Adidas International Marketing B.V. v Chen Yong Mei
[2010] ATMO 15
•17 February 2010
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by adidas International Marketing B.V. to protection of International Registration Designating Australia 1179340 (16) - International Registration No 921530 - REBOOK WITH FOUR CHINESE CHARACTERS - filed in the name of Chen Yong Mei.
Delegate: | Bianca Irgang |
Representation: | Opponent: Celia Davies of Freehills Patent and Trade Mark Attorneys Holder: Not represented or present at the Hearing |
Decision: | 2010 ATMO 15 Regulation 17A.29 opposition: s 59 pursued – ground under s 59 not established – opposition unsuccessful – protection extended in respect of class 16 goods listed in the IRDA. |
Background
1. On 7 December 2006, Chen Yong Mei (“the holder”) applied for an International Registration Designating Australia (“IRDA”) through the International Bureau of the World Intellectual Property Organisation (“the IB”). The IRDA was advertised as having been accepted for protection as follows:
Trade mark:
Trade mark application: 1179340
International registration: 921530
Lodgement Date: 7 December 2006
Goods Specification: Class: 16 Paper, printing paper, postcards, greeting cards, exercise books, writing paper, envelopes (stationery), books, newspapers, picture posters, stationery, school supplies (stationery), pens
Endorsements: The applicant has advised that the CHINESE characters appearing in the trade mark may be transliterated as SHI DAI TIAN HUA and translated into English as GATHER TOGETHER ESSENTIAL PART OF EPOCH.
2. The IRDA was examined and on 7 June 2007 a Notice of Provisional Refusal for the holder’s IRDA was issued. A total of five trade mark registrations were raised as grounds for rejection under section 44 of the Trade Marks Act 1995 (“the Act”) on the basis that the previously registered trade marks’ goods and services specifications encompassed similar goods and services to those specified in classes 9 ,25 and 35 the holder’s trade mark application. However, no ground for rejection was raised against the holder’s goods specification in class 16.
3. On 9 October 2008, IP Australia advertised in the Official Journal of Trade Marks its intention to extend protection in Australia to the IRDA for its goods in class 16.
4. On 9 January 2009 adidas International Marketing B.V. (“the opponent”) filed a Notice of Opposition (“the Notice”) to extension of protection of the IRDA to Australia, listing all the grounds of opposition allowable under the Act. By notice dated 23 January 2009 the IB was advised of refusal of protection based on the opposition. That notice included a reminder to the holder that, if it wished to participate in the opposition, it would need to file an address for service in Australia within three months, as per regulation 17A.33(3) of the Trade Mark Regulations (“the Regulations”).
5. The opponent filed evidence in support of the opposition. The holder did not provide an address for service in Australia, or seek an extension of time to do so. Therefore, the opponent was not required to serve a copy of its evidence on the holder. IP Australia subsequently wrote to the holder setting a date for service of evidence in answer. No reply was received and the holder did not file or serve any evidence.
6. The opponent requested to be heard, and the matter came before me as a delegate of the Registrar of Trade Marks in Melbourne on 23 November 2009. Celia Davies of Freehills Patent and Trade Mark Attorneys represented the opponent. The holder was not represented and did not appear at the hearing or make written submissions.
Madrid Protocol – Opposition framework
Section 189A of the Act empowers the more detailed workings of the regulations giving effect to Australia’s obligations under the Madrid Protocol. Regulation 17A of the Regulations is the most obvious consequence of these. Regulation 17A.29 provides for opposition to the extension of protection in Australia to a trade mark that is the subject of the IRDA. Whether it is a case of rejection or an opposition, regulation 17A.31 imports various grounds which are set out elsewhere in the Act. These are sections 39 and 41 to 44 in Part 4 of the Act and sections 58 to 61, and 62A, in Part 5.
Finally, regulation 17A.34(1) provides:
Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.
Within that broad framework, familiar parts of the Regulations are imported by reg 17A.33, which provides:
(1) The Registrar must give to the opponent and to the holder of the IRDA an opportunity of being heard on the opposition.
(2) Regulations 5.7 to 5.17 apply, with the necessary modifications, for the purposes of the opposition.
(3) Despite subregulations (1) and (2), a requirement to serve a document on the holder, or to give the holder an opportunity to make written representations or to be heard, does not apply unless, within 3 months after the notice of opposition is filed, the holder has notified the Registrar, in writing, of the holder’s address for service in Australia.
Grounds of Opposition
The Notice nominated all of the grounds of opposition under the Act. However, only the ground under section 59 was pursued by the opponent at the hearing. As a formal matter, I treat the remaining grounds listed in the Notice as having not been established.
As in any opposition, the onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have recently been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].
[1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599;
[2] [2009] FCA 891, para 22-27
Evidence
The evidence filed during these opposition proceedings consists of the following declaration:
| Declarant | Position | Date Made | Exhibits |
| Evidence in Support | |||
| Celia Jane Davies | Partner of Freehills Patent and Trade Mark Attorneys | 11 May 2009 | CJD-1 to CJD-9 |
The holder did not file or serve any evidence in these proceedings. On 20 November 2009 the opponent filed its written submissions for the hearing. Included in those submissions were a number of internet searches for the holder’s trade mark which appeared to be unsworn evidence. These additional internet searches do not form an acceptable part of the opponent’s written submissions. Nor do these additional documents carry any significant weight according to regulation 21.17(1).
I advised the opponent’s representative, Ms Davies, at the hearing that these internet searches constituted ‘evidence’ and that any attempt to introduce additional material which would reasonably have a bearing on the outcome of the opposition should be put into a request for permission to serve further evidence. I advised Ms Davies that if the opponent wanted to rely on these documents it would need to apply for permission to file and serve further evidence.
Ms Davies elected not to apply for permission to file and serve further evidence at the hearing. Instead, she confirmed that she understood that the unsworn claims and documents would be given no significant weight when the decision on the opposition was made.
Discussion
Section 59 states:
Applicant not intending to use trade mark
59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
In Americana International Limited v Suyen Corporation[3] the Registrar's delegate summarised a number of principles from case law under section 59. Those that are relevant to the circumstances of this case are:
Section 59 refers to a continuing or current intention to use the trade mark.[4]
The act of filing of a trade mark application is prima facie evidence of intent to use the mark.[5]
The onus is on the opponent to establish a prima facie case of lack of intention to use. If such a case is established, the onus is then on the applicant or holder to refute the opponent's claims.[6]
An inference can be drawn to indicate a lack of intention to use.[7]
[3] (2008) 75 IPR 596.
[4] Sapient Australia Pty Ltd and Sapient Corporation v SAP AG (2002) 55 IPR 68 (‘Sapient’).
[5] Aston v Harlee Manufacturing Co (1960) 103 CLR 391.
[6]Sapient (2002) 55 IPR 68.
[7]Ibid.
Delegates of the Registrar have found a lack of intention to use may be inferred from:
· a history of failed attempts to communicate with the applicant;[8]
· the applicant providing an incorrect or incomplete address on the application, or applicant moving from the address provided on the application and failing to inform the Registrar of its current address.[9]
[8] Cadbury Limited v Cream & Dream s.r.o. [2008] ATMO 60
[9] Apple Inc v Artistic Licence International [2009] ATMO 15 (‘Apple’).
The opponent submitted that, regardless of the holder’s intention at the time of filing the IRDA, the holder no longer had an intention to use the trade mark in Australia in relation to the specified goods and, as per Hearing Officer Kirov’s decision in Apple, the provisions of section 59 should be deemed established. However, I am not persuaded by this argument.
The situation in the Apple case is not analogous to the present case. In Apple the Australian-based applicant filed the opposed application in an incomplete name along with an incomplete address for service. After extensive research, IP Australia attempted to contact the applicant a number of times by post, email and telephone. However, all the attempts were unsuccessful and all correspondence sent to the applicant’s address for service was returned to IP Australia by Australia Post.
In the present case the holder has not listed an Australian address for service. However, unlike the Apple case no correspondence has been returned to IP Australia as being ‘undeliverable’, nor does the evidence show that the holder has any other IRDAs from which adverse inferences could be drawn.
Ms Davies has argued there is sufficient evidence for an inference to be drawn that there was a lack of intention to use and to shift the burden of proof from the opponent to the holder. That evidence is:
the holder’s failure to respond once the opposition was filed;
its failure to provide an address for service in Australia;
its failure to respond to the opponent’s letter dated 9 April 2009;
its continuing lack of action in relation to the opposition proceedings; and
the history of the holder’s International Registration 921530 (“IR 921530”) as shown on the WIPO[10] database.
[10] World Intellectual Property Organisation
In regard to the latter, the opponent referred me to a search of the WIPO database conducted in relation to IR 921530. This search shows that, in addition to Australia, five of the nominated international designations for the holder’s “REBOOK” trade mark have issued Notices of Provisional Refusal of Protection. Of those five designations, all have also issued statements refusing protection of the mark. This has occurred, the opponent submits, without any apparent action on the part of the holder. I note that the holder did not list local addresses for service in any of the international designations.
Ms Davies referred me to exhibit CJD-4 accompanying her statutory declaration which consists of print-outs of the holder’s trade mark from the CTM online[11] and WIPO databases. These print-outs demonstrate that the opponent filed an opposition against the holder’s trade mark in the EU as well as in Australia. Ms Davies further advised that on 15 December 2009 the OHIM[12] notified the opponent that its opposition had been successful on the basis of the holder’s lack of mandatory representation. This correspondence from the OHIM was included in the documents filed with Ms Davies’ written submissions and did not form part of the evidence in support.
[11] CTM online provides access to information on Community trade mark (CTM) applications and registrations including online access to CTM files. A CTM is any trade mark which is pending registration or has been registered in the European Union as a whole (rather than on a national level within the EU).
[12] The Office of Harmonization for the Internal Market (“OHIM”) is the European Union agency responsible for registering Community Trade Marks and designs that are valid in all 27 countries of the European Union.
I am satisfied that Australia is the only nominated designation in which the IRDA has not been refused protection. However, I am not prepared to draw inferences from the status of the WIPO database even though the information is factual and available to the general public, including the holder. In Carl Zeiss AG v Zhang Yimin[13], the Hearing Officer considered a similar situation and held:
“…if I am being asked to draw an inference from material relating to history of the international registration in other jurisdictions, particularly an inference that may adversely affect the holder, the material should be brought into formal evidence and the holder at least provided with an opportunity to respond. Even if I were to consider the material, I do not consider I would be able to draw anything from it that would assist in the present case. The holder’s failure to act in relation to its trade mark registration in other jurisdictions does not speak for its intentions regarding its trade mark in Australia.”
[13] 2009 ATMO 69
I agree with the opinions expressed by the Hearing Officer. The holder’s failure to act in relation to its trade mark registration in the EU does not speak for its intentions regarding its trade mark in Australia. In itself, this might also be attributable to some innocent failure unrelated to a lack of intention to use.
The opponent’s case, then, is limited to the holder’s failure to participate in the opposition proceedings. I am not satisfied this is sufficient to shift the onus to the holder. There may be many reasons why the holder has not responded to the opposition. As indicated by the Registrar’s delegate in Television Food Network GPv Food Channel Network Pty Ltd[14], the failure may point to a lack of intention to use the trade mark, but it could also point to misunderstandings or disorganization on the part of the holder. The onus does not shift to the holder merely because an opponent questions the holder’s intention in its Notice of Opposition or submissions[15].
[14] [2006] ATMO 88.
[15] See for example Medley Distilling Company v Croakers Gully Australia (2000) 53 IPR 430; Wal-Mart Stores Inc v Ozark-London Ltd (2004) 62 IPR 165
Therefore, the opponent has not provided sufficient evidence to shift the onus from itself onto the holder. The section 59 ground of opposition has not been made out.
Decision
Subregulation 17A.34(1) provides:
17A.34(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.
The opponent has not established a ground of opposition under regulation 4.15A.
Therefore, I decide to extend protection one month from the date of this decision in respect of the class 16 goods listed in the IRDA, namely paper, printing paper, postcards, greeting cards, exercise books, writing paper, envelopes (stationery), books, newspapers, picture posters, stationery, school supplies (stationery), pens
If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided with protection proceeding or discontinued or, if this decision be successfully appealed, that the application be dealt with as the Court sees fit. If the Registrar has not been served with a notice of appeal before that time the IB will be notified of this decision as soon as practicable after the appeal period has ended, in accord with regulation 17A.34(2).
Bianca Irgang
Hearing Officer
Trade Marks Hearings
17 February 2010
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