Trade Mark Battle: YIMOBRA Case Highlights Risks of Bad Faith Applications in Australia
In a recent decision from the Australian Trade Marks Office ([2025] ATMO 57), the Hearing Officer refused the registration of the trade mark "YIMOBRA" after finding the application was filed in bad faith. This case offers valuable insights for businesses seeking to protect their intellectual property in Australia, particularly against trade mark squatting.
Case Summary: YIMOBRA Opposition
Linfei Chen successfully opposed Xiamen Xiaoyuyao Trading Co., Ltd's application to register "YIMOBRA" for various mat and carpet products. Chen, who created the YIMOBRA brand in 2016 and had been using it commercially since then, demonstrated prior use of the mark in Australia and worldwide.
Key factors in the Registrar's decision included:
- The Opponent had used and registered the identical mark internationally before the application date
- The mark was highly distinctive and unusual
- The Applicant sought registration for identical or similar goods
- The Applicant had a pattern of applying for marks that triggered citation issues
- The Applicant failed to provide any evidence contesting the bad faith allegations
The Registrar found that the evidence established a prima facie case of bad faith, which the Applicant did not rebut.
Strategies for Combating Trade Mark Squatting and Bad Faith Applications
1. Early Registration in Key Markets
The YIMOBRA case highlights the importance of securing trade mark registrations in markets where you operate or plan to operate. Chen had registrations in multiple jurisdictions, including the Applicant's home country of China, which strengthened their opposition.
Practical tip: Consider a strategic filing plan that covers not just your current markets but also manufacturing hubs and countries where trade mark squatters frequently operate.
2. Document and Maintain Evidence of Use
Chen provided substantial evidence of use, including:
- Amazon sales data and rankings
- Customer reviews from Australian consumers
- Website screenshots
- Examples of the mark on products and packaging
Practical tip: Maintain an "evidence vault" with dated screenshots, sales data, marketing materials, and other documentation that proves continuous use of your mark.
3. Monitor Trade Mark Registers
Regular monitoring of trade mark registers globally can help identify potential bad faith applications early, allowing for timely opposition.
Practical tip: Implement a watch service for your key marks, including common variations and misspellings, particularly in strategic markets.
4. Investigate Filing Patterns
Chen's evidence included information about the Applicant's pattern of filing trade marks of other parties, which was persuasive in establishing bad faith.
Practical tip: When opposing a bad faith application, investigate whether the applicant has a history of suspicious filing activity, as this can strengthen bad faith claims.
5. Act Decisively When Trade Mark Squatting Occurs
The successful opposition demonstrates the value of taking prompt action when potential trade mark squatting is identified.
Practical tip: Develop an enforcement strategy with clear triggers for when to file oppositions or pursue more significant legal actions.
Conclusion
The YIMOBRA case offers a valuable reminder that the Australian trade mark system provides effective remedies against bad faith applications. However, the burden of proof rests with the opponent, making it essential to gather comprehensive evidence.
For businesses facing trade mark squatting or bad faith registrations, a strategic approach combining preventative measures (early registration and monitoring) with decisive enforcement actions offers the best protection. When building a case, focus on demonstrating the distinctive nature of your mark, your prior use and rights, and any pattern of questionable behavior by the applicant.
By taking these steps, businesses can help ensure their valuable intellectual property remains protected in an increasingly competitive global marketplace.
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