NCL Corporation Ltd v Norwegian Brand Ltd

This dispute was about whether two international trade mark registrations owned by Norwegian Brand Ltd should receive protection in Australia. The applications were made through the Madrid Protocol system. That system allows a trade mark owner with an international registration to seek protection in countries such as Australia without filing a separate national application in each country from scratch. But once Australia is designated, Australian opposition rules still apply.

NCL Corporation Ltd, the operator of Norwegian Cruise Line, opposed the Australian extension of protection. NCL already owned an Australian trade mark and challenged Norwegian Brand's marks before the Trade Marks Office. The delegate rejected NCL's opposition and allowed protection to be extended to Australia. NCL then appealed to the Federal Court.

The commercial setting mattered. NCL operated a cruise business under the Norwegian Cruise Line brand. Norwegian Brand was part of a corporate group associated with Norwegian Airlines. The Court recorded that Norwegian Brand was part of a group that operated Norwegian Airlines, while corporate material also suggested that commercial airline activities were organised elsewhere in the group and that Norwegian Brand had responsibility for developing and maintaining the group's brand.

That group structure became relevant because s 59(a) is not limited to direct use by the applicant itself. The applicant can also satisfy the section if it intends to authorise use in Australia. But if the applicant is a brand-owning company and another entity is expected to trade, the evidence still needs to show a real and definite plan for that Australian use.

By the time the matter reached the Court, Norwegian Brand did not participate in the appeal, did not comply with timetabling orders and did not appear at the hearing. The Court nevertheless proceeded because it was satisfied that service of the notice of appeal and amended notice of appeal had been properly effected, including service outside Australia under the Federal Court Rules.

That procedural history is important for business readers. This was not a case where both sides fully contested the evidence at the final hearing. NCL put on its evidence. Norwegian Brand did not answer it. That did not automatically hand NCL a win, because NCL still had to prove its case. But once NCL established a prima facie case on lack of intention, the absence of any response became highly significant.

The main legal issue was whether Norwegian Brand had the intention required by s 59(a) of the Trade Marks Act 1995 (Cth) when it filed the international registrations designating Australia. In practical terms, the Court had to decide whether, at the filing date, Norwegian Brand intended to use the marks in Australia, or intended to authorise their use in Australia, for the goods and services covered by the applications.

The Court said the accepted position in the authorities is that the relevant intention is assessed at the filing date. In this case, the filing date and priority date were the same, so there was no practical difference. The Court also confirmed that evidence from after filing can still matter, not because later events change the legal test, but because later conduct may help the Court infer what the applicant's intention really was at the filing date.

The Court summarised the key principles from earlier cases. Filing a trade mark application is prima facie evidence of intention to use. That means filing gives the applicant an initial evidentiary starting point. But it is only a starting point. The required intention must still be present, positive, real and definite. It is not enough to have a general intention to use the mark at some future but unascertained time, a contingent possibility that the business might later consider using it, or an uncertain and indeterminate prospect of expansion.

This distinction matters. Prima facie evidence of intention does not mean the applicant wins unless the opponent proves actual bad faith or proves a complete absence of any commercial thought. It means the filing itself supports an initial inference of intention. But if the surrounding evidence raises real doubt, that inference can be displaced.

The Court also explained the burden of proof. The opponent bears the onus of proving lack of intention, and that can be difficult because it involves proving a negative state of affairs. Courts have recognised that this ground is often hard to establish. However, once the opponent makes out a prima facie case that there was a lack of intention to use, the evidentiary pressure shifts in a practical sense to the applicant to establish that intention. If the applicant has been put on notice that intention is in issue and does not respond, the Court may find that the required intention was absent.

That is the key distinction the case helps clarify. Filing creates prima facie evidence of intention. The opponent must do more than point to non-use alone. But once the opponent assembles evidence that goes beyond mere non-use and suggests only tentative or speculative plans, the applicant may need to answer that case with evidence of a real Australian use plan.

There was also a procedural issue with practical significance. NCL had not pressed the s 59 opposition ground before the delegate, and the delegate had treated it as abandoned. The Court held that this did not stop NCL from relying on s 59(a) on appeal because the appeal was heard de novo, meaning afresh on the merits in the Court's original jurisdiction.

For businesses, that means a court appeal in this area is not always confined to the exact way the case was argued before the Trade Marks Office. The Court can hear the controversy afresh based on the evidence before it.

The Court focused on a relatively small but important body of evidence. One central piece was a declaration from Norwegian Brand's chairman, Christoffer Sundby. He said that the company had commenced considering expanding its flight routes to Australia in November 2016 and had initiated the trade mark registration process for Australia. Standing alone, that might suggest some planning. But the Court looked closely at the actual language used.

The chairman's declaration did not clearly define what was meant by the phrase "my Company". NCL argued that the phrase appeared to refer generally either to Norwegian Air Shuttle ASA and its subsidiaries, including Norwegian Brand, or alternatively to the parent company. That lack of precision mattered because the Court was considering whether Norwegian Brand itself intended to use the marks in Australia or authorise their use here.

The same declaration exhibited an article dated 27 September 2017 from Executive Traveller. The article said Norwegian Air had made tentative plans to commence flying to Australia, but did not expect flights to begin any time soon. It also said the airline had pencilled Sydney and Melbourne onto a large list of possible routes, that the route ambitions significantly exceeded the aircraft available, and that there were no immediate plans to serve Australia at that stage.

The Court treated those statements as important. They did not readily support an inference of a present or positive intention at the time of application to use the marks in Australia or authorise their use. Instead, they tended to support an inference that any intention was only general, contingent or indeterminate. The Court also noted that the article's statement about route ambitions exceeding available aircraft suggested a lack of capacity to exploit the marks, which in turn suggested that any intention to do so was too remote.

NCL also relied on evidence from searches and industry witnesses. A Google search limited to the Norwegian domain did not reveal references to flights to or from Australia. A Google Lens search did not show the image used in one of the marks or planes with the relevant tail image. ASIC company and business name searches did not show Australian registrations for names such as Norwegian Air or Norwegian Shuttle. Industry witnesses said they were not aware of Norwegian offering flights to or from Australia or advertising in Australia.

The Court accepted that lack of use by itself is not enough. That is an important caution. A business can have a genuine intention to use a mark even if it has not yet launched. But the Court also said that post-filing non-use can be relevant when drawing inferences about intention at the filing date. Here, the combined evidence supported an inference that by the filing date, and in the approximately seven years since, neither Norwegian Brand nor a related entity had operated an airline to or from Australia or advertised any product or service in Australia under the opposed marks.

The Court also referred to corporate structure material exhibited to the chairman's declaration. That material said the group's commercial airline activities were organised in the parent company, while Norwegian Brand had responsibility for developing and maintaining the group's brand across business areas. NCL argued that if any services to Australia were to be offered, they would likely be offered by another group entity rather than Norwegian Brand itself.

The Court did not need to make broad findings about the whole group structure. But the evidence did not clearly show who would use the marks in Australia or how Norwegian Brand would authorise that use. That uncertainty added to the doubts about intention. For business owners, this is a practical point: if the filing entity is not the trading entity, the evidence should still show a clear and workable plan for authorised use.

Finally, Norwegian Brand's non-participation mattered. The Court said that once NCL had made out a prima facie case, Norwegian Brand's failure to respond or participate made it open to the Court to find that the required intention did not exist. Silence was not the whole case, but it was part of the evidentiary picture.

The Court was careful not to infer lack of intention from non-use alone. Instead, it relied on a combination of factors: the applicant's own evidence referring to consideration of expansion, the article describing tentative plans and no immediate Australian service, the apparent lack of capacity, the absence of Australian operations or advertising over a long period, uncertainty about who would actually use the marks, and the applicant's failure to answer the case on appeal.

The Court allowed NCL's appeal. It set aside the delegate's decision that had extended protection to the two international registrations in Australia. It then ordered that protection not be extended to Australia and that registration be refused. The Court also ordered Norwegian Brand to pay NCL's costs of the appeal, set aside the delegate's costs order, and made no further order in relation to costs before the delegate.

The key finding was that NCL had established the opposition ground under s 59(a). The Court accepted that filing the applications was prima facie evidence of intention to use. But after considering the surrounding evidence, it concluded that there were real doubts about whether Norwegian Brand had any real and definite intention to use, or authorise use of, the marks in Australia at the time of filing.

The Court said the evidence suggested only tentative plans and no immediate Australian rollout. The article exhibited by Norwegian Brand's own chairman referred to tentative plans and no immediate plans to serve Australia. The evidence also suggested that the airline's route ambitions exceeded its available aircraft. The lack of demonstrated Australian operations, advertising or business presence over a long period after filing reinforced the inference that there was no present intention at the filing date.

Importantly, the Court said the circumstances went beyond mere non-use. That is what allowed NCL to get past the initial presumption created by filing. In the Court's view, NCL had made out a prima facie case that there was a lack of intention to use the opposed marks in Australia or authorise their use here.

Because Norwegian Brand did not participate in the appeal or put on evidence to establish intention, the Court found on the balance of probabilities that the intention requirement was not met. The Court expressly said that, at the time of the application, or at any time before or since that time, Norwegian Brand did not have the requisite intention to use or authorise use of the marks in Australia.

Having reached that conclusion, the Court said it was unnecessary to consider the other opposition grounds. So the case stands as a focused decision on the intention-to-use ground, rather than a broader ruling on all of the pleaded trade mark issues.

If you are filing a trade mark, the safest approach is to make sure your application reflects what you genuinely plan to do in Australia. That does not mean you need a finished product, signed customers or immediate launch. The Court expressly recognised that immediate use is not required. But you should still be able to point to a present and positive intention to use the mark here, or to authorise use by another entity.

In practice, that means your filing should line up with your business roadmap. If you are pre-launch, you should still have some concrete material showing the plan existed when you filed. Depending on the business, that might include internal strategy papers, launch timelines, product or service development work, branding approvals, market-entry planning, distribution discussions, or records showing which group company will trade and how use will be authorised.

This is especially important if your application is broad. The judgment records that NCL argued the registrations covered a very wide list of goods and services. The Court did not need to decide the case by analysing each item in detail, and the full specifications are not set out in the available extract, so the safest public reading is a general one. The broader the filing, the more exposed you may be if an opponent asks whether you truly intended to use the mark for all of it in Australia.

For overseas businesses, the case is a reminder that designating Australia through the Madrid Protocol does not remove the need for a genuine Australian use intention. The international filing route is administrative convenience, not a different substantive test. For local startups and SMEs, the same commercial logic applies to direct Australian filings.

The case also shows the importance of consistency between public messaging and legal filings. Here, statements about tentative plans and no immediate plans to serve Australia were used against the applicant. Businesses often make cautious public statements for commercial reasons, but those statements can later be read alongside a trade mark filing. If your public communications say Australia is only a distant possibility, that may undermine an argument that you had a present and definite intention to use the mark here when you filed.

Another practical lesson concerns group structures. If the applicant is a holding or brand-owning company, be clear about who will actually use the mark in Australia and on what basis. If use will be by a related entity, the evidence should support a real plan for authorised use, not just a vague assumption that someone in the group may use the mark one day.

If you are opposing someone else's application, this case shows the kinds of evidence that may matter. Public statements describing Australian expansion as tentative, evidence of no Australian operations or advertising, uncertainty about which entity would actually use the mark, and long periods with no visible Australian activity may help build a prima facie case. The case does not mean every non-user will lose. But it does show that a carefully built evidentiary record can shift pressure onto the applicant to prove genuine intention.

For many businesses, the broader point is that trade marks are part of business execution, not just legal housekeeping. A filing should support a real commercial plan. It should not be used as a substitute for one.

The opposed international registrations had a priority date of 20 January 2017, and the Court treated the filing date and priority date as the same for practical purposes in this case. The Registrar accepted the applications and notified the International Bureau under the Madrid Protocol on 11 December 2018. NCL filed its notice of intention to oppose on 29 March 2019.

The delegate's decision extending protection to Australia was dated 13 October 2022. NCL then appealed to the Federal Court. The hearing took place on 29 July 2025, and judgment was delivered on 18 December 2025. The Court allowed the appeal and refused extension of protection to Australia for the two opposed marks.

This page is based on the Federal Court judgment in NCL Corporation Ltd v Norwegian Brand Ltd [2025] FCA 1613. The available material is strong enough to support a detailed public explainer on the s 59(a) intention-to-use issue and the orders made. It is not used here as a basis for detailed commentary on the unresolved opposition grounds or the full goods and services specifications.

This is general information only and not legal advice. Trade mark disputes are fact-sensitive, especially where intention, group-company use and the scope of goods or services are in issue.