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No boarding pass to Australian Trade Marks Register for Norwegian Brand who fail to show intention to use

This decision (NCL Corporation Ltd v Norwegian Brand Ltd [2025] FCA 1613) is a good illustration of the s 59 ground of opposition which is seldom a successful ground of opposition. 

Following an unsuccessful opposition before the Registrar’s delegate, Stellios J allowed NCL’s appeal and refused protection for two IRDAs filed by Norwegian Brand, largely because the evidence supporting intention to use was thin, and critically, Norwegian Brand did not participate in the appeal. The de novo nature of the appeal process played a decisive role in allowing NCL to augment its evidence.

Key Points

1. Consistent with established law on s 59

The Court applied the orthodox principles: intention is assessed at the filing date; filing is prima facie evidence of intention; and the opponent bears the onus, but this can shift once a prima facie case of no intention is established. Stellios J reaffirmed that the inquiry requires a “real and definite” intention to use, not vague possibilities or long‑range ambitions.

2. A rare example of opposition under s 59 succeeding

Oppositions under s 59 remain notoriously difficult, especially given the presumption arising from filing. While the volume of successful non-use removal actions make it clear that many trade mark owners do not use their trade marks for some or all of their registered goods and services, asserting lack of intention to use in an opposition is tricky and the evidence and circumstances must be compelling. This case shows the rare conditions under which the ground can be made out:

• Norwegian Brand’s own material described only tentative, long‑term possibilities for Australian operations.
• Evidence of any concrete steps toward use was absent.
• Seven years had passed with no activity in Australia (evidence from after the filing date may be considered to evidence intention at filing).
• The breadth of the goods and services claimed reinforced the implausibility of any present intention to use.

These factors together were enough to shift the evidential burden from the opponent NCL and Norwegian Brand did not overcome it.

3. Non-participation proved fatal

Norwegian Brand neither appeared nor filed evidence on appeal. Once NCL established a prima facie case, the absence of any response left the Court with no basis beyond the mere filing of the application to infer a real and definite intention to use. This silence mattered, and particularly in a de novo appeal, the Court is concerned with actual evidence before it, not what might have been before the delegate.

4. The de novo appeal structure materially benefited the appellant

Because the appeal proceeded afresh, NCL could revive its s 59 case even though it hadn’t been pressed before the delegate. The Court heard the matter on a clean slate, considered new evidence, and assessed intention solely by reference to the material before it, unrestrained by the delegate’s earlier reasoning. This procedural feature significantly assisted NCL in securing reversal.

Outcome

• Appeal allowed.
• Registration refused for both IRDAs.
• Delegate’s costs order set aside, but no costs awarded to NCL for the earlier stage.
• Norwegian Brand was ordered to pay NCL’s costs of the appeal.

Commentary

The decision shows applicants that the fact of filing alone may not protect an application without use or a demonstrable intention to use their mark in Australia at the filing date. For opponents, it’s a reminder that s 59 can be effective where it can be shown that there was no genuine intention to use, such as with reference to evidence of industry-specific factors (e.g. regulation, lack of capacity), or statements which reveal only high‑level corporate aspirations and no tangible commercial plan.

For practitioners, the case is also a strategic lesson: the Australian de novo appeal route may provide meaningful leverage. If key grounds were missed or underdeveloped before the delegate, the appeal may provide a valuable second run — particularly when the other side is disengaged.

Jesse Strafford – December 2025

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