China Xiamen RGB Link Science & Technology Co v RGBLink Pty Ltd

[2019] ATMO 62

TRADE MARKS ACT 1995

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

Re:Opposition by China Xiamen RGB Link Science & Technology Co to registration of trade mark applications 1797770 and 1816208(9) - RGBLINK LOGO & RGB LINK- in the name of RGBLink Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Opponent: Andrew Musgrave of Counsel, instructed by Spruson & Ferguson Applicant: No appearance nor submissions
Decision:	2019 ATMO 62 Trade Marks Act 1995 (Cth) - Section 52 opposition: Section 52 opposition: ss 42, 58, 59, 60, 62 and 62A considered – s 58 ground established – registration refused

Background

1. These are oppositions brought by China Xiamen RGB Link Science & Technology Co (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade marks which are the subject of the applications detailed below in the name of RGBLINK PTY LTD (‘Applicant’): 

Trade Mark:	(‘Logo Trade Mark’)	RGB LINK (‘Trade Mark’)
Application Number:	1797770	1816208
Filing Date:	20.09.2016	29.12.2016
Goods and Services:	Class 9: Light emitting diode (LED) displays; Light emitting diodes (LED); Light emitting diodes (LED) for use in display boards; Light emitting diodes (LED) with plugs; Apparatus for processing digital video signals; Apparatus for processing video signals; Closed circuit video apparatus; Colour video processors; Digital video adaptors for displaying text with video pictures; Digital video adaptors for use with computers; Digital video apparatus for broadcasting; Video amplifying apparatus; Video apparatus; Video cameras; Video cards; Video devices; Video digitisers; Video display instruments; Video display screens; Video display terminals; Video display units; Video editing apparatus; Video monitors; Video players; Video processing apparatus; Video processors; Video projection monitors; Video projectors; Video screens; Video signalling apparatus; Video surveillance apparatus; Video switching apparatus; Video transmitters; Videos; Advertising display apparatus (electric or luminous); Advertising display signs (electric or luminous); Apparatus for displaying images; Apparatus for displaying information; Colour display apparatus; Computer display apparatus; Data display apparatus; Display monitors; Display signs of non-metallic materials (luminous or mechanical); Display terminals; Electric advertising apparatus with alternative displays; Electric devices for displaying information; Electronic display boards; Electronic display panels; Electronic displays incorporating moving lights; Electronic panels for displaying messages; Flat screen display apparatus; Graphic display apparatus (electric); Graphic display terminals; Information display apparatus (luminous); Roadside display boards (luminous); Score display apparatus (electric); Score display apparatus (electronic); Screens for use with visual display units; Television display apparatus; Television display monitors; Visual display apparatus; Visual display screens; Visual display terminals; Visual display unit text apparatus; Visual display units; Digital signs; Display signs of metal (luminous or mechanical); Electric signs; Illuminated signs; Illuminated signs used for advertising; Luminous signs; Luminous signs for roads; Portable signs (luminous) for roads; Road signs (luminous); Road signs, luminous or mechanical; Safety signs (luminous); Signs being illuminated; Signs, luminous; Signs, luminous, inflatable; Traffic signs (luminous); Directional signage (luminous or mechanical); Data processors; Advertising boards (electric or luminous); Advertising signboards (electric); Advertising signboards (luminous); Illuminated advertising apparatus; Illuminated advertising signs; Luminous advertising apparatus with alternative displays; Luminous advertising displays; Panels for advertising (luminous)	Class 9: Advertising display signs (electric or luminous); Apparatus for broadcasting audio signals; Apparatus for broadcasting visual signals; Apparatus for digital signal processing; Apparatus for displaying picture signals; Digital audio signal processors; Digital signal processing apparatus; Digital signs; Directional signage (luminous or mechanical); Display signs of non-metallic materials (luminous or mechanical); Electric signalling apparatus; Electric signs; Illuminated signs; Light signboards; Recording media for video signals; Road signs (luminous); Safety signals (luminous); Safety signs (luminous); Security apparatus for receiving video signals; Security apparatus for storing video signals; Set-top boxes (digital signal receivers); Sign boards (luminous); Signs, luminous; Transmitters of electronic signals; Video signalling apparatus; Light emitting diode (LED) displays; Light emitting diodes (LED); Light emitting diodes (LED) for use in display boards; Light emitting diodes (LED) with plugs; Apparatus for recording video; Apparatus for reproducing video; Apparatus for reproduction of video images; Audio and video receivers; Control apparatus for video reproducing apparatus; Digital interactive video adaptors for use with computers; Digital video apparatus for broadcasting; Digital video equipment for studio use; Large screen video projectors; Projection video apparatus; Video amplifying apparatus; Video apparatus; Video apparatus for television studios; Video devices; Video digitizers; Video display screens; Video display terminals; Video editing apparatus; Video effects apparatus; Video effects machines; Video enhancers; Video players; Video processors; Video recordings; Video screens; Video switching apparatus; Video transmitters; Video wall installations

1. Following the advertisements on 16 February 2017 (Logo Trade Mark) and 17 February 2017 (Trade Mark) in the Australian Official Journal of Trade Marks of the applications’ acceptance for possible registration, the Opponent filed Notices of Intention to Oppose on 13 April 2017 (Logo Trade Mark) and 13 July 2017 (Trade Mark).  The Opponent then filed Statements of Grounds and Particulars (‘SGP’) on 5 May 2017 (Logo Trade Mark) and 11 August 2017 (Trade Mark). The Statement of Grounds and Particulars for the Logo Trade Mark was assessed by this office as inadequate. On 23 June 2017, the Opponent filed an amended Statement of Grounds and Particulars for the Logo Trade Mark, which was assessed as adequate. The SGP for each trade mark raised grounds of opposition under ss 42, 58, 59, 60, 62 and 62A of the Act. The Applicant filed Notices of Intention to Defend on 6 July 2017 (Logo Trade Mark) and 12 August 2017 (Trade Mark).

2. I heard the matter in Canberra on 25 January 2019 as a delegate of the Registrar of Trade Marks. Andrew Musgrave of Counsel, instructed by Spruson & Ferguson Patent and Trade Mark Attorneys appeared by video link for the Opponent. The Applicant did not appear at the hearing, nor did it file any submissions.

   Evidence

3. The following evidence was filed in the opposition:

Declarant	Status	Date	Exhibits
Evidence in Support
Justin Knox (‘Knox declaration’)	Marketing Director of Opponent	25.09.17	1 to 18
Rhiannon Patricia Solomon (‘Solomon declaration’)	Trade Marks Attorney employed by Attorneys for Opponent	16.11.17	1 and 2
Evidence in Answer
Ross Johnston (‘Johnston declaration’)	Managing Director of Applicant	22.02.18
Evidence in Reply
Ben Hu (‘Hu declaration’)	Founder and Managing Director of Opponent	30.04.18	1 and 2

1. In the Knox declaration ([4] to [6]), the Opponent’s Marketing Director states:

   4. The Opponent is a Chinese company that manufactures high quality technology, including audio and video processing hardware and software products. The Opponent is also one of Asia’s leading professional audio and video companies.

   5. The Opponent’s has used the plain word “RGBlink”, and the following logo in relation to video and audio equipment, since as early as 2008 [hereafter collectively referred to as ‘the Opponent’s RGBlink brand’]:

   6. The Opponent’s RGBlink brand is known throughout the world for video processors, converters, multi-viewers, rack mount monitors and routers.

2. The Knox declaration also (at [17], [18], and Exhibit 7) states that since 2009 the Opponent has offered goods and services via its website at and that there is no restriction upon users of the internet accessing the site from Australia. The Opponent’s product catalogs are available on the website, and the ‘RGBlink brand’ is used as a trade mark therein.   

3. The Solomon declaration exhibits a letter from an Australian company, Light & Sound Solutions, stating that commencing in 2011it has purchased the Opponent’s products for many years. The Solomon declaration also exhibits an August 2017 brochure of Light & Sound Solutions that includes relevant products sourced from the Opponent.

4. The Johnston declaration states that the Applicant was formed on 15 December 2016 and acquired the application for the Logo Trade Mark on 1 January 2017, when it commenced branding one of its product lines ‘as RGBLink’.

5. The Johnston declaration also states that the Applicant sells LED Screens, LED Signs, LED Radar Signs, LED Scrolling Signs, LED Messaging Signs and LED Light Boxes for the Australian market.

6. The Johnston declaration details that the Applicant conducted searches for RGBLINK on the Australian Trade Mark Register, and Australian business and company name registers to ensure that it was not infringing on any Australian companies’ rights.

   Grounds of Opposition, Onus and Standard of Proof

7. As indicated in the SGPs, the Opponent nominated grounds of opposition under ss 42, 58, 59, 60, 62 and 62A. To oppose the application successfully the Opponent needs to establish at least one of those grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 58. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

8. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The dates at which the rights of the parties are to be determined are 20 September 2016 (Logo Trade Mark) and 29 December 2017 (Trade Mark), being the filing dates of the applications in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

   Discussion

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   Section 58 – Applicant not owner of trade mark

9. The ground based on s 58 of the Act was particularised in the SGPs as follows:

   The Opponent is the first to use the RGBlink marks internationally, including in Australia, and is therefore the proprietor of the RGBlink marks at common law.

   In view of the above, neither the former or present Applicant are the proprietor of the Opposed mark in Australia.

10. Section 58 of the Act provides that:

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

11. It is well established law that, in order to succeed under this ground, the Opponent must identify a trade mark that:

    ·     is identical or substantially identical to the applied-for trade mark (Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 120 ALR 495);

    ·     has been used in respect of goods or services being the ‘same kind of thing’ as those in relation to which the applied-for trade mark has been filed or used (ReHicks’s Trade Mark (1897) 3 ALR 75); and

    ·     has been used by a person other than the applicant and that other person has the earlier claim to ownership based on use before the priority date or first use date of the applied-for trade mark (Settef SpA v Riv-Oland Marble Co (Vic.) Pty Limited (1987) 10 IPR 402 at 413 and Re:Hicks’s Trade Mark, supra.).

12. Therefore, to establish its section 58 ground the Opponent must show that it or some party other than the Applicant first used the trade mark (or one ‘substantially identical’ thereto) in Australia in connection with the ‘same kind of thing’ as the applied-for goods and services before 20 September 2016 (Logo Trade Mark) and 29 December 2017 (Trade Mark) or before the Applicant’s first use of the trade marks for those goods or services, whichever is the earlier.

13. There can be no argument that the competing trade marks in this opposition are exactly the same, and are being used for the same kind of goods.

14. I am satisfied that the Opponent has established that it has made its products available for purchase in Australia under its trade marks since at least 20102011, when Light & Sound Solutions began to purchase goods from the Opponent. In contrast, the earliest use established by the Applicant is 1 January 2017.

15. I find that the Opponent has established its s 58 ground of opposition.

    Decision

16. Section 55 of the Act relevantly provides:

    55Decision

    (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)to refuse to register the trade mark; or

    (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:For limitations see section 6.

17. The Opponent has established a ground of opposition under the Act. As a result, the Applicant is unsuccessful in this matter and I refuse to register trade mark applications 1797770 and 1816208.

    Costs

18. As it has been successful, the Opponent is entitled to its costs to be assessed at the official scale and I award costs accordingly against the Applicant.

    Jock McDonagh
    Hearing Officer
    Oppositions and Hearings
    18 April 2019