Everwell Healthcare Pty Ltd v Northern Beaches Health Pty Ltd

[2024] ATMO 12

TRADE MARKS ACT 1995

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

Re:Opposition by Everwell Healthcare Pty Ltd to registration of trade mark application number 2118446 (class 44) - Evincy - in the name of Northern Beaches Health Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Self-represented

Applicant: Self-represented

Decision:

2024 ATMO 12

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 58, 59, 60, and 62A pursued – s 62A established – trade mark refused registration

Background

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Everwell Healthcare Pty Ltd (‘Opponent’) to registration of the trade mark detailed below in the name of Northern Beaches Health Pty Ltd (‘Applicant’):

Number:         2118446 (‘Application’)

Trade Mark:    Evincy (‘Trade Mark’)

Filing Date:       9 September 2020 (‘Relevant Date’)

Specification:  Class 44: Consultancy relating to cosmetics; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Cosmetic electrolysis; Cosmetic make-up services; Cosmetic surgery; Cosmetic treatment services; Electrolysis for cosmetic purposes; Advisory services relating to medical services; Alternative medical services; Cardiology (medical services); Charitable services, namely providing medical services; Complementary medical services; Consultancy and advisory services in relation to medical services; Dermatology (medical services); Emergency medical services; Endocrinology (medical services); Gastroenterology (medical services); General practice (GP) medical services; Medical consulting services relating to offshore medical services; Medical services; Medical services for treatment of the skin; Neurology (medical services); Oncology (medical services); Ophthalmology (medical services); Paediatric medical services; Providing information including online, about medical services, and veterinary services; Provision of medical services (‘Applicant’s Services’)

[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

1. The Application was advertised as accepted for possible registration on 10 February 2021.  The Opponent filed a Notice of Intention to Oppose on 9 April 2021 followed by its Statement of Grounds and Particulars (‘SGP’) on 19 April 2021.  After obtaining an extension of time, the Applicant filed a Notice of Intention to Defend on 5 August 2021.

2. Evidence in Support (‘EIS’) of the opposition was filed by the Opponent on 24 February 2022.  The Applicant filed Evidence in Answer (‘EIA’) on 24 May 2022 which was followed by the filing of the Opponent’s Evidence in Reply (‘EIR’) on 1 August 2022.

3. After the evidence stage ended, the parties were given the opportunity to request a hearing.  The Opponent requested a hearing by written submissions but did not file any written submissions.  The Applicant did not ask to be heard but filed written submissions on 21 November 2023.  The Applicant did not pay the hearing fee even after being informed by this office that its submissions would not be considered unless the fee was paid.  This matter was allocated to me as a delegate of the Registrar of Trade Marks to determine.  I have not had regard to the Applicant’s submissions given that the fee was not paid and make my decision based on the SGP, EIS, EIA and EIR.

Grounds, Onus and Relevant Date

1. In the SGP, the Opponent particularised grounds of opposition under ss 58, 59, 60, and 62A. 

2. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are to be determined is the Relevant Date.  The Relevant Date is also the priority date for the purposes of s 60.

Opponent’s Evidence

1. The Opponent filed the following evidence which is summarised in the paragraphs below:

• EIS - Declaration of Fangyu Ye, director of the Opponent, made on 24 February 2022 with Attachments 1 to 34 (‘Ye 1’); and

• EIR - Declaration of Fangyu Ye made on 1 August 2022 with Attachments 1 to 4 (‘Ye 2’).

1. According to Ye 1, Ms Lu Wang was a director of the Applicant from 7 March 2017 to 5 July 2019.  During that time, the Opponent claims Ms Wang was also connected to the Opponent in that she was:

• employed full-time by the Opponent’s subsidiary Everwell Medical Group Pty Ltd (‘EMG’) from 1 October 2018 to 12 October 2020 as ‘State Manager of NSW’.  Ye 1 annexes a copy of an employment agreement between EMG and Ms Wang dated February 2020, copies of Ms Wang’s payslips from Etewell Group Pty Ltd (another subsidiary of the Opponent) dated from October 2018 to 2020 and a copy of the letter terminating Ms Wang’s employment dated 11 October 2020. 

• a director of the Opponent’s subsidiary Everwell Medical Centre (Chatswood) Pty Ltd (‘EMCC’) from 16 April 2018 to 2 July 2020; and

• a shareholder of the Opponent and EMG.

1. Although Ms Wang resigned as a director of the Applicant on 5 July 2019, the Opponent claims that the Applicant is owned and operated by Ms Wang’s immediate family and Ms Wang continued to have actual control of the Applicant.  In support of this allegation, the Opponent details various allegations about the conduct of Ms Wang including that:

• Ms Wang used the principal place of business of EMCC and the Opponent’s Evincy Cosmetic Medical Centre (Chatswood) (‘Opponent’s Chatswood address’) as the registered address and principal place of business of the Applicant from mid-2019 to September 2020;

• in addition to filing the present application, on 4 September 2020, the Applicant filed application number 2117662 for EVERWELL in class 44 which is a trade mark that the Opponent claims to have used since 7 April 2016;

• Ms Wang added herself as the administrator (‘admin’) of the Opponent’s Evincy Medical Cosmetic account on Facebook (Opponent’s Evincy Facebook Account’) after her employment with EMC ended and deleted the Opponent’s Facebook page.  Extracts from Facebook showing that Ms Wang added herself as the admin of the Opponent’s Evincy Facebook account and scheduled the account to be deleted in December 2020 are annexed; and

• The name Lu Wang with the email address [email protected] was listed as the contact for the Applicant in the Objective Connect workspace for these proceedings as at 24 February 2022.

1. Ye 1 provides that the Opponent first used the Trade Mark on 15 August 2017 when it registered Evincy Cosmetic Group Pty Ltd and used the mark as a cosmetic brand.  The Opponent then expanded its business opening an Evincy Medical Centre in Melbourne in April 2018, then subsequently opening 2 more Melbourne clinics under the Trade Mark before opening a centre in Chatswood on 1 November 2019 (‘Opponent’s Evincy Centres’).  Copies of the company extracts for the entities incorporated to operate these centres are included in Ye 1.  Also annexed is a copy of an undated brochure for ‘Evincy Australia Cosmetic Medical Group’ listing the addresses for the Opponent’s Evincy Centres.

2. Ye 1 outlines the social media accounts and website that the Opponent set up to promote the Opponent’s Evincy Centres.  Examples of these accounts and copies of articles about the Opponent’s Evincy Centres targeted at Chinese speakers living in Australia are annexed to Ye 1.

3. In 2019, the Opponent’s Evincy Cosmetic Medical Centre was the designated cosmetic brand of the “world-renowned Chinese dating show ‘If you are the One’ Australian Specials’”.  An article about this show (and English translation) is annexed.

Applicant’s Evidence

1. The EIA consists of a declaration of Xuguang Wang, director of the Applicant, made on 18 May 2022 with attachments (‘Wang’). 

2. Wang denies many of the claims in the EIS.  In particular, the Applicant claims that the Opponent has only used ‘EvincyCosmetic’ not Evincy and that there is no proof of use since 2017. 

3. According to Wang, Ms Lu Wang founded the Applicant.  The Applicant acknowledges that Ms Wang was a director and shareholder of the Applicant until 2019 but claims that there was no conflict with Ms Wang also being employed by the Opponent.

4. Wang declares that the Applicant has no relationship with the Opponent and that the Trade Mark was filed after Ms Wang’s directorship ceased and after conducting a search of IP Australia’s trade mark Register.

5. Wang explains that the principal place of business of EMCC was used as the registered address of the Applicant because the Applicant had a business relationship with Lifeco Nature Pty Ltd (‘Lifeco’) whereby the Applicant was to develop a herbal product on behalf of Lifeco and provide regulatory assistance.  A copy of the first page of the agreement between the Applicant and Lifeco is attached which is addressed to Dr Lu Wang, Lifeco at one of the Opponent’s addresses. 

Discussion

Section 62A

1. Section 62A provides that the registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. The term bad faith is not defined in the Act but as Bennett J explained in DC Comics v Cheqout Pty Ltd (‘DC Comics’), bad faith does not require dishonesty or fraud, ‘it is a wider notion, potentially applicable to diverse species of conduct’.[4]  Her Honour noted that:

Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[5]

[4] [2013] FCA 478, [63].

[5] Ibid [62].

1. Justice Bennett further observed in DC Comics that all of the circumstances surrounding the application to register a trade mark are relevant[6] and moreover, conduct after the filing of an application can be used to shed light on the applicant’s subjective intent at the time of filing.[7]

   [6] Ibid.

   [7] Ibid [71].

2. To summarise the particulars of this ground of opposition outlined in the SGP, the Opponent claims that given the connections of Ms Lu Wang to the Opponent and the Applicant, Ms Wang was responsible for the filing of the Application for the Trade Mark which she knew to be the intellectual property of the Opponent.

3. It is apparent from the Opponent’s evidence that Ms Lu Wang was intimately involved in the business of the Opponent being at one time a shareholder in both the Opponent and EMC, a director of EMCC during which time the Opponent opened its Evincy Chatswood Centre at the same address as EMCC, and the NSW State Manager of EMG which company owned the entity operating the Evincy Chatswood Centre.  Ms Wang was clearly aware of the Opponent’s Evincy Facebook account and had the necessary details to access the account, albeit after the Relevant Date, to add herself as the admin and schedule the deletion of the account.  In the circumstances, I consider it is highly improbable that Ms Wang was unaware of the Opponent’s use of the Trade Mark for cosmetic medical services.

4. Therefore, the relevant question is whether the Applicant had the same knowledge as Ms Wang.  Ms Wang was the founder of the Applicant and a director until 5 July 2019.  After resigning as a director, the Opponent’s Chatswood address was recorded as the registered office of the Applicant from 18 July 2019 to 26 September 2020 and as the Applicant’s principal place of business from 6 August 2019 to 19 September 2020.  The Applicant claims that this was because it was operating from Lifeco’s office to provide product marketing support and assist with applying for a trade mark for Lifeco.  The Opponent disputes that this was the case.  Further, there are no documents supporting the Applicant’s claim that it was working with Lifeco in 2019 to 2020 with the most recent invoice in the EIA from the Applicant to Lifeco dated July 2018.  In any event as the Opponent notes in Ye 2, if indeed the Applicant was working from the Opponent’s Chatswood address it would be well aware of the Opponent’s Evincy Chatswood Centre operating at the same address. 

5. The Applicant has not provided any explanation for the adoption of the Trade Mark, nor the mark EVERWELL which the Opponent claims to own.  In the absence of any explanation in the EIA as to how the Applicant chose the Trade Mark, the logical conclusion is that Ms Wang suggested the mark or was otherwise involved.  Further, whilst the Applicant attests that it undertook a trade mark search prior to filing the Application, a simple Google search would have revealed the Opponent’s use of the Trade Mark.        

6. In addition, the EIA fails to address the Opponent’s claim that the Applicant is owned and operated by Ms Wang’s immediate family members.  The company extract for the Applicant in Ye 1 shows that the sole director of the Applicant since 12 July 2020 is Xuguang Wang who obviously shares the same name as Ms Wang and also shows that Ms Wang and Xuguang Wang were born in the same province suggesting a relationship between the two.  Although Ms Wang resigned as a director and sold her shareholding in the Applicant in July 2019, the listing of her name as the contact for the Applicant in these proceedings and apparent relationship to Xuguang Wang suggests that this is the case.

7. In all the circumstances, I am satisfied on the balance of probabilities that the Applicant knew of the Opponent’s use of the Trade Mark prior to the Relevant Date for the same or similar services to the Applicant’s Services.  The Applicant has not explained in its EIA, the reason for adopting and applying for two marks used by the Opponent for the same services.  The Applicant had a close and likely ongoing relationship with Ms Wang and for the reasons explained at [22]-[26], effectively stood in the same position as Ms Wang and should have known that it should not apply for registration of the Trade Mark.  I am satisfied that the Applicant’s conduct in applying for the Trade Mark was exploitative and falls short of the ’standards of acceptable commercial behaviour observed by reasonable and experienced persons’.[8]

   [8] Ibid [77].

8. The Opponent has established a ground of opposition under s 62A.

Decision and Costs

1. Section 55 relevantly provides:

55  Decision

(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.

1. I have found that the Opponent has established a ground of opposition and I therefore refuse to register the Trade Mark. 

2. Both parties sought an award to costs. As the Opponent has succeeded in its opposition, I award costs against the Applicant under s 221 in the amounts set out in Schedule 8 of the Regulations

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

24 January 2024