Bad faith revisited: when the filing history becomes the evidence

Earlier this year, I wrote about the growing role of bad faith in trade mark disputes and how technology is changing the landscape. It is now much easier to identify an overseas brand, check whether it is protected in Australia and file first. At the same time, that same technology makes filing patterns much easier to uncover and challenge.

A few recent Australian Trade Marks Office decisions suggest we are starting to see that play out in practice.

In Glittery Craft Limited v Xiang Chen [2026] ATMO 8, followed more recently by Hong Chen v chenfei yao [2026] ATMO 131 and Shenzhen Ailile Network Technology Co., Ltd v Xiaodan Zhang [2026] ATMO 138, the Delegate was prepared to look beyond the particular trade mark application being opposed and consider the applicant’s wider filing history when assessing bad faith.

The law has not changed. What is interesting is the way the evidence is being put together.

Under s 62A of the Trade Marks Act 1995 (Cth), an application may be opposed on the basis that it was made in bad faith. Direct evidence of an improper motive is rare. In most cases, the real work is done by inference.

These decisions show that the trade mark register itself can provide part of that evidence.

1. PEASUR and SCAIKTIG

Hong Chen v chenfei yao concerned PEASUR, an invented trade mark used for solar and LED lighting products.

Hong Chen had used and registered PEASUR overseas and had sold PEASUR products online, including through channels accessible to Australian consumers. In January 2025, chenfei yao applied to register PEASUR in Australia for Class 11 goods, including lighting products.

An identical invented trade mark for the same type of goods already raises an obvious question. The more interesting evidence, however, concerned yao’s wider Australian filing history.

By the time of the hearing, yao had filed 43 Australian trade mark applications. The opponent identified a number of other distinctive trade marks within that portfolio which corresponded with trade marks already owned and used by unrelated overseas traders in the same product areas.

The applicant filed no evidence explaining the position. The Delegate upheld the opposition under s 62A and refused registration.

Only days later, a very similar issue arose in Shenzhen Ailile Network Technology Co., Ltd v Xiaodan Zhang.

That case concerned SCAIKTIG, another invented trade mark, used in relation to scissors and cutting products. Shenzhen Ailile had sold SCAIKTIG branded products through Amazon Australia since 2021 and held overseas rights in the trade mark.

In March 2025, Zhang applied to register SCAIKTIG in Australia in Class 8.

Again, the opponent looked further than the single application.

Zhang had filed 47 Australian trade mark applications during 2024 and 2025. Evidence was put before the Delegate showing that a number of those applications corresponded with distinctive trade marks already being used by unrelated overseas businesses for the same or similar goods.

Again, there was no evidence from the applicant explaining the filing pattern.

Again, the opposition succeeded under s 62A.

The important point is not the number of applications. Filing 43 or 47 trade marks is not, without more, suspicious.

It was the pattern within those filings that mattered.

2. This is becoming a recognisable line of cases

The decisions follow Glittery Craft Limited v Xiang Chen [2026] ATMO 8 earlier this year.

That opposition concerned GLITTERY GARDEN. The opponent had used the trade mark overseas since 2019 and through Amazon in Australia from 2023. In finding bad faith, the Delegate again considered the applicant’s broader filing behaviour and the lack of evidence explaining it.

Three Trade Marks Office decisions do not establish a new legal test. They do, however, give us a useful indication of how evidence of bad faith may be developed.

Bad faith can sometimes be treated as a secondary ground in an opposition. We look first at prior Australian use, reputation, ownership and earlier registered rights, then consider s 62A if the circumstances appear particularly troubling.

These decisions suggest there is value in looking at the problem from the other direction as well. If a client discovers an Australian application for its distinctive overseas brand, it may not be enough to search the trade mark.

Search the applicant too.

3. What the wider filing history can tell us

A proper review of the applicant’s portfolio can reveal whether the disputed application is an isolated event or part of something broader.

That means looking at more than the number of applications filed.

Are the trade marks descriptive or invented?
Do they correspond with existing overseas brands?
Who was using those trade marks before the Australian filing?
Are the goods the same or closely related?
Is there any genuine commercial connection between the applicant and those overseas businesses?
Were the products already being sold through Amazon, eBay, Temu, AliExpress or another marketplace?

One overlap may have a perfectly sensible explanation. A series of unusual invented trade marks, already being used by unrelated businesses for corresponding goods, may be much harder to explain.

This can be particularly important where the overseas brand owner does not have the clean Australian rights position we would ideally like.

Perhaps Australian sales are relatively recent. Perhaps there is not enough evidence of reputation to make s 60 comfortable. Perhaps the overseas owner simply did not file in Australia early enough. None of those matters establishes bad faith.

But nor does the absence of an earlier Australian registration mean the circumstances of the later filing are irrelevant. Section 62A is asking a different question.

4. Why this matters more now

This also comes back to the broader issue I raised in my earlier article.

The traditional idea of an overseas brand later ‘entering Australia’ is becoming increasingly artificial.

A business does not need an Australian subsidiary, warehouse or distributor before Australians start buying its products. A product can develop Australian customers through an international marketplace well before the owner has treated Australia as a formal expansion market.

At the same time, overseas brands have never been easier to identify.

The Australian IP Report 2026 records continued growth in trade mark filings, with 97,345 applications filed in 2025, up 13.3% on the previous year. IP Australia has also highlighted the role of ecommerce and marketplace requirements in influencing filing behaviour.

Most of that activity is entirely legitimate. But the commercial environment has changed.

Technology makes international brand expansion easier. It also makes it easier to identify a successful overseas trade mark that has not yet been protected in Australia.

The other side of that coin is that it is now much easier to investigate whether the person who filed your client’s trade mark has engaged in similar behaviour before.

5. What should brand owners do?

The obvious advice remains to file early.

If Australian consumers can already buy the product online, Australia may no longer belong in the ‘we will deal with it later’ category.

But once a problematic application has been identified, the investigation should be broader than the disputed trade mark alone.

The applicant’s trade mark portfolio may be relevant evidence. So may marketplace listings, archived websites, overseas trade mark registrations, filing dates and the chronology of product launches.

Together, that material may help answer a question that can otherwise be difficult to prove directly, why did this applicant choose this particular trade mark?

There is also a corresponding point for applicants.

There is nothing wrong with maintaining a large trade mark portfolio. But businesses filing substantial numbers of unrelated or invented trade marks should be able to explain where those trade marks came from.

If they were developed internally, acquired legitimately or created for genuine future products, there will usually be some record of that history.

That evidence may become important if the applicant’s wider filing behaviour is later put before the Trade Marks Office.

6. Where this leaves bad faith

When I wrote about bad faith earlier this year, one of the themes was that trade mark systems are increasingly having to distinguish between genuine brand protection and applications being used for some other strategic purpose.

These recent Australian decisions do not change the legal test. What they do show is a practical way of proving the case.

Sometimes the application being opposed is only part of the story. The rest may already be sitting on the register.