When a business seeks to protect its brand in Australia, the law assumes a basic starting point, i.e. the applicant must actually intend to use that mark. It sounds simple, but a recent decision from the Federal Court of Australia, NCL Corporation Ltd v Norwegian Brand Ltd [2025] FCA 1613, serves as a stark reminder that this intention must be real, definite, and present. It cannot be a vague “maybe” or a speculative plan to enter the market years down the track.
The case involved a clash between two major entities using the name “Norwegian” i.e. one a well-known cruise line and the other a prominent low-cost airline. While the dispute touched on several complex areas of intellectual property, the final ruling hinged on a single, fundamental ground, i.e. the lack of a genuine intent to use the trade marks in Australia.
The Background
The appellant, NCL Corporation Ltd, is the operator of Norwegian Cruise Line, a global company that has been active in Australia for many years. On the other side was Norwegian Brand Ltd, part of the corporate group operating Norwegian Air.
The dispute began when Norwegian Brand Ltd filed two international registrations designating Australia, under the Madrid Protocol. These applications sought to protect two marks, i.e. one featuring a Boeing aircraft with a distinctive red nose and a portrait on the tail, and another featuring the text “norwegian.com” accompanied by an airplane graphic. Both marks were intended to cover a massive list of goods and services, ranging from airline transport to bar and café services.
Initially, a delegate of the Registrar of Trade Marks allowed the marks to proceed, finding that NCL had not established a valid ground of opposition. NCL appealed this decision to the Federal Court, arguing that the airline had no real intent to use these marks in Australia at the time they filed the applications.
The Legal Test for “Intent to Use”
In Australia, Section 59 of the Trade Marks Act 1995 provides that the registration of a mark can be opposed if the applicant does not intend to use it, or authorize its use, in relation to the specified goods and services. Justice Stellios, presiding over the appeal, took a de novo approach, meaning he heard the case fresh on its merits, regardless of what had happened before the delegate.
The court reiterated several key principles. While filing an application is generally seen as prima facie evidence of an intent to use a mark, that presumption can be challenged. An opponent doesn’t have to prove the applicant had a “fake intent”, but they just need to show a lack of a positive, real, and definite intent. A general intention to use a mark at some future, unascertained time is not enough. Nor is a contingent possibility that the business might one day consider using the mark.
Evidence of a Vague Plan
The evidence presented in this case was particularly vague. NCL pointed to a declaration from the Chairman of Norwegian Brand Ltd, which stated that the company had “commenced considering” expanding its flight routes to Australia in late 2016. However, an article from “The Executive Traveller” article (dated 27 September 2017) published around the same time painted a different picture. It described the airline’s plans as “tentative” and noted that Australia was merely part of an ambit laundry list of 155 cities the airline might eventually serve.
That said, a spokesperson for the airline was quoted saying there were “no immediate plans to serve Australia at this stage”. Justice Stellios found that these statements did not support a “present” or “positive” intent to use. Instead, they suggested that any plan to enter the Australian market was indeterminate or, at best, a future possibility that depended on many other factors falling into place.
Further complicating matters was the airline’s total absence from the Australian market in the years following the application. Evidence from travel industry experts and online search results showed that in the seven years since the priority date, the airline had not operated a single flight to Australia, nor had it advertised its services to Australian consumers.
The shift in onus of proof
One of the most significant aspects of this ruling is how the burden of proof shifted. Once NCL established a prima facie case, that is, enough evidence to raise serious doubts about the airline’s intention, it was up to Norwegian Brand Ltd to prove that the intention actually existed.
However, Norwegian Brand Ltd did not participate in the appeal. They did not put on evidence to counter NCL’s claims, and they did not appear at the hearing. Justice Stellios noted that while a court must be careful when inferring a lack of intention simply from a lack of use, the circumstances here went far beyond that. The combination of the airline’s own “tentative” public statements, the lack of any business presence over seven years, and the failure to participate in the court proceedings led to the conclusion that the requisite intention was missing.
Broad Claims and Regulatory Hurdles
The court also looked at the sheer scope of the applications. The airline had applied for a vast array of services, including those that would require specific Australian regulatory approvals or the establishment of a local entity, such as operating bars or cafés. There was no evidence that the airline had even made inquiries into these requirements.
This serves as a warning for brand owners who try to include a wide scope of services by including every possible category of goods and services in their trade mark applications without a concrete plan to exploit them. If an application is challenged, the inability to show a real intent to use the mark across that broad spectrum can prove detrimental.
The Court’s Final Orders
As NCL succeeded on the threshold issue of “intent to use” under Section 59, the court found it unnecessary to even consider the other grounds of opposition, such as whether the marks were too similar to NCL’s existing registrations.
The appeal was allowed, the delegate’s decision was set aside, and protection for the marks was refused in Australia. That said, the court also set aside the costs order made against NCL in the original proceedings before the delegate. However, because NCL had won on a ground it had originally abandoned during the registry stage, the court decided that each party should bear its own costs for that initial phase.
Key Lessons for Brand Owners
The Norwegian Brand decision offers several practical takeaways for businesses looking to protect their intellectual property in Australia.
Firstly, intention must be “real and definite”. One cannot treat the trade marks office as a way to reserve a name for a hypothetical future. If one applies for a mark, they must have a settled purpose to use it.
Secondly, document your plans. If the entry into the Australian market is in its early stages, keep records of internal board papers, marketing strategies, or regulatory inquiries. These can be vital evidence if your intention is ever challenged.
Thirdly, be wary of applications with very wide scope of services. Avoid including goods and services that are far removed from your actual business operations. A broad list of services that you have no capacity or plan to provide can make your stated intention look speculative.
Fourthly, the risks of non-participation. If the trade mark is opposed and the matter goes to court, failing to participate is almost a guaranteed way to lose. The court can and will draw adverse inferences from your silence.
Lastly, post-filing conduct is important. While the relevant date for intention is the date of filing, the actions (or lack thereof) after filing are highly relevant. A long period of total inactivity can be used to show that one never really intended to use the mark in the first place.
Conclusion
The Federal Court’s decision in this case reinforces the integrity of the Australian trade mark system. It ensures that the register is not cluttered with marks held by parties who have no genuine interest in using them. For international companies, it is a reminder that Australia is a “use-based” jurisdiction. While the Madrid Protocol makes it easier to apply for protection across borders, it does not exempt applicants from the fundamental requirement to have a sincere and present plan to trade under that brand on Australian soil.
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