Amazon Europe Core Sarl v Qing Sun

[2022] ATMO 144

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re: Opposition by Amazon Europe Core Sarl to registration of trade mark application number 2116129 (Class 25) – Eono – in the name of Qing Sun.

Delegate:	Blake Knowles
Representation:	Opponent: King & Wood Mallesons. Applicant: Amanda C.S.
Decision:	2022 ATMO 144 Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds of opposition pursued under ss 44, 58, 59, 60, and 62A – s 58 ground established for some goods – no other grounds established – opportunity given to amend goods – goods amended – registration to proceed.

Background

1.     This is a decision in the opposition by Amazon Europe Core Sarl (‘Opponent’) to trade mark number 2116129 (‘Application’) filed by Qing Sun (‘Applicant’) on 31 August 2020 (‘Relevant Date’) for ‘Eono’ (‘Trade Mark’) in Class 25: Shirts; tee-shirts; clothing; footwear; caps being headwear; hosiery; gloves (clothing); scarves; girdles (‘Applicant’s Goods’).

2.     The Application was examined, accepted, and subsequently advertised for opposition on 1 February 2021. The Opponent filed a notice of its intention to oppose on 11 March 2021, followed by a statement of grounds and particulars (‘SGP’) on 16 March 2021. The Applicant filed a notice of intention to defend on 28 April 2021.

3.     The parties had the opportunity to file evidence in accordance with reg 5.14.[1] The Opponent filed Evidence in Support (‘EIS’) on 11 August 2021. The Applicant did not file evidence.

4.     The parties were given the opportunity to be heard by video conference or written submissions. The Opponent requested to be heard by written submissions. The Applicant did not request to be heard. I make my decision based on the particulars in the SGP, and the evidence and written submissions filed by the Opponent.

Grounds and onus

5.     The SGP nominates grounds of opposition under ss 44, 58, 59, 60, and 62A.

6.     The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.  

Evidence

[1]   Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

[2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

1. The EIS consists of a declaration by Katherine Warner, a lawyer of King & Wood Mallesons, made on 10 August 2021, with Exhibit KMW-1. Ms Warner declares that she makes the declaration based on enquiries she made of employees of the Opponent and research undertaken by her colleagues and herself. It is always preferable for a company to give evidence of its activities via one of its officers or senior employees rather than its lawyer. However, where information about a company is reasonably specific and has been provided to the declarant from company records (rather than from personal recollection), or is taken from publicly available sources (e.g. social media or web archives), I consider it has probative value.  

   8.     Ms Warner declares that the Opponent is the owner of Australian trade mark number 1972734 (‘Opponent’s Registration’) for EONO (‘Opponent’s Mark’), registered in respect of goods and services in Classes 1, 2, 3, 4, 7, 8, 9, 10, 11, 12, 15, 16, 18, 20, 21, 22, 24, 26, 28, and 35. The Opponent’s Mark is also registered to the Opponent in numerous other countries.

   9.     Ms Warner declares that the Opponent has used the Opponent’s Mark since at least 2018 in relation to a wide range of goods, including clothing and bags. The Opponent’s goods are sold via websites at (‘Australian Website’) and (‘UK Website’).

   10.     Ms Warner declares that clothing has been sold via both the Australian Website and UK Website prior to the Relevant Date. Ms Warner annexes extracts from the Australian Website and UK Website showing items of clothing sold under the Opponent’s Mark. The date on which the goods were first available is indicated in the listings. I note that the top of each listing refers to ‘Eono Essentials’, however, each listing also includes ‘Technical Details’ which states that the brand of the product is Eono.  The relevant products appearing on the Australian Website are fleece tops (first available 10 July 2020), jackets (first available 9 July 2020), and shorts (first available 9 July 2020). Other products appear on the UK Website that are not available on the Australian Website, including swimwear, sports bras, functional underwear, and socks.  

   11.     Ms Warner annexes five articles discussing the Opponent’s Mark published in 2019 and 2020. The web addresses where the articles were published are not shown. However, the articles appear to have been targeted at a UK audience given most refer to prices of goods in GBP. 

   12.     Ms Warner declares that the Opponent sent a letter to the Applicant on 7 June 2021 requesting that the Applicant withdraw the Application and cease use of the Trade Mark. A copy of the letter is annexed to the declaration. Ms Warner states that the Applicant did not reply. Further, Ms Warner declares that she undertook Google searches for the Applicant and the Trade Mark, and she was not able to identify any current use of the Trade Mark or any business carried on by the Applicant. Ms Warner also states that a search for the Opponent’s address for service indicates that it is a serviced co-working office space available for lease.  

   Discussion

   Section 58

2. To establish this ground, the Opponent must show use in Australia, by some person other than the Applicant, of a trade mark that is substantially identical to the Trade Mark,[3] and which has been used for goods or services that are the ‘same kind of thing’ as the Applicant’s Goods.[4] The trade mark/s relied on by the Opponent must have been used in the course of trade prior to the Relevant Date, or prior to the date of first use of the Trade Mark, whichever is earlier.

   [3] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513 (Gummow J).

   [4] Re Hicks's Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

3. I am satisfied that the Opponent’s Mark is substantially identical to the Trade Mark, and that the Opponent’s Mark was used on the Australian Website in relation to the offer for sale of fleece tops, jackets, and shorts. The reference to the brand for the relevant goods being ‘Eono’ in the table for each listing constitutes use as a trade mark. I also consider (in the absence of any contrary evidence) that the dates on which the products were stated to be first available are the dates on which the Opponent’s Mark was first used in Australia for the respective goods.

4. However, I am not satisfied that use on the UK Website constitutes use of the Trade Mark in Australia. Use of a trade mark on a foreign website is not by itself sufficient to constitute use of that trade mark in Australia. In Ward Group Pty Ltd v Brodie & Stone Plc, Merkel J held:

   In summary, the use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded.[5]

   [5] [2005] FCA 471, [43].

5. The evidence does not establish that the content of the UK Website was targeted at Australian consumers, or that Australian consumers purchased or even viewed the goods offered for sale on the UK Website.

6. I must now consider whether the Applicant’s Goods are the same or the same kind of thing as the goods for which the Opponent has demonstrated prior use of the Opponent’s Mark, namely, fleece tops, jackets, and shorts. The test for whether goods are ‘the same kind of thing’ is a narrower assessment than whether they are goods or services ‘of the same description’ or are ‘closely related’.[6] In Colorado Group Ltd v Strandbags Group Pty Ltd, Allsop J said:

   [6] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [12]-[13] (Kenny J).

   The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods “though not identical… yet substantially the same” (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or “goods essentially the same… though they pass under a different name owing to slight variations in shape and size” (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206).  This approach is conformable with the terms of the 1995 Act.[7]

   [7] Ibid, [89].

7. Fleece tops, jackets, and shorts are common items of apparel intended as primary external coverings for the upper body and legs.  I consider that such goods are the same kind of thing as other primary external coverings for the upper body and legs included in the Applicant’s Goods, namely: Class 25: Shirts; tee-shirts; clothing (‘Refused Goods’).

8. I do not consider that fleece tops, jackets, and shorts are the same kind of thing as the following items in the Applicant’s Goods: Class 25: Footwear; caps being headwear; hosiery; gloves (clothing); scarves; girdles (‘Remaining Goods’). While these goods are all items of clothing, their nature is somewhat different to that of fleece tops, jackets, and shorts as they are not primary external coverings for the upper body and legs. As such, while there are obvious similarities between the fleece tops, jackets, and shorts and the Remaining Goods, they are not true equivalents or ‘substantially the same’ and cannot be considered ‘the same kind of thing’.

   20.     For the reasons given above, I am satisfied that the ground of opposition is made out under s 58 in relation to the Refused Goods. However, I am not satisfied that the ground of opposition under s 58 is made out in relation to the Remaining Goods. As such, I must now consider whether the Opponent has established one of the other grounds of opposition in relation to Remaining Goods.  

   Section 60

   21.     To establish this ground, the Opponent must demonstrate a reputation in a trade mark existing in Australia at the Relevant Date. The Opponent must then prove that because of this reputation, use of the opposed Trade Mark is likely to deceive or cause confusion.

   22.     The Opponent relies on reputation in the Opponent’s Mark as the basis for this ground. The Opponent must establish a reputation and a likelihood of confusion exists amongst a substantial number of consumers.[8] Reputation can be demonstrated in several ways. For example, it can be established by demonstrating that a significant number of consumers are regularly exposed to a particular trade mark or that a mark is viewed with a certain level of esteem in the market. It may also be inferred from a high volume of sales combined with substantial advertising figures and other promotions.[9] The length of use of a trade mark in the Australian market is also relevant in determining the existence of reputation and its extent. However, it is possible for a trade mark to accrue reputation in a relatively short period of time, particularly given the capacity of the Internet and social media to bring immediate and widespread attention to new products and brands.

   23.     While the EIS indicates that the Opponent offered some items of apparel and other goods for sale under the Opponent’s Mark prior to the Relevant Date, it is otherwise lacking in detail and does not contain any metrics such as revenue figures or website analytics relating to use of the Opponent’s Mark in Australia or overseas. There is also no evidence regarding the number of Australian consumers who either read or were exposed to the various articles that mention the Opponent’s Mark. Further, the evidence does not establish that the Opponent’s Mark attracted an appreciable level of esteem in the market. Given the Opponent has been economical in the provision of its evidence, there is little on which I can objectively determine the existence or extent of any reputation in the Opponent’s Mark in Australia or elsewhere.

   24.     I consider the EIS is insufficient to establish that the Opponent’s Mark had established a reputation in Australia at the Relevant Date. As such, the ground under s 60 is not established.  

   Section 62A

   [8] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [74]-[75] (Moore, Tamberlin and Goldberg JJ).

   [9] McCormick & Company Inc v McCormick [2000] FCA 1335, [86] (Kenny J).

9. Whether an application was made in bad faith requires consideration of a subjective and an objective element. For the subjective element I must form a view of the actual knowledge of the Applicant at the time the Application was filed. The objective element then asks, would a person adopting proper standards, knowing what the Applicant knew, regard the act of filing the Application as being in bad faith? This is to be assessed by determining whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in the relevant industry.[10]  I am without evidence as to any standards of behaviour peculiar to this industry, so I proceed in my assessments here based on general commercial behaviour.

   [10] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62] (Bennett J); Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [165] (Dodds-Streeton J).

10. The Opponent in the SGP alleges that the Opponent’s Mark is an Amazon house brand in which the Opponent has developed a substantial reputation globally, and that in filing the Application, the Applicant seeks to create an association between the Trade Mark and the Opponent’s Mark / Opponent.  

11. I have already determined that the EIS does not establish that the Opponent’s Mark had reputation in Australia at the Relevant Date. Further, it is not possible to determine from the EIS that there has been extensive use of the Opponent’s Mark internationally. If the Applicant was not aware of the Opponent’s Mark at the Relevant Date, the allegation of bad faith can have no logical basis, and I need not enquire any further regarding the Applicant’s motives.   

12. Given the evidence filed by the Opponent establishes at most limited use of the Opponent’s Mark in Australia and elsewhere, I am not satisfied that the Applicant was likely aware of the Opponent’s Mark at the Relevant Date. As such, the ground of opposition under s 62A is not established.

    Section 59

13. Section 59 can be established by demonstrating that the Applicant at the Relevant Date did not intend to use, or authorise use of, the Trade Mark in Australia, for the Applicant’s Goods.

14. Applying for registration of a trade mark carries a presumption that the Applicant intends to use the mark.[11] The onus is on the Opponent to displace this presumption by making out a prima facie case that the Applicant lacked the requisite intention at the Relevant Date.[12]  If the Opponent makes out a prima facie case, the evidentiary onus shifts to the Applicant to show its intention to use the trade mark at the Relevant Date.[13] 

    [11] Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J).

    [12] Aston v Harlee Manufacturing Co [1960] HCA 47 (Fullagar J).

    [13] Suyen Corp v Americana International Ltd (n 3), [190].

15. I accept the Opponent’s submissions that a prima facie case of lack of intention to use can be made based on slight evidence. However, I do not consider that the lack of participation in opposition proceedings, or the lack of a response to a letter of demand, suffice to shift the onus of proof back to the Applicant. While reasonable inferences can be drawn from actions taken by the Applicant after the Relevant Date, it would be wrong to simply equate a lack of active defence of a trade mark with a lack of intention to use at the Relevant Date.

16. I also do not consider the fact that the Applicant did not appear in the Opponent’s Google searches or that the Applicant’s address for service is a coworking space available for lease are particularly relevant circumstances. The Applicant may not have an Internet presence or its presence may not be particularly visible. Further, many overseas applicants nominate an address for service that is essentially a post box for forwarding correspondence.

17. In the circumstances, while the Applicant has not shown a strong interest in defending the Trade Mark, I am not satisfied that the Applicant lacked an intention to use the Trade Mark at the Relevant Date, or that the Opponent’s evidence was strong enough to require a positive response by the Applicant.

18. For the reasons given above, the ground under s 59 is not established.

    Section 44

19. To establish grounds of opposition under s 44, the Opponent must rely on at least one pending or registered trade mark with a priority date earlier than the priority date of the Application (i.e. the Relevant Date), and which is in the name of a person other than the Applicant. The earlier mark must be filed or registered in respect of goods that are similar to the Remaining Goods, or services that are closely related to the Remaining Goods. Further, the earlier mark must be either substantially identical or deceptively similar to the Trade Mark.

20. The Opponent relies on the Opponent’s Registration as the basis for the s 44 ground. The Opponent’s Registration has a priority date of 30 November 2018, which is earlier than the Relevant Date. Further, the Trade Mark and the Opponent’s Mark are substantially identical. As such, I must consider whether the Remaining Goods are similar or closely related to any of the goods or services covered by the Opponent’s Registrations.

21. Goods will be considered similar to other goods if they are either the same or ‘of the same description’.[14] The test for determining whether goods are of the same description is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the goods, their respective purposes, and the trade channels through which they are commonly provided, with no single factor being determinative. [15]

    [14] Trade Marks Act 1995 (Cth), s 14.

    [15] Re Jellinek’s Application (1946) 63 RPC 59, 70.

22. Whether goods are closely related to services (or vice versa) involves different considerations. In Kicking Horse Coffee Co. Ltd, Hearing Officer Brown summarised the authorities as follows:

    The words ‘closely related’ are not defined in the Act. In the Registrar of Trade Marks v Woolworths French J made the following observations:

    The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related"… it is a term of wider import than “similar”…

    In 1979 around the time when the concept of closely related was first introduced into Australian trade mark legislation, FJ Smith, the then Registrar of Trade Marks explained the nature of the relationship between goods and services that would support a finding that they were closely related:

    It will be an exercise of the Registrar’s judgement and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely.

    In Woolworths French J stated that the ‘relationships may, and in perhaps most cases will, be defined by the function of the service with respect to the goods’. Similarly, in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co Lockhart J stated that ‘confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods’.[16]

    [16] [2018] ATMO 193, [19]-[21] (citations omitted).

1. Turning first to the question of similar goods, I note that the vast majority of goods covered by the Opponent’s Registration are clearly dissimilar to the Remaining Goods. The Opponent in submissions focuses only on similarity between the Applicant’s Goods and those of the Opponent’s Goods falling in Class 18 which can be summarised as bags, wallets, purses, cases, key chains, luggage tags, leather laces, and leather and imitation leather. The Opponent submits that the respective goods are similar because:

   (i)Clothing, footwear, headgear and bags etc are typically sold by the same large retailers or brands. Australian consumers expect to be able to purchase clothing, footwear, headgear and bags etc from a single retailer (particularly online).

   (ii)The respective goods are usually constructed using the same materials (e.g. leather or canvas).

   (iii)Consumers who shop for the respective goods are not solely focused on the utility of those items, but also their external image and co-ordination of the items from a design or aesthetic point of view.

2. The Opponent also refers to two decisions in trade mark proceedings in the UK which support the argument that the clothing, footwear, and headgear are similar to the Opponent’s Goods in Class 18.

3. I accept that some retailers and manufacturers of apparel will also sell or produce goods that are accessories to apparel, for example, bags, wallets, and jewellery. I also accept that the materials used to manufacture Class 18 and 25 goods are often the same. There is also a well-known tendency for larger brands to leverage their recognition and following in the market by expanding beyond their original range of goods, including to products which are entirely different in nature and purpose compared to the goods for which they are best known. For instance, many fashion brands now also provide perfumes, aftershaves, or other personal care products. These trends create a situation where the potential for reputation-based confusion has grown significantly over time.

4. However, the assessment of similarity of goods under s 44 is more focused on the attributes of the goods in question. In this case, while the trade channels through which the Remaining Goods and the Applicant’s Goods are sold may be similar, the nature and purpose of the respective goods are quite different. The apparel items contained within the Remaining Goods are items of clothing manufactured to be worn on a particular part of the human body. Conversely, the primary purpose of bags, wallets, and cases is to store and transport small items and possessions. The respective goods look different and have a different manufacturing process, notwithstanding that the materials used in their construction may be the same. Considering these differences, I am not satisfied that the Remaining Goods are of the same description as any of the various bags, wallets, or cases covered by the Opponent’s Registration.

5. I am also not satisfied that leather and imitation leather, key chains, luggage tags, and leather laces covered by the Opponent’s Registration are similar in nature or purpose to the Remaining Goods. Leather and imitation leather are raw or semi raw materials and as such are not sold to the same consumers or used for the same purpose as finished products manufactured from these materials. Key chains are intended as decorative items for keys, or as collectables, and as such are entirely different in nature and purpose to the Remaining Goods. Luggage tags are accessories for bags intended to allow easy identification of luggage. The term leather laces is claimed in both Class 18 and Class 26 (as leather laces for footwear) of the Opponent’s Registration. I am not satisfied these goods are of the same description as footwear in Class 25 of the Remaining Goods. While leather laces may be used with shoes, they have a different nature (one is a very simple product constructed primarily of one material, the other is a complex manufactured item comprising multiple materials) and purpose (one being a component for a larger product, and the other being a fully formed item of apparel covering the feet). The only similarity between the products is that they may be sold via the same retail outlets. However, I consider this similarity is insufficient to determine that the respective goods are of the same description.   

6. Further, the Opponent has made no submissions regarding whether the Remaining Goods are closely related to any of the services covered by the Opponent’s Registration. For the sake of completeness, I note that the Opponent’s Registration covers various retailing services in Class 35, but not retailing of apparel. As such, there does not appear to be any basis for finding that the Remaining Goods are closely related to the Opponent’s services in Class 35.

7. As I do not consider the Remaining Goods are similar or closely related to any of the goods or services covered by the Opponent’s Registrations, the ground under s 44 is not established.

   Resolution of opposition

8. In Apple Inc. v Registrar of Trade Marks, Yates J stated that:

   My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[17]

   [17] [2014] FCA 1304, [232].

9. In circumstances where an opposition has been established in respect of some, but not all, of the goods or services under consideration, the Registrar may proceed to reject the application in its entirety, under the principles outlined above. However, the Registrar also has a discretion to offer an amendment allowing an applicant to amend the application to remove goods or services for which a ground of opposition has been established.

10. In view of the above, I offered the Applicant the opportunity to delete the Refused Goods from the Application.

11. The Applicant agreed to the proposed amendment, which has now been made. On that basis I find that the opposition has not been established for the Remaining Goods. 

    Decision and award of costs

12. I find that, subject to the amendment referred to above, the Opponent has not established any of the grounds of opposition it nominated in the SGP for the Remaining Goods.  The Trade Mark may proceed to registration not less than one month from the date of this decision for the Remaining Goods, namely:

    Class 25: Footwear; caps being headwear; hosiery; gloves (clothing); scarves; girdles

13. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.

14. The Opponent sought an award of costs in its favour. Costs generally follow the event. While the Opponent was not entirely successful, I consider the overall outcome was more in favour of the Opponent than the Applicant. As such, I award costs against the Applicant.

    Blake Knowles

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    30 August 2022