David Loh v Yonho Food (China) Co., Ltd

[2025] ATMO 7

TRADE MARKS ACT 1995

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

Re:Opposition by David Loh to applications under section 92 of the Trade Marks Act 1995 (Cth) by Yonho Food (China) Co., Ltd. to remove trade mark numbers 1524488 (43) – four Chinese characters and 1566088 (29, 30) – YONG HE SOYA KING and four Chinese characters – in the name of David Loh1

Delegate:

Louise Tuohy

Representation:

Removal Opponent: By George Legal

Removal Applicant: A.P.T. Patent and Trade Mark Attorneys

Decision:

2025 ATMO 7

Trade Marks Act 1995 (Cth) – application under section 92 – section 92(4)(b) – evidence does not show use of 1566488 – evidence shows partial use of 1566088 – discretion not exercised – 1566488 to be removed – 1566088 to be partially removed

Background

1. On 25 July 2023, Yonho Food (China) Co., Ltd. (‘Removal Applicant’) filed applications under s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] (‘Removal Applications’) for the complete removal from the Register of Trade Marks (‘Register’) of the following registered trade marks (collectively the ‘Marks’) in the name of David Loh (‘Removal Opponent’):

   [1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the  Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Trade mark number: 1524488

Trade mark:                     (‘488 Mark’)

Filing date:  7 November 2012

Specification:              Class 43:  Arranging for the provision of food; Arranging of wedding receptions (food and drink); Charitable services, namely providing food and drink catering; Club services for the provision of food and drink; Coffee bar and coffee house services (provision of food and drink); Consultancy services relating to food; Consultancy services relating to food preparation; Consultancy, advisory and information services in relation to the provision of food and drink; Consultation services relating to food; Country club services (provision of food, drink and temporary accommodation); Country clubs (providing food, drink and accommodation); Food and drink catering; Food cooking services; Food hygiene services; Food preparation; Hospitality services (food and drink); Internet cafe services (provision of food and drink prepared for consumption); Night club services (provision of food and drink); Old people's home services (provision of accommodation and food and drink); Preparation of food and drink; Preparation of take-away and fast food; Providing food and drink; Providing information, including online, about services for providing food and drink, and temporary accommodation; Provision of carry out foods and beverages; Provision of information relating to the preparation of food and drink; Restaurant services for the provision of fast food; Retirement home services (Provision of accommodation and food); Social clubs (Provision of food); Take away food services; Take out food and beverage services; Takeaway food and drink services; Theatre restaurants (Provision of food and drink)

(‘488 Services’)

Endorsement:              The applicant has advised that the English translation of the Chinese words YONG HE DOU JIANG appearing in the trade mark is YONG HE SOYA MILK.  

And

Trade mark number:  1566088

Trade mark:                    (‘088 Mark’)

Filing date:  2 July 2013

Specification:   Class 29: Soya based dairy substitutes; soya milk; soya desserts; tofu

Class 30: Soya; snack food products made from soya flour; soya based ice cream products; soya bean paste; soya sauce

(‘088 Goods’)

Endorsement:              The applicant has advised that the CHINESE characters appearing in the trade mark may be transliterated as YONG HE DOU JIANG which may be translated into English as YONG HE SUBURB SOYA MILK.

1. On 2 October 2023, the Removal Opponent filed Notices of Intention to Oppose the removal of its Marks, followed by its Statements of Grounds and Particulars (‘SGPs’) on 2 November 2023. On 3 December 2023, the Removal Applicant filed Notices of Intention to Defend the Removal Applications.

2. The Removal Opponent filed the following declarations as evidence in support (‘EIS’):

• Declaration of David Wai Hoong Loh, the Removal Opponent, made on 4 March 2024, with Annexures DL-1 to DL-10 (‘Loh’).

• Declaration of Joel Brady Masterson, Director of By George Legal, the lawyers for the Removal Opponent, made on 5 March 2024, with Annexure JM-1 (‘Masterson’).

1. The Removal Applicant did not file evidence.

2. Once time for filing evidence had ended the parties were given an opportunity to request a hearing. Both parties requested to be heard by way of written submissions. The matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks. I make my decision based on the particulars set out in the SGPs, the EIS and written submissions filed by both parties.

Legal Framework

1. Part 9 of the Act deals with removal of trade marks from the Register due to non-use. The Removal Applicant nominated s 92(4)(b) as the ground for removal.

2. Section 92(4)(b) provides:

   (4)  An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

   (a)…

   (b)  that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)  used the trade mark in Australia; or

   (ii)  used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

3. Under s 92(4)(b) the relevant period during which the Removal Opponent must establish use of its Marks is the three year period ending on 25 June 2023 (‘Relevant Period’).

4. An application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application.[2] I confirm that five years since filing the Removal Applications have in fact passed.

   [2] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

5. Pursuant to s 100(1), the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b). The Removal Opponent must show on the balance of probabilities[3] that it has used its Marks, or a mark with additions or alterations not affecting the identity of its 488 Mark in relation to the 488 Services, or of its 088 Mark in relation to the 088 Goods, in good faith in Australia within the Relevant Period.

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

6. In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’. [4] Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[5] Little weight is to be given to assertions of use which are not supported by documentary evidence.[6] In Nodoz Trade Mark, Wilberforce J 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’.[7]

   [4] [2001] FCA 261, [16].

   [5] Ibid [17].

   [6] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).

   [7] (1962) RPC 1, 7.

7. In accordance with s 101, if the ground for removal is established, I may decide to remove the Removal Opponent’s Marks from the Register in respect of any or all of the goods or services identified in the Removal Applications, or if satisfied it is reasonable to do so, decide not to remove the Removal Opponent’s Marks from the Register.

Use of the Trade Mark during the Relevant Period

1. In Loh, Mr Loh states that he is the creator and founder of several business, predominantly in the food sector, including the restaurant Kitchen Republik (‘KR’) in Box Hill, Victoria and the retail store and restaurant Foodle in Maribyrong, Victoria. Mr Loh states that he coined the 488 and 088 Marks back in 2012 and 2013 respectively in the lead up to the opening of KR.

2. Mr Loh states that the KR business is operated by Food Republic Australia Pty Ltd (‘FRA’). Annexure DL-8 to Loh comprises an extract from the Australian Securities & Investment Commission (‘ASIC’) for FRA. The details provided show that FRA was incorporated in February 2012 and lists two directors being Chia Hung Kuo and David Wia Hoong Loh. 

3. Mr Loh states that the Foodle business is operated by Big Supermarket Pty Ltd (‘BIG’). Annexure DL-10 to Loh comprises an extract from ASIC for BIG. The details provided show that BIG was incorporated in September 2021 and lists Tomohiro Suzuki as the sole director.

4. Mr Loh states that no formal written licence documents exist between himself and FRA or BIG for the Marks. Mr Loh claims that practically, he exercises control, including quality control, over the way in which the Marks have been, and continue to be, used by FRA and BIG. Mr Loh states that the way in which he exercises control over FEA and BIG use of the Marks is by being closely involved in the day-to-day management and operations of both businesses. This includes exercising quality control on a regular basis over the food and drink products, both packaged and unpackaged, including the branding of those products. Mr Loh declares that he is also involved in all other day-to-day aspects of running the FRA and BIG businesses including the financial aspects, employment issues and business direction. 

Use of the Marks at KR

1. Mr Loh states that in 2012 FRA opened KR a concept restaurant designed to replicate a typical Asian hawker market. Although the venue is one restaurant operated by FRA, it gives the appearance of diners having a choice of ordering from various stalls at the hawker market. Mr Loh states that its Marks function as the name of one of the stalls and two signs depicting the Marks have been displayed since it opened in 2012.

2. Annexure DL-2 to Loh comprises a screenshot of a photo taken by a traveler and posted to tripadvisor.com.au dated February 2020. The photo shows the 088 Mark on display inside KR.

3. Annexure JM-1 to Masterson comprises photographs taken in February 2020 and April 2023 from inside the KR. The photographs show the 088 Mark on display inside KR.

4. Annexure DL-3 to Loh comprises a copy of an article published in The Guardian, dated 4 November 2023. The article includes a photograph taken inside KR with the image of the 088 Mark appearing in the exact same location as it did in the photograph posted in tripadvisor and the photographs comprising Annexure JM-1 to Masterson. 

5. Mr Loh states that the menu at KR contains a section in which food and drinks are offered to consumers under and by reference to its Marks. Annexure DL-4 to Loh comprises an undated photograph of KR’s menu which displays the 088 Mark at the top of the menu page and includes the food item Yong He Soya Milk which is listed under the Chinese characters appearing in the Marks:

1. It is also noted that the food item soya bean curd is also offered in the menu which is the same as the good tofu in class 29 which is covered by the 088 Mark.

2. Mr Loh declares that the KR menu appearing in Annexure DL-4 is the same menu that has been in use at KR since its inception.

Use of the Marks at Foodle

1. Mr Loh states that Foodle opened on 10 June 2023 and is a novel Asian grocery store and restaurant concept which has attracted media attention. Annexure DL-5 to Loh comprises a copy of an article titled It’s a shop, a restaurant, a phenomenon: You could easily spend half a day at Asian megastore Foodle published in The Age, dated 2 August 2023.

2. Mr Loh states that since about September 2023 Foodle has been offering for sale and selling soya milk products under or by reference to its Marks. Mr Loh claims that it took about 3 to 4 months to get the soya milk product on the shelves from the time he decided to sell the product at Foodle. This was because, although Mr Loh used the same supplier for the soy milk as the soy milk which sold at KR, he needed to package the product in an entirely different way for retail sale in a supermarket. This included working out how to bottle and label the product and getting the process of bottling and labelling underway.

3. Annexure DL-6 to Loh comprises a copy of an email from Kevin Wu a Senior Graphic Designer for Epicurefood to Yumi Owada and copied to David Loh dated 21 July 2023. The email attaches the label design for a soya milk product and features the following trade mark representation:

(‘Label Mark’)

The label also includes a statement which states that the soya milk product is ‘Packed for Epicure Foodsolutions’.  

1. Confidential Annexure DL-7 to Loh comprises unit sales figures of Yong He Soya Milk, from September 2023 to February 2024.

2. In my assessment of the evidence I find that the Removal Opponent’s 488 Mark appears in the menu listing for the item Yong He Soya Milk. Therefore, I am satisfied that the 488 Mark has been used in relation to soya milk in class 29.  In regard to the 088 Mark the evidence shows that the KR restaurant services are offered under the 088 Mark. The 088 Mark is displayed on the wall inside the KR restaurant precinct, and it appears at the top of one of the pages in KR menu which lists offerings from the corresponding food hall stalls. As such, I am satisfied that the 088 Mark has been used in relation to restaurant services in class 43 and its soya milk and tofu offerings in class 29. However, the 488 Mark covers services in class 43 and the 088 Mark covers goods in classes 29 and 30. Therefore the question remains as to whether the use of the 488 Mark is use of the 088 Mark.

3. Under s 100(3)(a), I must consider whether use of the 488 Mark is use of the 088 Mark with additions or alterations not substantially affecting its identity. The test is the same as the test in respect of substantial identity and this requires that the Marks are considered side by side while having regard to the essential features of the Marks.[8] Where a total impression of resemblance emerges from the comparison, the Marks will be considered substantially identical. For the purposes of comparison, I have reproduced the respective Marks below:

   [8] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

488 Mark 088 Mark

1. The 488 and 088 Marks both include endorsements. The 488 Mark’s endorsement advises that the Chinese characters may be transliterated as YONG HE DOU JIANG, which may be translated into English as YONG HE SOYA MILK. The 088 Mark’s endorsement advises that the Chinese characters may be transliterated as YONG HE DOU JIANG, which may be translated into English as YONG HE SUBURB SOYA MILK.

2. On a side by side comparison there are clear differences between the Marks. While both Marks share the same Chinese Characters, the 488 Mark is for the Chinese characters solus which are presented in a horizontal format. In comparison the 088 Mark is presented in a vertical format and includes the English words YONG HE SOYA KING which is different to the English translation of the Chinese Characters appearing in both Marks being YONG HE (SUBURB) SOYA MILK. As the English words appearing in the 088 Mark are not the translation of the Chinese characters, the situation is not the same as the approach taken by the High Court in E & J Gallow Winery v Lion Nathan Pty Ltd[9] that upheld a finding from the trial judge[10] that use of the word BAREFOOT in combination with a footprint device was use of a registered trade mark for the word BAREFOOT simpliciter. As such I find the Marks are not substantially identical. The total impression emerging from a side by side comparison is not one of similarity. Therefore, I do not consider that use of the 088 Mark is use of the 488 Mark with additions or alterations not substantially affecting its identity.

   [9] (2010) 241 CLR 144 (French CJ, Cummow, Heydon, Crennan and Bell JJ).

   [10] [2008] FCA 934, [186] (Flick J).

3. In this case the problem for the Removal Opponent is that while both Marks have been used at KR I have only found use of the 488 Mark in relation to soya milk in class 29 and the 088 Mark has been used in relation to restaurant services in class 43 and soya milk and tofu offerings in class 29. Therefore, the only use found of the Removal Opponent’s Marks for the relevant registered goods or services is for the 088 Mark in relation to soya milk and tofu in class 29.

4. I also find that the use of the Marks at KR is use by the Removal Opponent. Mr Loh is listed as one of two directors of FRA which operates KR. As such I am satisfied that FRA and the Removal Opponent operated with a unity of purpose during the Relevant Period.[11]

   [11] Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ).

5. In regard to the use of the Marks at Foodle, the soya milk product was not offered for sale until September 2023 which is after the non-use period. Moreover, the soya milk product label refers to Epicure Foodsolutions as being the entity which the soya milk product is being packaged for, and there is no evidence of its relationship with the Removal Opponent.

Obstacles to Use

1. A removal opponent may rebut an allegation of non-use by establishing that a failure to use the Marks in the relevant three year period was ‘because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period’. The circumstances must be ‘an obstacle to the use of the trade mark by the registered owner’.[12]

   [12] Woolly Bull Enterprises Pty Ltd v. Reynolds [2001] FCA 261, [47] (Drummond J).

2. The Removal Opponent submits that the only times that KR was not open was during the COVID-19 related lockdowns. Furthermore, Mr Loh states that Foodle was supposed to open much earlier than June 2023. Mr Loh claims that in 2021, a provisional agreement to lease premises had been entered into and design of the store had commenced. However, the management of the precinct changed and the lease fell through and a search for alterative premises had to be undertaken.

3. In my consideration the Removal Opponent has not provided any cogent evidence of business plans to use the Marks in relation to the full range of 488 Services or 088 Goods during the COVID-19 lockdowns or at the Foodle store. As such I am not satisfied that bare statements by the Removal Opponent constitute circumstances that amounted to matters that were an obstacle to use of the Marks in the Relevant Period, pursuant to s 100(3)(c).

4. The ground for removal under s 92(4)(b) has been established in respect of all the 488 Services and following 088 Goods:

   Class 29: soya based dairy substitutes; soya desserts

   Class 30: Soya; snack food products made from soya flour; soya based ice cream products; soya bean paste; soya sauce

Registrar’s discretion

1. Section 101(3) provides:

   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.

2. The Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[13]

   [13] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

3. In this matter, the question is whether it is reasonable not to remove the Removal Opponent’s Marks in respect to all of the 488 Services and the remainder of the 088 Goods even though the Removal Opponent did not establish that it had used its Marks in relation to those services and goods.[14]

   [14] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28] (Jacobson, Yates and Katzmann JJ).

1. In E & J Gallo Winery v Lion Nathan Australia Pty Ltd,[15] Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark[16] were of assistance in considering the exercise of the discretion:

   [15] [2008] FCA 934, [209].

   [16] [1982] RPC 425.

• there had been no abandonment of the trade mark;

• the registered proprietors of the trade mark still had a residual reputation in the mark;

• there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;

• the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; and

• the registered proprietors were not aware of the applicant’s sale under the mark.

1. The public interest and the interests of the parties are inherent in the above factors. In this regard Austin, Nichols & Co Inc v Lodestar Anstalt provided the following guidance:

   The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners.[17]

   [17] [2012] FCAFC 8, [38].

2. The Removal Opponent’s submits that his long-term engagement in the launch of the Foodle business and work he did with a graphic designer shortly before the Removal Applications were filed demonstrates a very clear good faith intention to use the Marks in relation to soya milk goods. The Removal Opponent states that he has given uncontested evidence to the effect that when this work was being done, he had never heard of the Removal Applicant or any of its products, and did not know that the Removal Applications would be filed. In addition, the Removal Opponent submits that the delay caused to the launch of his Foodle business by the COVID-19 pandemic provides additional reasons for the discretion to be exercised in his favour.

3. The Removal Applicant submits that there has never been use or authorised use of the Marks by the Removal Opponent. The Removal Applicant submits that the evidence shows that Epicure Foodsolutions is the source of the Yong He Soya King branded product and removal of the two registrations will not stop that continuing.

4. It is the Removal Applicant’s contention that the Marks should be removed as new applications to register the subject trade marks can be made by an entity that has a unity of purpose with Epicure Foodsolutions, to more accurately reflect the origins of the products sold in relation to the Marks. It is submitted that the public interest in this regard should be given substantial weight.

5. The Removal Opponent acquired the rights to the 488 Mark in 2012 and the 088 Mark in 2013. Although the Marks have been registered for over a decade, there is insufficient evidence of use of the Marks outside the Relevant Period to establish the existence of any residual reputation in the Marks in regard to the 488 Services or the remainder of the 088 Goods.

6. Overall the public interest is not served by allowing the unused Marks to remain registered in respect of the 488 Services or the remainder of the 088 Goods for which the Removal Opponent has no demonstrated intention of providing. The Removal Opponent focuses on its use of the Marks in relation to its soya milk product, however I found that it used its 088 Mark in relation to this product at KR. I am unpersuaded that the removal of the Marks in relation to the 488 Services or the remainder of the 088 Goods would result in consumer confusion or practically impact on the interests of the Removal Opponent. As such I decline to exercise the discretion.

Decision

1. I direct that trade mark registration 1524488 be removed in respect of all the registered services in class 43 and that trade mark registration 1566088 be partially removed in respect of the following goods in classes 29 and 30 one month from the date of this decision (items represented in strikethrough to be removed from the registration):

   Class 29:    Soya based dairy substitutes; soya milk; soya desserts; tofu

   Class 30:  Soya; snack food products made from soya flour; soya based ice cream products; soya bean paste; soya sauce

2. In the event of an appeal, I direct that the removal of the registered 088 Services and the remainder of the registered 488 Goods shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court see fit.

Costs

1. Both parties sought an award of costs. As both parties have had a degree of success, I decline to award costs.

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

10 January 2025