppel:

• Did the other party make a clear and unequivocal promise or representation? (e.g., if the Applicant had previously assured the Opponent that their market activities were acceptable, leading the Opponent to believe its current level of use was sufficient).
• Did you act in detrimental reliance on that promise? (e.g., the Opponent continuing its marketing strategy, making investments, or refraining from expanding its use in reliance on the Applicant’s prior representations).
• Would it be unconscionable for the other party to resile from that promise? (e.g., if the Applicant’s sudden non-use application, after a period of implied acceptance, would cause significant and irreparable harm to the Opponent’s goodwill).
• Result Reference: Even without explicit contractual terms or direct statutory protection for their perceived rights, Equity may “estop” the Applicant from pursuing the removal if their conduct created an expectation that was detrimentally relied upon by the Opponent, and it would be unconscionable to allow the removal.

Unjust Enrichment / Constructive Trust:

• Has the other party received a benefit at your expense without a just cause? (e.g., if the Applicant benefited from the Opponent’s market development or advertising that inadvertently raised brand awareness for similar marks, and the removal would unjustly transfer that goodwill).
• Is it against conscience for them to retain that benefit without payment? (e.g., if the Applicant has leveraged the Opponent’s brand recognition or market investment without contributing to it, and removing the mark would consolidate that unearned benefit).
• Result Reference: The Court could, in theory, order restitution for the unearned benefit or, in certain circumstances, impose a Constructive Trust over any market advantage gained by the Applicant directly attributable to the Opponent’s established (albeit not fully proven) presence.

4. Access Thresholds and Exceptional Circumstances

Regular Thresholds:

• Three-year non-use period: The core statutory requirement for initiating a non-use removal application is that the trade mark must have remained unused for a continuous period of three years, ending one month before the application is filed. This is a strict temporal threshold.
• Five-year registration period: A non-use application under s 92(4)(b) cannot be made before a period of five years has passed from the filing date of the trade mark application (as per prior s 93(2), relevant to this case).

Exceptional Channels (Crucial):

• Obstacles to use (s 100(3)(c)): If the registered owner can demonstrate circumstances prevailing during the Relevant Period that constituted a genuine obstacle to the use of the trade mark (e.g., import restrictions, natural disasters, or other unforeseeable events beyond the owner’s control).
• Registrar’s discretion (s 101(3) & (4)): Even if non-use is established, the Registrar retains broad discretion not to remove the mark if it is deemed “reasonable” to do so. This can include:
  • Residual reputation: If the trade mark owner still holds a significant reputation or goodwill associated with the mark.
  • Post-period use: If there have been sales or use of the mark since the Relevant Period ended, indicating a renewed intention to use.
  • Applicant’s knowledge: If the applicant for removal entered the market with full knowledge of the registered mark, implying a degree of opportunistic behaviour.
  • Use on similar/related goods/services (s 101(4)): If the mark has been used on goods or services closely related to those challenged, demonstrating continued commercial activity within the broader scope of the business.
• Suggestion: Do not abandon a potential claim simply because you do not meet the standard time or conditions. Carefully compare your circumstances against the exceptions above, as they are often the key to successfully filing a case.

5. Guidelines for Judicial and Legal Citation

Citation Angle:

It is recommended to cite this case in legal submissions or debates involving:
* The evidentiary requirements for proving “use in good faith” under the Trade Marks Act 1995 (Cth).
* The interpretation of “use in Australia” in the context of online activities and foreign-targeted promotional materials.
* The application of the Registrar’s discretion in non-use removal proceedings, particularly regarding partial removal.
* Arguments concerning the “purity of the register” versus the rights of registered trade mark owners.

Citation Method:

• As Positive Support: When your matter involves establishing or challenging trade mark use for specific goods and services, particularly for those where commercial transactions or targeted local advertising can be proven, citing this authority can strengthen your argument for retaining or removing a partial registration.
• As a Distinguishing Reference: If the opposing party cites this case to argue for removal based on weak evidence, you should emphasize the specific nature of the goods/services not proven for use in the current matter or the lack of targeted Australian marketing for online services to argue that this precedent, specifically its partial removal, is not applicable to your case if you have stronger, targeted evidence.

Anonymisation Rule: Do not use the real names of the parties; strictly use professional procedural titles such as Applicant / Opponent.

Conclusion
The Luk Fook Holdings judgment serves as a robust reminder that in the dynamic landscape of trade mark law, mere registration is not sufficient; active, demonstrable, and meticulously documented “use in good faith” is paramount for maintaining intellectual property rights. This decision reinforces the Registrar’s commitment to preserving the integrity of the trade mark register while offering a balanced, albeit stringent, pathway for owners to defend their commercial identities.

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 the Federal Circuit and Family Court of Australia (Opposition by Luk Fook Holdings Company Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by Zhou Liu Fu Jewelry Co., Ltd to remove trade mark number 1559183 (classes 9, 14, 16, 35, 36, 40 and 42) – LUKFOOK JEWELLERY & Chinese characters – in the name of Luk Fook Holdings Company Limited), 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.

---

Original Case File:

👉 Can’t see the full document?
Click here to download the original judgment document.