Flag-Planting Fails: BYD's DENZA EV Marks Survive Australian Opposition

Flag-Planting Fails: BYD's DENZA EV Marks Survive Australian Opposition

When a global electric vehicle giant files trade marks in Australia, it's reasonable to expect some competition for the registration. What's less expected is opposition mounted by a company whose own trade marks were filed after the giant's priority dates — and with no evidence of use, reputation, or any actual product. That's exactly the situation BYD Company Limited faced, and exactly why it prevailed.

Background: BYD and Its DENZA Brand

BYD Company Limited needs little introduction. The Chinese EV manufacturer is one of the largest in the world and has been making significant inroads into the Australian automotive market. In November 2024, BYD filed five international registrations designating Australia for its DENZA vehicle brand — covering the marks DENZA Z9GT, DENZA D9L, DENZA Z9, DENZA D9, and DENZA N9, all in Class 12 (vehicles).

Each of the five registrations was opposed by Alan Griffith, Director of GEO Industries Pty Ltd. Griffith relied on section 42(b) of the Trade Marks Act 1995, which allows opposition on the ground that use of the mark would constitute passing off.

The Opposition: What Griffith Filed

Griffith's evidence consisted of three Australian trade mark registrations in his own name — for "ENZA D1 to D9", "ENZA Z1 to Z9", and "ENZA N1 to N9" series marks. The registrations had one telling characteristic in common: they were filed in January 2025 — after BYD's Australian filing dates and after BYD's international convention priority dates.

Beyond the registrations themselves, Griffith filed nothing. There was no evidence that the ENZA marks had ever been used on any product. There was no evidence of any reputation whatsoever in the ENZA name. There was no identification of what the alleged misrepresentation would be. And there was no evidence of damage — actual, anticipated, or even theoretical.

The Decision: Passing Off Requires More Than a Registration

Delegate Anne Makrigiorgos was unambiguous. The tort of passing off requires three elements to be established: reputation, misrepresentation, and damage. Griffith failed to establish any of them.

Owning a trade mark registration for ENZA marks is not the same as having a reputation in those marks. Reputation must be earned through actual use in the marketplace — through sales, advertising, public recognition. Filing a registration, particularly one filed after your opponent's priority dates, establishes nothing of the kind.

Without a foundation of reputation, there was nothing on which to build a case of misrepresentation or damage. The opposition collapsed at the first element.

All five oppositions were dismissed. BYD's DENZA marks will proceed to protection in Australia. Costs were awarded against Griffith — with one full costs award and four reduced awards reflecting the duplicative nature of running five near-identical oppositions on the same failed basis.

The "Flag-Planting" Problem

This case illustrates a strategy sometimes called trade mark "flag-planting" or "squatting" — filing registrations for marks that resemble a successful overseas brand's marks, hoping to gain leverage or extract a payment. The strategy almost never works in opposition proceedings before IP Australia, and this case is a clear example of why.

By the time Griffith filed his ENZA marks, BYD's DENZA brand was already well-established in Australian news and automotive coverage. Filing marks that closely echo the numeric sub-marks of an internationally known EV brand — with no evidence of any actual business — is precisely the kind of conduct that trade mark law is not designed to reward.

Practical Takeaways

• Passing off demands actual reputation. A trade mark registration in your own name does not create a reputation in that name. Evidence of sales, advertising, and public recognition is required before a passing off claim can get off the ground.

• Priority dates matter. Filing a trade mark application after your opponent's priority date and then opposing on the basis of that later application is a fundamentally circular argument that will rarely succeed.

• Costs consequences are real. Running multiple nearly identical oppositions with no substantive evidence will attract costs orders — here, reduced but still meaningful awards across five proceedings.

• Overseas brand owners should file early. BYD's Australian designations were appropriately timed. Companies entering the Australian market should file trade mark applications early — before third parties attempt to occupy the space.

Citation: Alan Griffith v BYD Company Limited [2026] ATMO 127 (10 July 2026)

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