Chengluo Jiang and Woomee Australia Pty Ltd v Coral Storm Pty Ltd

[2017] ATMO 96

TRADE MARKS ACT 1995

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

Re:Opposition by Chengluo Jiang and Woomee Australia Pty Ltd to application under section 92 of the Act by Coral Storm Pty Ltd to remove trade mark number 1348441 (3) - Skintox – registered in the name of Woomee Australia Pty Ltd

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent: Self represented – no submissions Applicant:  Davies Collison Cave, written submissions
Decision:	2017 ATMO 96 Trade Marks Act 1995 Application for removal under paragraph 92(4)(b) – compliance with requirements of official forms – while onus is on the Opponents, application for removal should not succeed only because of technical defects in Opponents’ evidence – provenance of evidence – use on invoices – trade mark used during Relevant Period – exercise of Registrar’s discretion. Opposition to removal established. Trade Mark to remain registered

Background

1. In these proceedings under sections 92 and 96 of the Trade Marks Act 1995 (‘the Act’) Woomee Australia Pty Ltd is the owner of the trade mark appearing below:

Registration No:         1348441
Priority Date:             3 Mar 2010

Goods:Class 3: Cosmetic preparations for skin care; cosmetic products for skin care; cosmetic skin care products; essences for skin care; non-medicated products for skin care; non-medicated skin care beauty products; non-medicated skin care products; powders for skin care (not for medical use); skin care creams (cosmetic); skin care lotions (cosmetic); skin care oils (cosmetic); skin care preparations (cosmetic); skin care products (cosmetic); sun skin care products (cosmetics)

(‘the Goods’)

Trade Mark:               Skintox

(‘the Trade Mark’)

1. On 14 April 2015, Coral Storm Pty Ltd (‘the Applicant’) filed an application under paragraph 92(4)(b) of the Act for the removal of the Trade Mark from the register for all of the goods for which it is registered. The relevant period for the purposes of paragraph 92(4)(b) is therefore the three year period ending on 14 March 2015 (‘the Relevant Period’).

2. On 14 May 2015, as allowed by section 96 of the Act, Chengluo Jiang[1] filed a Notice of Opposition (‘the NOO’) to the removal, followed, on 11 June 2015, by a Statement of Grounds and Particulars.

   [1] Subsection 96(1) of the Act provides: ‘Any person may oppose an application under subsection 92(1) by filing a notice of opposition with the Registrar.

3. On 8 July 2015, the owner of the Trade Mark requested that the NOO be amended to reflect the opponents to removal as being Woomee Australia Pty Ltd and Chengluo Jiang (‘the Opponents’).

4. On 20 August 2016, the Applicant filed a Notice of Intention to Defend.

5. Thereafter, the parties have filed Evidence in Support and Evidence in Answer as is further discussed below.

6. Both parties have been informed of their right to be heard or to make written submissions.  Neither party requested to be heard.  The Applicant has filed written submissions by its attorneys, Davis Collison Cave of Melbourne.  I am a delegate of the Registrar of Trade Marks and am to decide the matter on the basis of the written record which is comprised of those documents mentioned in the preceding paragraphs.

The Onus and Standard

1. Paragraph 100(1)(c) of the Act provides that an opponent bears the onus of rebutting the allegation made against it under paragraph 92(4)(b), which it may do by, inter alia, establishing that the Trade Mark, (or, per paragraph 100(3)(a) of the Act, the Trade Mark with additions or alterations not substantially affecting its identity), was used by the owner of the trade mark or under its aegis in good faith during the Relevant Period. I proceed on the basis that the relevant standard of proof is that the Registrar be satisfied whether or not the evidence establishes the opposition to removal on the balance of probabilities.

2. The use of the Trade Mark by the Opponent (or under its control per section 8 of the Act) must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co[2].  A single bona fide use of the Trade Mark during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds[3]. However, Wilberforce J, in Nodoz Trade Mark[4], said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof”.

   [2] [1982] FSR 72.

   [3] [2001] FCA 261; (2001) 51 IPR 149 at [17].

   [4] (1962) RPC 1 at 7.

The Evidence

1. The evidence before the Registrar comprises the following declarations:

   In Support

   Chengluo Jiang, made on 10 March 2016, with attachments 1 to 3 (‘the Opponents’ Declaration’).

   In Answer

   Ian Anthony Drew, Trade Mark Attorney and Partner of Davies Collison Cave, made on 5 August 2016, with Exhibit IAD-1.

2. I will mention first that the Applicant submits that the Opponent’s Declaration should not be admitted as evidence as the place that it was made (which is a mandatory field on the official form) is not stated by the Mr Jiang on the official form.  Regulations 21.1 and 21.4 provide:

   21.1Compliance with instructions on approved forms

   If:

   (a)an application, notice, request or declaration under the Act or these regulations is required to be in an approved form; and

   (b)a blank form that may be used in making an application, request or declaration or giving notice:

   (i)is supplied by the Registrar; and

   (ii)contains directions about completing that form;

   the person who completes the form must comply with those directions.

   21.4Filing of documents—treatment of non‑complying documents

   If a document received for filing at the Trade Marks Office fails to comply with the Act or these regulations, the Registrar may:

   (a)treat the document as not having been filed at the Trade Marks Office; or

   (b)treat the document as having been filed, but require the person who filed the document to make, or cause to be made, any alterations to the document that are necessary to enable the document to so comply.

   Note:Regulations 4.2 and 4.2A set out requirements with which applications for the registration of trade marks must comply to be taken as having been filed.

3. By accepting the Opponents’ Declaration as having being filed, the Registrar must have then accepted that document as being a compliant form in accordance with regulation 21.1.

4. Further, the Applicant is aware of the Opponents’ Declaration (and has previously accepted it) having responded to it with Evidence in Answer in accordance with regulation 9.16(4).  If the Applicant were to regard the Opponents’ strict compliance with instructions on the form as being a problem, the time to have voiced this concern was when the Registrar provided the Opponents’ Declaration to the Applicant rather than by ambush at the end of proceedings.

5. Moreover, in the context of these proceedings, where the Opponents have complied with other formalities, and in which (without here anticipating my decision) it is apparent that the owner of the Trade Mark may well have used it, I do not think it appropriate that the Registrar should dismiss these opposition proceedings on a mere technicality.  If necessary, the Registrar may rely on the provisions of regulation 21.15(4) which provides:

   (4)The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate.

6. That said, the Opponents’ evidence establishes that it sells a product (‘the Product’) bearing the Trade Mark that a brochure describes as being an anti-aging, anti-wrinkle and skin whitening preparation which contains ‘Purified Water, Human Oligopeptide-l (EGF) 10ppm, Glycerin, Arbutin, Hyaluronic Acid, Methylparaben, Triethanolamine, Carbomer, Adenosine, Stem Cell, Argirilene, [and] Vitamin C’.  The operation of the preparation is claimed to:

   [Help] repair the appearance of past damage while protecting your skin from the aging effects of our environment.

   By night: Works with the body’s natural renewal mechanism to help your skin recover from the day’s environmental aggressions.

   By day: Helps increase collagen of your skin that was attacked by our environment before they can damage your skin’s appearance.

7. In the Opponents’ evidence the Trade Mark also appears on packaging for ‘goats milk soap’:

1. The Trade Mark appears in the Opponents’ evidence in two forms – as the plain printed word SKINTOX within invoices and as that in the label above.

2. The invoices are in respect of ‘SKINTOX EGF SERUM’ (which I take to be the Product) and are dated 11 January 2016, 28 October 2015, 24 January 2014 and 18 July 2013.  Of these, the invoice dated 24 January 2014 to ‘Orchid Koaland’ of Cairns is the subject of dispute by the Applicant who submits:

   Moreover, there is some doubt as to the accuracy of the evidence. The attachments to the Declaration include an invoice issued to Orchid Koaland dated 24 February 2014. Exhibit IAD-1 to the Declaration forming Evidence in Answer confirms that Orchid Koaland Pty Ltd was not incorporated until 16 June 2014, some four months after the date of issue of the invoice.

   This discrepancy casts serious doubt over the Evidence in Support.

3. However, the invoice does not purport to be an invoice to a person named ‘Orchid Koaland Pty Ltd’ but rather to a business called ‘Orchid Koaland’.  The business name may have presumably existed before ‘Orchid Koaland Pty Ltd’ was incorporated.

4. The Applicant also submits:

   The invoices are of particular concern as to whether they demonstrate actual sales. Each invoice states “Ownership of goods covered by this invoice remains with supplier until payment is made”. We have no evidence, therefore, of actual sale of goods as there is no evidence of the sale actually being effected and title of the goods passing to the purported distributors. At best, these invoices may only be described as an invitation to treat and not an actual sale. It is submitted that the owner of the registration should have demonstrated at least one actual sale in order to maintain its registration.

5. However, I note that section 9 of the Act provides:

   9Definition of applied to and applied in relation to

   (1)For the purposes of this Act:

   (a)a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and

   (b)a trade mark is taken to be applied in relation to goods or services:

   (i)if it is applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or

   (ii)if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and

   (c)a trade mark is taken also to be applied in relation to goods or services if it is used:

   (i)on a signboard or in an advertisement (including a televised advertisement); or

   (ii)in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;

   and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.

   (2)In subparagraph (1)(b)(i):

   covering includes packaging, frame, wrapper, container, stopper, lid or cap.

   label includes a band or ticket.

   [Stress added]

6. The use of a trade mark in an invoice in a bona fide transaction is a use of that trade mark regardless of whether the invoice was actually paid or not (or whether the terms of the invoice suggest that it might only be regarded as an ‘invitation to treat’). Catalogues and price lists might also be regarded as being ‘invitations to treat’ but the Act specifically states that the use of trade marks upon such documents is a use in the course of trade. I note that there were, apparently, repeat orders from over a period of time which presumably would not have occurred if the goods bearing the Trade Mark had not been delivered.

7. In my view, the evidence is sufficient to satisfy the Registrar that the owner of the Trade Mark used it in Australia during the Relevant Period in relation to the Goods.

Disposition

1. As regards the disposition of this matter, the Applicant submits:

   Even if the [Opponents have] done enough to demonstrate use of the mark, we submit the evidence does not substantiate use in respect of the full range of goods covered by the owner’s mark, but only, at its highest threshold, use for “skin serums”.

   Registration No. 1348441 covers the following goods:

   “Cosmetic preparations for skin care; cosmetic products for skin care; cosmetic skin care products; essences for skin care; non-medicated products for skin care; non-medicated skin care beauty products; non-medicated skin care products; powders for skin care (not for medical use); skin care creams (cosmetic); skin care lotions (cosmetic); skin care oils (cosmetic); skin care preparations (cosmetic); skin care products (cosmetic); sun skin care products (cosmetics)”

   There is no evidence before the Delegate which suggests the mark is being used for anything other than skin serums and, accordingly, there is no basis prima facie for maintaining the registration for a range of goods which are broader than skin serums. In order to maintain the registration for such a broader range of goods, it would be necessary for the Registrar to exercise its discretion to maintain a registration in spite of non-use. No submission or evidence has been led which supports the exercise of that discretion. The exercise of that discretion is only proper in circumstances where a party has demonstrated its reputation is sufficient to suggest that the use of a competing trade mark is likely to lead to consumers being misled or deceived. No evidence has been led as to the reputation of the mark, only purported mere use. It is submitted that mere use is insufficient for exercising the discretion.

2. The Applicant’s focus on the words ‘skin serum’ stems from the Opponent’s descriptions of the Product in its brochures and packaging as being a ‘skin serum’.  However, I note that the Oxford and Macquarie dictionaries respectively define the word ‘serum’ as denoting:

   Oxford

   a.Watery animal fluid, normal or morbid; spec. blood-serum, the greenish yellow liquid which separates from the clot when blood coagulates.

   b.Therapeutics. The blood serum of an animal used as a therapeutic or diagnostic agent.

   c.attrib. (of 1), as serum albumin (cf. seralbumen n.), serum-globulin.

   d.Used attrib. (with or without a following hyphen) to denote (the concentration of) substances in the serum.

Macquarie

noun (plural serums or sera   Pronunciation of serum /ˈsɪərə/ (say ‘searruh))

1.  the clear, pale yellow liquid which separates from the clot in the coagulation of blood; blood serum.

2.  a fluid of this kind obtained from the blood of an animal which has been rendered immune to some disease by inoculation, used as an antitoxic or therapeutic agent.

3.  any watery animal fluid.

4.  (of milk)

a.  that portion left after butterfat, casein, and albumin have been removed.

b.  that portion left after the manufacture of cheese.

[Latin: whey]

1. In considering a possible restriction to the Goods, the words ‘skin serum’ may not be entirely appropriate as a description of the Product in view of the foregoing definitions.  In fact, considering the nature and purpose of the Product, as discussed at paragraph [15], above, I consider that the current specification of the Goods (with the possible exception of ‘powders for skin care (not for medical use)’) is more appropriate as more accurately reflecting the nature and purpose of the Product than are the words ‘skin serum’.  However, lest there be any doubt, I will discuss the issue further under the heading ‘Discretion’, below.

Discretion

1. Section 101 of the Act relevantly provides:

   101Determination of opposed application—general

   […]

   (3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

   (4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

   (a)similar goods or closely related services; or

   (b)similar services or closely related goods;

   to those to which the application relates.

   Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

   Note 2:For registered owner see section 6.

2. I have found that the Trade Mark has been used during the relevant period in Australia in relation to the Product which is described at paragraph [15] of this decision. The expression ‘similar goods’ within paragraph 101(4)(a), above, is defined at subsection 14(1) of the Act:

   14Definition of similar goods and similar services

   (1)For the purposes of this Act, goods are similar to other goods:

   (a)if they are the same as the other goods; or

   (b)if they are of the same description as that of the other goods.

3. The expression ‘goods of the same description’ was discussed in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[5] by Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ:

   The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd. (1889) 41 Ch D 278, at p 291 and Reckitt & Colman(Australia) Ltd. v. Boden per Latham C.J. [1945] HCA 12; (1945) 70 CLR 84, at p 90. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application (1946) 63 RPC 59. Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case (1946) 63 RPC 59 the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application (1946) 63 RPC 59, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”: In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden [1945] HCA 12; (1945) 70 CLR 84 when he said: “What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments” (1945) 70 CLR, at p 94.

   [5] [1953] HCA 73; 1A IPR 465; (1954) 91 CLR 592 at para [5].

1. In my consideration, the Product qualifies as ‘goods of the same description’ as the Goods: the Product is commonly sold through the same trade channels, across the same counter, to the same class of customers and for the same purposes as are the Goods.

2. The Applicant’s submission that “The exercise of that discretion is only proper in circumstances where a party has demonstrated its reputation is sufficient to suggest that the use of a competing trade mark is likely to lead to consumers being misled or deceived” does, in my consideration, overstate what Flick J said in E & J Gallo Winery v Lion Nathan Australia Pty Ltd[6] and Bennett J said in Pioneer Computers Australia Pty Ltd v Pioneer KK[7] on this topic. Further, the discretion here is being exercised under subsection 101(4) of the Act rather than subsection 101(3).

   [6] [2008] FCA 934; (2008) 77 IPR 69; [2008] AIPC 92-293.

   [7] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354.

3. Thus, to the extent that it is necessary to exercise the Registrar’s discretion in the Owner’s favour, I do so in this case.

Decision

1. Section 101 of the Act relevantly provides:

   101Determination of opposed application—general

   (1)Subject to subsection (3) and to section 102, if:

   (a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b)the Registrar is satisfied that the grounds on which the application was made have been established;

   the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

2. As the opposition to the application has been established, it is appropriate that the Trade Mark remain on the register in respect of all of the Goods.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
23 June 2017