Federal Court of Australia

Clarke v TNSG Biotech Co., Ltd [2026] FCA 851

ORDERS

THE COURT ORDERS THAT:

1.    The appeal from the decision of the delegate of the Registrar of Trade Marks given on 14 December 2023 (delegate’s decision) in relation to Australian Trade Mark Application 2170040 (application) be allowed.

2.    The delegate’s decision be set aside.

3.    The respondent’s opposition to the application be dismissed.

4.    The Registrar allow the application to proceed to registration.

5.    The respondent pay the applicant’s costs of the appeal on the following basis:

(a)    Costs incurred up to and including 1 April 2026, on a party-party basis; and

(b)    Costs incurred thereafter, on an indemnity basis.

6.    The delegate’s costs order be set aside.

7.    There be no further order in relation to costs before the delegate.

8.    The applicant is directed to serve a copy of these orders and accompanying reasons within 5 days on:

(a)    the Registrar; and

(b)    the respondent, by email to huangzhen@yichenglaw.com and chenyang@yichenglaw.com, and in hard copy to “TNSG Biotech Co., Ltd, Room 2403, Building 3, 403 Heyan Road, Yanziji Subdistrict, Qixia District, Nanjing City, Jiangsu Province” and “Unit 2403, Building 3, No. 408 Heyan Road, Yanziji Subdistrict, Qixia District, Nanjing”.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

STELLIOS J:

1    This is an appeal under s 56 of the Trade Marks Act 1995 (Cth) from the whole of the decision of a delegate of the Registrar of Trade Marks made on 14 December 2023. The delegate upheld a ground of opposition by the respondent and refused to register the trade mark. For the following reasons, the appeal should be allowed.

background

The trade mark application, opposition and delegate’s decision

2    The applicant, Murray Colin Clarke, is the applicant for trade mark application number 2170040 filed on 9 April 2021 for the trade mark (in classes 5, 30 and 35) comprising four Chinese characters:

3    For convenience, the above four Chinese characters are hereafter referred to as the Chinese Mark. The application contains an endorsement that the Chinese Mark is transliterated as “TONG NIAN SHI GUANG” and translates into English literally as “Child; year; time; light” and together meaning “Childhood time”. For reasons that will become apparent, it is important to note at the outset that Dr Clarke is also the registered owner of the trade mark CHILDLIFE (CHILDLIFE Mark) in Australia (and elsewhere).

4    The Registrar accepted the application for registration of the Chinese Mark and published that acceptance on 10 September 2021. On 9 November 2021, the respondent, TNSG Biotech Co., Ltd, a company incorporated in the People’s Republic of China, filed an opposition to the applicant’s application pursuant to s 52 of the Act. On 14 December 2023, the delegate determined that the ground of opposition raised under s 62A of the Act had been made out and refused to register the trade mark.

The statutory appeal to this Court

5    Dr Clarke filed the present statutory appeal on 29 January 2024. TNSG filed a notice of contention on 26 February 2024, contending that the decision of the delegate made on 14 December 2023 should be affirmed on grounds other than those relied on by the delegate, namely under ss 42(b), 58, 59 and 60 of the Act. On the same day, TNSG filed a notice of address for service, nominating Australian solicitors.

6    In hearing and determining the appeal, the Court exercises original jurisdiction and proceeds by way of de novo review to hear and determine TNSG’s opposition to the registration of Dr Clarke’s application. The Court determines the merits afresh on the evidence before the Court: Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; 367 ALR 393 at [2], [36]–[37] (Greenwood J), and [228] (Burley J). TNSG bears the onus to make out any ground of opposition: Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; 185 FCR 9 at [32] (Keane CJ, Stone and Jagot JJ); Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; 345 ALR 205 at [152] (Greenwood, Besanko and Katzmann JJ).

7    On 26 July 2024, TNSG lodged for filing four affidavits in the proceeding. A further three affidavits were filed on 9 August 2024.

8    On 12 August 2025, I made orders by consent listing the matter for hearing on 22 to 26 June 2026 for opening submissions and evidence, and on 20 July 2026 for closing submissions. Orders were also made on the same day timetabling the proceeding to hearing. In line with the timetable, a court book was provided in December 2025.

Cessation of TNSG’s legal representation

9    On 24 March 2026, TNSG’s Australian solicitors lodged for filing a notice of ceasing to act pursuant to r 4.05(1)(b) of the Federal Court Rules 2011 (Cth). The notice identified the last known residential or business address of the respondent as a commercial office address in Nanjing City, Jiangsu Province in China. Rule 4.05(2) required TNSG to file a notice of address for service within five days of the r 4.05(1)(b) notice being filed. No such notice has been filed.

10    Furthermore, r 4.01(2) of the Rules provides that a corporation must not proceed in the Court other than by a lawyer. TNSG has not made an application for leave to proceed in the absence of legal representation.

11    On 15 April 2026, my associates sent an email to the parties enquiring whether TNSG’s former solicitors had an email address for TNSG. On 27 April 2026, TNSG’s former solicitors responded that they were unable to assist with the provision of an email address.

12    In an affidavit affirmed on 29 April 2026, Sidney En-Ning Kung, a solicitor for Dr Clarke, deposed that the following steps were taken to contact TNSG following the filing of the notice of ceasing to act:

(1)    On 24 April 2026, FenXun Partners, which is a Chinese-based law firm that operates under a joint licence with Dr Clarke’s Australian solicitors in China, sent an email (both in English and translated into Chinese) attaching a letter to TNSG’s Chinese-based legal representatives. The letter stated that TNSG had been in breach of r 4.05(2) of the Rules since 30 March 2026 and requested an indication, by 28 April 2026, whether TNSG had appointed a new Australian lawyer and, if so, their contact details. It was stated that if no response was received, Dr Clarke’s solicitors would presume that TNSG did not intend to participate in the proceeding.

(2)    Mr Kung deposed that he was informed by a partner at FenXun, and he believed, that the letter was sent via courier to:

(a)    TNSG’s last known address as notified in the notice of ceasing to act; and

(b)    TNSG’s address as set out in the “National Enterprise Credit Information Publicity System” company search (company search address).

(3)    Mr Kung further deposed that he was informed by a partner at FenXun and believed that the letter was delivered to those addresses on 25 April 2026. No response to those communications has been received from TNSG.

13    On 28 April 2026, Dr Clarke’s solicitors approached the Court seeking the listing of a case management hearing for directions, which was held on 30 April 2026.

14    On 5 May 2026, I made orders arising out of the case management hearing. Those orders substantially modified and vacated the hearing preparation requirements ahead of the hearing listed for 22 to 26 June 2026, in light of the absence of engagement from TNSG. The notations to my orders stated that:

(1)    Dr Clarke undertook to serve (a) by email to TNSG’s Chinese-based legal representatives (to two alternate email addresses) and (b) in hard copy by courier to TNSG’s last known address:

(a)    copies of my orders of 5 May 2026 (in English and Chinese);

(b)    the outline of the applicant’s submissions dated 29 April 2026 (relied on during the case management hearing on 30 April 2026); and

(c)    the affidavit of Sidney En-Ning Kung dated 29 April 2026.

(2)    Dr Clarke undertook to provide copies of the same documents to the Registrar, inviting the Registrar to confirm whether she wished to be heard by the Court.

(3)    On the first day of the hearing listed to commence on 22 June 2026, the Court would hear further submissions from Dr Clarke as to the resolution of the appeal, including whether the matter should be dealt with in the manner set out by Burley J in Hungry Spirit Pty Ltd ATF The Hungry Spirit Trust v Fit n Fast Australia Pty Ltd [2019] FCA 1277 at [3]–[8].

15    In an affidavit affirmed on 19 June 2026, Mr Kung confirmed that, on 6 May 2026, Dr Clarke’s solicitors took the steps set out in my orders of 5 May 2026. Mr Kung deposed that the emails that were sent to TNSG’s Chinese-based legal representatives did not receive a “bounce-back” or similar notification.

16    Mr Kung also deposed that:

(1)    On 5 May 2026, in compliance with my orders, Dr Clarke’s solicitors sent by email to TNSG’s Chinese-based legal representatives (to two alternate email addresses), a letter notifying TNSG of its witnesses required to attend for cross-examination at the final hearing. There was no “bounce-back” or similar notification.

(2)    On 13 May 2026, IP Australia notified Dr Clarke’s solicitors that the Registrar did not wish to appear or to be heard in this matter. IP Australia’s letter in response also indicated that it would provide TNSG by email (at the two alternate email addresses) with copies of the letter sent to the Registrar and IP Australia’s response.

(3)    On 13 May 2026, the courier, DHL, notified Dr Clarke’s solicitors that TNSG’s last known address could not be located. DHL was then directed to attempt delivery at TNSG’s company search address. On 21 May 2026, DHL notified Dr Clarke’s solicitors that no contact person could be reached or located at that address and that the documents could not be delivered or left at that address without a recipient’s signature. Mr Kung then instructed FenXun to arrange for the documents to be sent to TNSG’s last known address and company search address. On 26 May 2026, Mr Kung was informed and believed that the documents were delivered on 22 May 2026 to pick-up stations associated with TNSG’s last known address and company search address. Mr Kung deposed that such delivery is deemed to constitute completed delivery for documents sent via the China Postal Express and Logistics Express Mail Service.

(4)    On 19 May 2026, Dr Clarke’s solicitors emailed my chambers, copied to TNSG’s Chinese-based legal representatives (using the two alternate addresses), indicating that in light of TNSG failing to notify Dr Clarke’s solicitors of any of the applicant’s witnesses required to attend the hearing for cross-examination, the applicant did not intend to make arrangements for those witnesses, including Dr Clarke, to attend the hearing.

(5)    At the time of filing the affidavit, there had not been any communication from TNSG or any of its legal representatives since the notice of ceasing to act was filed.

17    On the morning of the first day of the hearing, there was no appearance by TNSG. I ordered pursuant to r 30.21(1)(b)(i) of the Rules that the proceeding proceed.

reasons why the appeal should be dismissed

18    For the following reasons, I accept Dr Clarke’s submission that, in the circumstances of this case, and consistently with the reasoning of Burley J in Hungry Spirit (and the cases cited by his Honour at [3]–[7]), the appeal should be dismissed unless it is self-evident that the trade mark should not be registered (I will return to the qualifier in the next section of these reasons).

19    First, neither TNSG (as the moving party), nor the Registrar, has appeared at the final hearing. TNSG was represented in August 2025 when the proceeding was set down for final hearing and, therefore, can be taken to be aware of the hearing dates and the consent timetabling orders made to prepare the case for final hearing.

20    Nonetheless, following the filing of the notice of ceasing to act on 24 March 2026 by its previous solicitors, TNSG has not engaged with the proceeding. TNSG has not sought, as required by r 4.05(2) of the Rules, to file a notice of address for service. It has not sought leave to dispense with that requirement or, as a corporation, to proceed without a legal representative. It did not, by 4 May 2026, or any time thereafter, notify the applicant of the witnesses required for cross-examination at the final hearing as contemplated by the Court’s orders of 12 August 2025. And, it did not appear at the final hearing.

21    Furthermore, I accept the evidence of Mr Kung that various attempts have been made to contact TNSG directly and through its Chinese-based legal representatives. Those attempts were, variously, by the delivery of documents to two alternate physical addresses previously identified with TNSG, and by email to its Chinese-based legal representatives at two alternate email addresses. There has been no response.

22    In these circumstances, it is a reasonable inference to draw that, being aware of the consent timetabling orders leading to the hearing, and also of the listed hearing dates, TNSG has decided to abandon its opposition to the registration of the Chinese Mark (including the ground of opposition pursued before, and upheld by, the delegate, and the grounds of opposition set out in the notice of contention).

23    Secondly, the fact that evidence was filed by TNSG does not change the outcome. As Lindgren J said about the analogous appeal provision in s 60(4) of the Patents Act 1990 (Cth), “the only evidence to be taken into consideration is that adduced on that hearing”: Cadbury Schweppes Plc v Effem Foods Pty Ltd [2006] FCA 1267 at [16]. As a matter of general principle, “[b]efore [an affidavit] is read, it is not a person’s evidence”: Oldham v Capgemini Australia Pty Ltd [2015] FCA 1149; 241 FCR 397 at [27] (Mortimer J, as her Honour then was). As a Full Court said in Provide Nominees Pty Ltd v Australian Securities and Investments Commission [2024] FCAFC 25; 301 FCR 569, “evidence led by affidavit is not adduced by merely filing the affidavit, but only by the step of reading it in open court”: at [41] (Lee J, with whom Anderson and McElwaine JJ agreed). See also Manson v Ponninghaus [1911] VLR 239 at 241 (Madden CJ); Justice Alan Robertson, ‘Affidavit Evidence’ [2014] Federal Judicial Scholarship Articles 3.

24    Furthermore, if the deponent of an affidavit fails to attend for cross-examination after a notice is provided pursuant to r 29.09(1) of the Rules, that person’s affidavit may not be used: r 29.09(3). Notice was given to TNSG requiring the deponents of the affidavits filed by TNSG to attend for cross-examination. None of those witnesses attended the final hearing. While the Court can dispense with compliance with r 29.09(3), I agree with Dr Clarke’s submission that there is no reason in this case to do so.

25    In circumstances where the onus lies on TNSG to establish a ground of opposition, no evidence has been adduced to establish any ground. As Perram J said in v2food Pty Ltd v Provectus Algae Pty Ltd [2026] FCA 436 at [6], in the context of the analogous s 60(4) of the Patents Act:

… [Where] there is no evidence before the Court capable of supporting any ground of opposition, the Court cannot uphold the opposition. In that situation, the appropriate course is to allow the appeal and permit the patent application to proceed to grant. 

26    I accept Dr Clarke’s submission that the same approach should be applied in this case.

Is it self-evident that the trade mark should not be registered?

27    I return to consider the qualifier identified by Burley J in Hungry Spirit at [6]. In this respect, I do not consider it necessary to canvass the grounds of opposition set out in TNSG’s notice of contention. They were abandoned before the delegate, and no submissions have been made by TNSG in this Court about their application.

Relevant principles

28    I commence the assessment by recognising the relevant principles for establishing bad faith for the purposes of s 62A of the Act. In DC Comics v Cheqout Pty Ltd [2013] FCA 478; 212 FCR 194 at [62], Bennett J summarised the following principles that had been drawn from relevant United Kingdom authorities by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; 201 FCR 565 at [145]–[166]:

•    Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.

•    Bad faith does not require dishonesty.

•    Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

•    The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.

•    It is difficult to see how a person who applies to register, in his own name, a mark he has previously recognised as the property of a potential overseas principal can be said to be acting in accordance with acceptable standards of commercial behaviour. Combining the mark with the applicant’s own name is no answer to that criticism.

•    The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.

•    All the circumstances surrounding the application to register the mark are relevant.

•    An act of bad faith cannot be cured by an action after the date of application.

See also Deakin University v Macreadie [2026] FCA 481 at [193] (Wheelahan J).

Delegate’s reasons

29    Quoting Twinsectra Ltd v Yardley [2002] UKHL 12; 2 AC 164 at [24]–[26], which was cited in Fry (Dodds-Streeton J) at [147], the delegate approached s 62A of the Act on the basis that the delegate had to be “satisfied, on the balance of probabilities, that [Dr Clarke] knew that [TNSG] owned the [Chinese] Mark at the [filing date]”: at [28]. The delegate noted that there was no declaration by Dr Clarke in evidence and, accordingly, the question of the applicant’s state of mind had to be deduced from the evidence before the delegate. The delegate then referred to TNSG’s submissions that:

(1)    Video footage from 2016 and 2019 showed Dr Clarke using the Chinese Mark when addressing or referring to TNSG. It was submitted by TNSG that this evidence contradicted Dr Clarke’s submission that the Chinese Mark had been used as the “Chinese version” of the CHILDLIFE Mark and, if that were the understanding between the parties or Dr Clarke’s genuine belief, there would be no reason for Dr Clarke to be addressing or referring to TNSG in that way.

(2)    Purchase orders using the Chinese Mark had been sent by TNSG. Those purchase orders identified TNSG using the Chinese Mark since 2012 (or earlier). It was submitted that the position of the Chinese Mark directly above the full company name unambiguously conveyed that it was intended to serve as an identifier of TNSG.

30    The delegate found TNSG’s evidence and submissions persuasive and, on that basis, was satisfied on the balance of probabilities that Dr Clarke was aware that TNSG “was the owner of the [Chinese] Mark at the time he filed the application to register the trade mark in Australia, and that this was shortly after the termination of the distribution agreement between the parties” (the distribution agreements will be discussed further below). The delegate was also satisfied that, “in light of this knowledge, the decision to apply for registration of the [Chinese] Mark in Australia would be regarded as in bad faith by persons adopting proper standards” and that, therefore, TNSG had established the ground of opposition under s 62A of the Act.

31    As counsel for Dr Clarke submitted before me on appeal, these observations involve three findings: first, that TNSG is the owner of the Chinese Mark; secondly, that the applicant was aware of that fact; and, thirdly, that Dr Clarke’s application to register the Chinese Mark was done in bad faith.

32    As indicated earlier in these reasons, the Court undertakes a hearing de novo on appeal; it does not review the correctness of the delegate’s decision. Accordingly, I express no view about the delegate’s conclusion reached on the basis of the evidence before him.

33    However, I will consider the evidence adduced by Dr Clarke in this appeal for the purpose of addressing the question of whether it is self-evident that the Chinese Mark should not be registered. That requires me to consider whether it is self-evident on the evidence before me that the Chinese Mark should not be registered because there was bad faith for the purposes of s 62A of the Act.

Evidence in this Court

34    In support of its position, the applicant relied on the following affidavits:

(1)    Affidavit of Murray Colin Clarke dated 5 June 2025;

(2)    Affidavit of Brian Conan Harty dated 5 June 2025;

(3)    Affidavit of Joanna Helena Oud dated 2 June 2025; and

(4)    Affidavit of Professor Lushan Charles Qin dated 5 June 2025.

35    At the hearing, the applicant also tendered an exchange of correspondence comprising three letters between the parties dated 4 and 12 November 2025, and 15 December 2025.

36    In support of the submission that there was no bad faith for the purposes of s 62A of the Act, Dr Clarke relied on four aspects of the above evidence.

Dr Clarke’s evidence

37    First, I was taken to the following parts of Dr Clarke’s affidavit:

(1)    As early as 1996, Dr Clarke commenced developing and formulating nutritional and dietary supplements for children. He founded his company Biozeal, LLC (trading as “ChildLife essentials”) in California for the purposes of the production, distribution, marketing and sales of nutritional and dietary supplements.

(2)    The CHILDLIFE Mark is registered in respect of nutritional supplements in the nature of vitamin, mineral, herbal and homeopathic remedies in class 5 in the United States under registration 2,299,035. This application was filed in Dr Clarke’s name on 30 January 1996 and the CHILDLIFE Mark was registered on 7 December 1999.

(3)    Since that time, Dr Clarke has obtained registration of the CHILDLIFE Mark around the world in multiple jurisdictions, including foreign language versions of CHILDLIFE. On occasion, ChildLife products have been marketed in various foreign language jurisdictions globally by reference to a local language version or translation which corresponds to the CHILDLIFE Mark.

(4)    In Australia, Dr Clarke has been the registered owner of the CHILDLIFE Mark in relation to nutritional supplements since 13 January 2015.

(5)    Dr Clarke took the step of filing the application for registration of the Chinese Mark to protect his intellectual property rights.

(6)    It has always been Dr Clarke’s intention, including at the time the application was filed, to use the Chinese Mark as a Chinese language version of the CHILDLIFE Mark.

Evidence of distribution agreements

38    Secondly, I was taken to distribution agreements annexed to Dr Clarke’s affidavit entered into between Dr Clarke’s company, Biozeal, and TNSG. The first was entered into on 1 February 2013 and operated in relation to mainland China, Hong Kong and Macau. That agreement was superseded by separate distribution agreements (a) for mainland China and (b) for Hong Kong and Macau, each entered into on 1 January 2018. Collectively, I will refer to the three agreements as the distribution agreements.

39    Each of the distribution agreements had the following terms (with the words in parentheses identifying changes introduced in the 2018 agreements, the reference to CHILDLIFE being a reference to Biozeal, and the reference to DISTRIBUTOR being a reference to TNSG):

(1)    “Products” was defined to mean certain products identified in the exhibit to the agreement “provided that products may, at any time and without prior notice, cease to be manufactured; cease to be marketed; [be] change[d] [and/]or be modified by CHILDLIFE [in its sole and absolute discretion]”.

(2)    “Intellectual Property” was defined to include “all company[/CHILDLIFE] [patents,] trademarks, trade names, words, designs, [geographical indications,] copyrights, markings, insignias, slogans, and legends[, trade secrets,] and the various applications therefor and registrations thereof used [for any purpose, including, but not limited to,] on and in connection with the advertising, promotion, sale and[/or] distribution of the Products in English and any translations thereof or other versions of same in languages other than English”.

(3)    The “OBLIGATIONS OF DISTRIBUTOR” included:

(a)     “No Alteration of Products. DISTIBUTOR must not modify, open or repackage any Products supplied to DISTRIBUTOR under this Agreement without CHILDLIFE’s prior written consent, and shall not permit any other party to do so”.

(b)    “Permitted Use of Intellectual Property. DISTRIBUTOR may display and/or use the Intellectual Property solely in connection with the advertising, promotion, sale and distribution of the Products. DISTRIBUTOR’s use of Intellectual Property must be in strict conformity with all applicable laws and regulations [and only within the class and category of the Products. DISTRIBUTOR and/or its Affiliates shall not register or file for registration of any mark or slogan of the Products within any class or category without prior written approval from CHILDLIFE]”.

40    It was submitted that these terms reflect acknowledgments and agreements by TNSG that:

(1)    Biozeal is the source of the Products;

(2)    Biozeal, not TNSG, controls the quality of the Products; and

(3)    TNSG required Biozeal’s permission to use all of the trade marks, markings and other Intellectual Property used on or in connection with the advertising, promotion, sale and distribution of the Products including any translations or other versions of those trade marks in languages other than English.

41    Dr Clarke submitted that those acknowledgements and agreements are inconsistent with any claim by TNSG to be the owner of the trade marks, markings or other Intellectual Property. It was further submitted that, at best, TNSG could claim to have been an authorised user of those marks, which it used by the permission granted and under the quality control exercised by Dr Clarke through Biozeal. That would be consistent, it was said, with the way in which s 8 of the Act differentiates between the mutually exclusive concepts of “owner” and “authorised user” of trade marks. That definitional section relevantly provides:

8  Definitions of authorised user and authorised use

(1)     A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

(2)     The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

(3)     If the owner of a trade mark exercises quality control over goods or services:

(a) dealt with or provided in the course of trade by another person; and

(b) in relation to which the trade mark is used;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

…

Evidence of TNSG’s websites

42    Thirdly, I was taken to various TNSG websites annexed to the affidavits of Ms Oud and Professor Qin that were said by Dr Clarke to be operational during the terms of the distribution agreements. These historical websites had been retrieved by Ms Oud, a solicitor for Dr Clarke, using “Wayback Machine”. In letters exchanged in November and December 2025, the parties agreed that they would not take any objection to the admissibility on hearsay grounds of the materials retrieved using “Wayback Machine”.

43    It was submitted that, on each of these websites, TNSG used the Chinese Mark to refer to Biozeal and Dr Clarke’s English language mark, CHILDLIFE. Dr Clarke relied upon the expert evidence of Professor Qin who provided English translations of the Chinese text on TNSG’s websites.

44    Professor Qin’s affidavit states that his experience includes providing advisory services to commercial businesses in relation to entry into the Chinese market, including the creation of appropriate brand names and logos. He has extensive experience assisting companies with the creation of Chinese brands to correspond to their English brands, including through transliteration, translation, and hybrid sound and meaning translations. He has provided services to businesses in various sectors, including the health sector (such as medical research, pharmaceuticals, nutritional products for children, pre-natal products and skincare). Among his qualifications, he is a National Accreditation Authority for Translators and Interpreters level 5 certified conference senior interpreter and professional translator. He was the first Australian Chinese interpreter to be accepted into the International Association of Conference Interpreters, which is said to be the highest qualification for interpreters in the world. In the absence of any challenge, and for the purposes of addressing the question in this section of the reasons, I am prepared to accept that Professor Qin has specialised knowledge based on his training, study or experience and that the opinions he has expressed in his affidavit are wholly or substantially based on that knowledge: Evidence Act 1995 (Cth) s 79(1).

45    As a starting proposition, Professor Qin’s view was that “the clearest translation of the whole term” represented by the Chinese Mark “would be ‘Childhood Time/s’ or simply ‘Childhood’”. He also stated the opinion that the Chinese Mark and CHILDLIFE have commonality and overlapping meanings.

46    He provided interpretations of the Chinese text on the TNSG web pages. It is enough to note that, in translating these documents, Professor Qin translated the Chinese Mark to read “CHILDLIFE” because when they appeared next to or in close proximity to each other in the documents, it appeared that the Chinese and English words or marks were intended to correspond. In those circumstances, Professor Qin expressed the view that “CHILDLIFE” was the appropriate translation for the Chinese Mark.

47    It is not necessary to reproduce the relevant webpage passages in their original and translated forms. The following examples of translations of extracts from the respondent’s webpages will suffice (emphasis in original):

(1)    “ChildLife was founded by the renowned American paediatrician Dr. Murray Clarke”;

(2)    “To help more children benefit from his research, Dr. Clarke summarised nearly 30 years of paediatric nutrition studies and over 20 years of clinical experience to establish the ChildLife brand”;

(3)    “ChildLife has gained widespread recognition and recommendation from paediatricians across the United States. For over a decade, ChildLife has supported the healthy growth of three million American children and has earned the trust of mothers and the love of children in Europe, South Korea, Singapore, Japan, and Taiwan. ChildLife has become a globally leading brand in children’s nutrition!”;

(4)    “Now, ChildLife has officially entered China, bringing health and happiness to Chinese children and laying the foundation for a lifetime of well-being!”;

(5)    “In 2000, ChildLife Nutrition Company was established in Los Angeles, USA, and launched the world’s first complete range of nutritional supplements specifically designed for infants and young children. ChildLife ChildLife quickly gained global popularity, earning widespread recognition from mothers and bringing health to millions of babies” (the duplication of ChildLife in this and other passages was explained on the basis that the English word was used immediately adjacent to the Chinese Mark in Chinese text);

(6)    “In 2010, ChildLife officially entered China, bringing healthy and joyful childhood experiences to Chinese babies and laying the foundation for a lifetime of health!”;

(7)    “Tong nian shi guang is the Chinese translation of the U.S. brand ChildLife”;

(8)    “Childlife childLife is a globally leading infant and toddler nutrition brand developed by the renowned American paediatrician Dr. Murray and his team”; and

(9)    “Our store is the sole authorised general distributor for the China region by Childlife USA”.

48    It was submitted that each use of ChildLife in Professor Qin’s English translations of the respondent’s webpages corresponded with the use of the Chinese Mark in the Chinese text. It was submitted that these statements on TNSG’s own websites confirmed that TNSG itself considered that the Chinese Mark is a “translation” or “version” of CHILDLIFE in a language other than English within the meaning of the distribution agreements.

Professor Qin’s evidence

49    Fourthly, in addition to relying on Professor Qin’s translations of the Chinese webpage text, Dr Clarke also drew attention to Professor Qin’s evidence that, on the basis of the materials he reviewed, the Chinese Mark and the CHILDLIFE Mark were used and presented in a manner which indicated that they were corresponding Chinese and English versions of the same brand.

50    It was submitted that the acceptance of such evidence precludes any conclusion that TNSG is the owner of the Chinese Mark.

Consideration

51    On the basis of the evidence before me, I am comfortably satisfied that it is not self-evident that the Chinese Mark should not be registered because there was bad faith for the purposes of s 62A of the Act. Because TNSG has not appeared to press the opposition, and TNSG’s evidence has not been read, there is no basis to conclude that Dr Clarke was actuated by bad faith when filing the application for registration. That is particularly the case because bad faith is a serious allegation, and the more serious the allegation, the more cogent the evidence must be to support it: DC Comics at [62].

52    As has been explained, the jurisdiction of this Court on appeal is not to determine whether the delegate’s assessment was incorrect. However, I make the following observation. I have had the benefit of evidence that was not before the delegate. First, the delegate did not have a statement of Dr Clarke’s subjective intention and could only infer a state of mind from the evidence presented to him. I had before me Dr Clarke’s affidavit in which he seeks to explain the reason for the application for registration of the Chinese Mark in Australia and which states that it has always been his (subjective) intention to use the Chinese Mark as the Chinese language version of the CHILDLIFE Mark.

53    Secondly, I was told at the hearing that the delegate did not have the benefit of Professor Qin’s evidence (a) about the English translation of the Chinese text on TNSG’s websites (I understood that, while the delegate had at least one page of the website before him along with a translation of it, the translation was not that of Professor Qin); and (b) that the Chinese Mark and the CHILDLIFE Mark were used and presented in a manner which indicates they are corresponding Chinese and English versions of the same brand.

54    I was invited by Dr Clarke to make positive findings to the effect that he did not register the application in bad faith. In light of the delegate’s finding, it is understandable that Dr Clarke would be eager to have such positive findings made by the Court. However, for the following reasons, I decline to do so.

55    First, this proceeding is not a challenge to the delegate’s finding. Secondly, because I have concluded that TNSG has abandoned its s 62A opposition, there is no basis for me to consider whether that ground has been established. Thirdly, the orders I will make will include an order that the delegate’s decision be set aside. As such, it will have no ongoing operation even though it remains publicly accessible. Fourthly, while senior counsel for Dr Clarke submitted that there would be utility in my findings in the event that TNSG sought to have the Court’s order set aside under r 30.21(2)(a) of the Rules, any findings I would make would be based only on uncontested evidence adduced by Dr Clarke. The postulated utility would thereby be considerably diminished.

56    However, what can be said is that because TNSG has not appeared to press the opposition, and TNSG’s evidence has not been read, there is no basis for me to make a finding that TNSG is the owner of the Chinese Mark or a finding that Dr Clarke was aware that TNSG was the owner of the Chinese Mark when applying for registration. Consequently, there is no basis for me to make a finding that Dr Clarke acted in bad faith.

disposition

57    Having reached these conclusions, the appeal must be allowed, the decision of the delegate must be set aside and TNSG’s opposition must be dismissed. Given that there is no opposition to the registration, the Registrar under s 68(1) of the Act must register the Chinese Mark that has been accepted for registration, and an order will be made in those terms.

58    Dr Clarke seeks the costs of the opposition proceeding before the delegate and the costs of this appeal. The delegate had made an order awarding costs against Dr Clarke under s 221 of the Act: at [34].

59    The Court has the power pursuant to s 197 of the Act to vary the delegate’s costs order: UCP Gen Pharma AG v Mesoblast, Inc [2012] FCA 500 at [3] (Jessup J); Thomas v Monsoon Group Australia Pty Ltd (Costs) [2025] FCA 1106 at [9] (Hespe J); Somers Enterprises Australia Pty Ltd v Basefun Pty Ltd (No 2) [2025] FCA 418 at [11] (Bennett J) and NCL Corporation Ltd v Norwegian Brand Ltd [2025] FCA 1613 at [55] (Stellios J). That section provides:

197 Powers of Federal Court and Federal Circuit and Family Court of Australia (Division 2) on hearing an appeal

On hearing an appeal against a decision or direction of the Registrar, the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) may do any one or more of the following:

(a)       admit evidence orally, or on affidavit or otherwise;

(b)       permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the Registrar;

(c)       order an issue of fact to be tried as it directs;

(d)     affirm, reverse or vary the Registrar’s decision or direction;

(e)        give any judgment, or make any order, that, in all the circumstances, it thinks fit;

(f)        order a party to pay costs to another party.

60    In Mesoblast, Jessup J explained the approach to be applied to an exercise of discretion under s 197 of the Act in relation to the costs before the delegate (at [3]):

In the exercise of that power, the question must be whether, in the light of the [Court’s] judgment … it can now be said that the applicant ought to have succeeded before the delegate, such that it would have been awarded its costs – and the respondent would not have been awarded its costs – on the conventional basis.

61    Given that the Chinese Mark will proceed to registration, I do not consider that it is appropriate for Dr Clarke to bear the costs order made by the delegate. Accordingly, I will set aside that costs order.

62    However, for the reasons that I gave in NCL at [57]–[60], I do not consider that it is appropriate to make a costs order in Dr Clarke’s favour in relation to the opposition proceeding before the delegate. As senior counsel for Dr Clarke accepted during oral submissions, the evidence before the delegate was not as fulsome as the evidence before the Court. In particular, as indicated earlier in these reasons, I had the benefit of Dr Clarke’s evidence of his subjective intention and also the evidence of Professor Qin.

63    In the proceeding in this Court, costs should follow the event. The applicant seeks costs on a party-party basis up to and including 1 April 2026 and, thereafter, on an indemnity basis. It was submitted that an inference should be drawn that TNSG had decided to abandon its opposition by the time that the notice of ceasing to act was filed on 24 March 2026 and that, at that time, acting reasonably and consistently with s 37M of the Federal Court of Australia Act 1976 (Cth), TNSG should have notified the Court that it no longer pressed its opposition. That would have resulted in the resolution of the proceeding under s 68(1)(b)(ii) of the Act. Instead, it was submitted, TNSG has failed to respond to any correspondence from Dr Clarke and has effectively ignored the proceeding and its onus for three months. The date of 1 April 2026 corresponds with the last day of the five-day window permitted under r 4.05(2) of the Rules to file a notice of acting.

64    I accept these submissions. In Jones v Treasury Wine Estates Limited (No 2) [2017] FCAFC 116, Jagot, Yates and Murphy JJ set out the accepted principles for the award of costs on an indemnity basis (at [3]–[5]):

The Court has a broad power to award costs in proceedings, including indemnity costs, under s 43 of the Federal Court of Australia Act 1976 (Cth) (the Act). In exercising the discretion to award costs, s 37N(4) of the Act requires the Court to take account of any failure by a party to comply with the overarching purpose of the civil procedure provisions, to facilitate the just resolution of disputes according to law as quickly, inexpensively and efficiently as possible: see s 37M(1).

Usually the Court will award costs to the successful party on a party/party basis, but where the circumstances of the case warrant a departure from the usual course the Court may order indemnity costs. The principles relevant to an award of indemnity costs are well-established. There can be no exhaustive list of the circumstances that may warrant the exercise of the discretion.

In broad terms an order for indemnity costs requires that some special or unusual feature arises: Cirillo v Consolidated Press Property Ltd (formerly known as Citicorp Australia Ltd) (No 2) [2007] FCA 179 at [3] (Finn J). Indemnity costs are not punitive but are designed for “compensating a party fully for costs incurred, as a normal costs order could not be expected to do, when the Court takes the view that it was unreasonable for the party against whom the order is made to have subjected the innocent party to the expenditure of costs”: Hamod v New South Wales (2002) 188 ALR 659 at 665 (Gray J, with whom Carr and Goldberg JJ agreed). Such circumstances may include where allegations are made “which ought never to have been made”, where the case is “unduly prolonged by groundless contentions” (Ragata Developments Pty Ltd v Westpac Banking Corporation [1993] FCA 115 at [15], [17] (Davies J)), and where “the applicant, properly advised, should have known that he had no chance of success” (Fountain Selected Meats (Sales) Pty Ltd v International Produce Merchants Pty Ltd (1988) 81 ALR 397 at 401 (Woodward J)) or “persists in what should on proper consideration be seen to be a hopeless case” (J-Corp Pty Ltd v Australian Builders Labourers Federated Union of Workers (WA Branch) (No 2) (1993) 46 IR 301 at 303 (French J)).

65    I accept that the circumstances in this case are sufficiently unusual to warrant an award of costs after 1 April 2026 on an indemnity basis. TNSG was active in the preparatory steps in this proceeding at least until December 2025 when a Court Book was provided to the Court and the parties agreed that no hearsay objection would be taken to the Way Back material. It was aware of the listed hearing dates and the remainder of the timetable. It should have been aware that Dr Clarke was incurring costs in preparation for the trial and that those costs would have been avoided if TNSG had formally abandoned its opposition. If it had withdrawn its opposition, the Registrar would have been under an obligation pursuant to s 68(1)(b)(ii) to register the Chinese Mark.

66    In my view, the failure to take steps to bring the proceeding to an end was an unreasonable course of action and justifies the award of indemnity costs to compensate Dr Clarke fully for the costs incurred from the end of the five-day period permitted for a change of solicitor.

67    Finally, on the day of the hearing on 22 June 2026, I vacated the remainder of the hearing days on 23, 24, 25 and 26 June and 20 July 2026. Those orders were formalised in chambers on 22 June 2026.

Associate:

Dated:    1 July 2026