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Archives for October 2025

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First Use vs First File: Vmaisi Trade Mark Squatter Knocked Out

The name Vmaisi might not ring a bell — but in this opposition it was the difference between owning a brand and losing it.

Chengbo Wang, founder of Ningbo Vmaisi Import & Export Co Ltd, knocked out Xiang Chen’s attempt to register Vmaisi in class 20 (non-metal hardware, locks, baby seats).

👉 The battleground? Section 58 of the Trade Marks Act 1995 — ownership.

Wang came armed with real-world evidence: Shopify orders, Amazon listings, and Australian customers clicking “buy now.”

Chen, meanwhile, turned up empty-handed — and with a history of filing other people’s brands without doing much else.  The Delegate wasn’t impressed, calling it the classic playbook of a bad-faith filer.

🔑 Why it matters

  • First use beats first file — ownership flows from actual use, not just getting in line at the filing counter.

  • Global clicks count — Amazon, Shopify and website screenshots can prove Australian use.

  • Conduct matters — a pattern of opportunistic filings can tip the scales against you.

💡 IP Mojo Take

Trade mark squatting isn’t just an “overseas problem” — it’s alive and well here too.

And remember: Australia’s trade mark register is a register of ownership, not ownership by registration. Only the true owner can register a mark. Filing doesn’t magically make you one.

For brand owners:

  • Keep an eye on the register — if you snooze, you lose.

  • Move fast if someone else files your brand.

  • For e-commerce businesses: your digital receipts, analytics, and customer data are gold when proving ownership.

In today’s digital marketplace, your best defence may just be sitting in your Shopify dashboard.

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Reckitt’s Red Powerball Fizzles: Shape Marks for Dishwashing Tablets Refused

If you’ve ever stacked a dishwasher, you’ll know the iconic Finish red “powerball” capsule. Reckitt tried to lock down that look with two shape/colour trade mark applications — but Henkel (maker of rival dishwashing products) opposed.

In Henkel AG & Co. KGaA v Reckitt Benckiser Finish B.V. [2025] ATMO 198, the Delegate refused both marks under s 41 of the Trade Marks Act 1995 (Cth).

Reckitt argued its tablet shapes and colours (blue, white and red, with a central “ball”) had become distinctive through use. But Henkel countered that capsule-style tablets are industry standard: divided compartments, bright colours, and glossy “gel” effects all signal product function or quality.

Evidence showed competing brands used similar designs, making these visual features common to the trade.

The Delegate agreed. While Reckitt’s advertising highlighted the “powerball” as a badge of origin, the overall shapes and colour combinations weren’t inherently adapted to distinguish, and the use evidence wasn’t enough to carry the day.

👉 Result: registration refused.

Why it matters

  • Shape and colour marks are tough: Features that are functional or common in an industry rarely meet the distinctiveness threshold.

  • Marketing ≠ distinctiveness: Advertising a red ball as your “thing” doesn’t prove consumers see it as a trade mark, especially if competitors use similar visual cues.

  • Evidence must be targeted: Courts and registries want clear, dated, and widespread evidence showing the public perceives the design as a brand, not just decoration.

For brand owners, the message is clear: don’t rely on shape/colour marks to protect your product design.

Instead, combine registered trade marks, design rights, and trade dress enforcement for a stronger strategy.