Hao Qi

[2019] ATMO 161

TRADE MARKS ACT 1995

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

Re:Opposition by Hao Qi to application under section 92 of the Act by Nick Wright for removal of trade mark number 1682249 (18, 25) – MICOCO - in the name of Hao Qui

Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented Applicant: Sean McManis of Shelston IP
Decision:	2019 ATMO161 Trade Marks Act 1995 (Cth) – section 96 opposition to s 92(4)(a) application for removal – intent to use inherent in filing of Trade Mark application – Opposition partially successful – opponent asserts its intention at the filing date to use the Trade Mark for some of the goods – Registrar’s discretion under s 101(3) not exercised in favour of the Opponent with respect to the remaining goods – Trade Mark to remain on Register for some goods

Background

1. This decision is pursuant to an application made on 25 October 2017 under s 92(4)(a) of the Trade Marks Act 1995 (‘Act’) by Nick Wright (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all of the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	1682249
Filing date	23 March 2015
Goods	Class 18: Airline travel bags; Articles of luggage being bags; Athletics bags; Bag covers; Baggage; Bags (envelopes, pouches) of leather, for packaging; Bags for campers; Bags for climbers; Bags for shaving kits; Bags for sports; Bags for toiletry kits; Bags for transport of clothes; Bags for use in sports for carrying sports clothing; Bags made of imitation leather; Bags made of leather; Beach bags; Belt bags; Book bags; Boston bags; Camera bags (other than adapted or shaped to contain a camera); Camping bags; Carrying bags (other than disposable carrier bags); Casual bags; Changing bags; Clutch bags; Cosmetic bags (not fitted); Cosmetics bags (not fitted); Courier bags; Cricket bags (other than adapted); Diaper bags; Diplomatic bags; Duffel bags; Duffle bags; Evening bags; Faeces collection bags for dogs and horses (animal clothing); Flight bags; Game bags (hunting accessory); Garment bags for travel; Gym bags; Hat bags; Jewellery bags (empty); Knitting bags; Leaflet bags for use by the person delivering; Leather bags; Luggage bags; Make-up bags; Medical bags for apparatus and instruments (not adapted or fitted); Messenger bags; Money bags; Nappy bags (other than bags for the disposal of nappies); Net bags for shopping; Nose bags (feed bags); Nurses bags; Overnight bags; Peg bags; Pilots' bags; Portable bags (luggage); Pouches (bags); Saddle bags (not shaped or fitted) (for cycles); Saddle bags for horse riding; School bags; Shaver bags (not shaped); Shoe bags; Shopping bag handles; Shopping bags; Shopping carts (wheeled shopping bags); Shoulder bags; Shoulder bags for use by children; Ski boot bags (not fitted or shaped); Sling bags; Sling bags for carrying animals; Sling bags for carrying children; Sling bags for carrying infants; Sponge bags (empty); Sport bags, other than adapted (shaped) to contain specific sports apparatus; Suit carriers being travelling bags; Tennis bags, other than adapted (shaped) to contain a racket; Tennis racket bags (other than adapted or shaped to contain a racket); Toilet bags; Toiletry bags; Tool bags (empty); Tool bags of leather (empty); Tool carriers (bags, empty); Tote bags; Towelling bags; Travel baggage; Travel bags; Travel bags made of plastic materials; Travelling bags; Two-wheeled shopping bags; Umbrella bags; Waist bags; Weekend bags; Wheeled shopping bags; Work bags; Wristlets (bags) Class 25: Apparel (clothing, footwear, headgear); Articles of clothing made from wool; Articles of clothing made of fur; Articles of clothing made of leather; Articles of windproof clothing; Athletic clothing; Belts (clothing); Casual clothing; Children's clothing; Clothing; Denims (clothing); Girl's clothing; Gloves (clothing); Halters (clothing); Hoods (clothing); Jackets (clothing); Knitted clothing; Knitwear (clothing); Ladies clothing; Leather belts (clothing); Linen articles of clothing; Maternity clothing; Pants (clothing); Plush clothing; Silk clothing; Sports clothing (other than golf gloves); Women's clothing; Woollen clothing; Casual footwear; Footwear; Footwear for women; Footwear parts; Parts of footwear; Headgear for wear; Denim jeans; Jeans; Dress shoes; Dresses; Dressing gowns; Evening dresses; Casual shirts; Dress shirts; Polo shirts; Shirt jackets; Shirts; Short-sleeve shirts; T-shirts; Casual jackets; Jackets for casual wear; Jackets for women; Wind jackets; Windproof jackets; Polo sweaters; Sweaters; Socks; Sports socks; Casual trousers; Trousers; Flat shoes; Heels for shoes; Leather shoes; Shoes; Shoes for casual wear; Boots; Hooded sweatshirts; Sweatshirts; Coats; Dressing coats; Fur coats; Half-coats; Leather coats; Sheepskin coats; Suit coats; Cloaks; Footless tights; Half length tights; Tights; Shorts; Athletics vests; Vest tops; Vests; Jumper dresses; Jumper suits; Jumpers (sweaters); Polo neck jumpers; Skirts; Blouses; Cardigans; Neck scarfs (mufflers); Scarfs; Hats; Sun hats; Pyjamas; Underwear; Quilted jackets  (‘Registered Goods’)
Owner	Hao Qi
Trade Mark	MICOCO (‘Trade Mark’)

1. Hao Qi (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 7 November 2017 and a Statement of Grounds and Particulars (‘SGP’) on the same day.  The Applicant filed a Notice of Intention to Defend on 6 December 2017.

2. The Opponent subsequently filed evidence in support of its opposition to removal that is discussed in more detail below.  The Applicant chose not to file evidence in answer. 

3. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party requested a hearing and on 7 June 2018 a letter was sent to the parties providing them with an opportunity to file any written submissions in this matter.  The Applicant filed written submissions on 9 May 2018 (‘Applicant’s Submissions’).  The Opponent did not file any submissions.    

4. I am a Delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Evidence in Support; and

   ·The Applicant’s Submissions.

   The Law

   6. Part 9 of the Act deals with removal of trade marks from the Register for non-use. In respect of this matter, s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (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)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

       (i)  to use the trade mark in Australia; or

   (ii)  to authorise the use of the trade mark in Australia; or

   (iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the non-use application relates and that the registered owner:

   (iv)  has not used the trade mark in Australia; or

   (v)  has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

   7. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a)  any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)  to use the trade mark in Australia; or
   (ii)  to authorise the use of the trade mark in Australia; or

   (iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the opposed application relates ( relevant goods and/or services ); or
   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or

   […]

   (3) For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or

   [...]

   8. I proceed on the basis that the standard of proof is the ordinary civil standard of the balance of probabilities.[1]

   [1] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156.

   9. In accordance with s 101, if a ground for removal is established, the Registrar may decide to remove the Trade Mark for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.[2]

   [2] s 101(3) of the Act.

   Opponent’s Evidence

   10.     The Opponent’s evidence in support filed in this matter consists of a declaration made on 4 January 2018 by Hao Qi, the Opponent, (‘Qi Declaration’) with several unidentified attachments.  It contains the following statements/evidence:

   ·The Opponent registered the company name Micoco Australia Pty Ltd on 18 March 2015 and bought the domain name micoco.com.au in the same year.  The Opponent has been running a women’s dress business under the MICOCO brand in China for 5 years and would like to open a fashion house in Surry Hills, Sydney, to sell women’s dresses under the MICOCO brand.   

   ·The Qi Declaration attaches details of the ASIC company registration, domain name registration, and website extracts of what is identified as the MICOCO Women’s Clothing Shop in China.

   Applicant’s Evidence

   11.     The Applicant did not provide any evidence in this matter.

   Discussion

   12. Though the onus is, in terms of s 100 of the Act, on the Opponent in this matter, that onus is not particularly arduous. In Aston v Harlee Manufacturing Co[3] Fullagar J observed:

   […] the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on … a motion to expunge, the burden must rest on … the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.

   [3] [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALJR 242, [21].

   13.     While this observation was made in proceedings under the Trade Marks Act 1955, where the onus was on ‘the person aggrieved’ (that is, an applicant for removal), the principle has been held to be sound under the Act. In Structureco Inc v Starite Distributors Pty Ltd[4] the Registrar’s delegate Mr Forno said:

   Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s.92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case - perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.

   [4] [2000] ATMO 31.

   14.     Wilcox J went further in Nikken Wellness Pty Ltd v van Voorst[5]:

   I do not think [the Opponent] bears any onus in relation to the application for removal. It is for the applicant for removal […] to persuade Court that the requirements of s 92(4)(a) are satisfied.

   [5] [2008] FCA 100; [2003] AIPC 91-904, [232]-[236].

   15. There is no evidence before me of any use of the Trade Mark in Australia, and the Opponent does not submit that any use has been made. The Opponent gives evidence, that I accept, that at the date the application to register the Trade Mark was filed, 23 March 2015, the Opponent had an intention to use the Trade Mark in Australia for women’s dresses. The Opponent provides no other evidence of intention to use or actual use of the Trade Mark in respect of the remaining Registered Goods. I find that the Opponent has satisfied its onus under s 100(1)(a) for the following goods: dresses, evening dresses (‘Remaining Goods’), and has therefore established its opposition in relation to s 92(4)(a) of the Act for the Remaining Goods. The Opponent has failed to satisfy the onus under s 100(1)(a) for the other goods for which the Trade Mark is registered (‘Unused Goods’).

   Registrar’s Discretion

   16.     As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[6] However, as indicated at paragraph 9, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

   a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[7]

   Her Honour also noted:

   By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[8]

   [6] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

   [7] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

   [8] Ibid [171]-[172].

5. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[9] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[10] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[11]

   [9] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [10] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [11] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

   18.     Factors that have been found relevant to the consideration of whether to exercise the discretion include:

   ·There had been no abandonment of the trade mark;

   ·The registered proprietor of the mark still had a residual reputation in the mark;

   ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

   ·The applicant 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;

   ·The registered proprietor was not aware of the applicant’s sales under the mark.[12]

   [12] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

   19. In the present case the Opponent has provided no evidence of any past, present or future use or intention to use the Trade Mark on the Unused Goods or any private commercial interest in the Trade Mark remaining registered for the Unused Goods. It is highly unlikely that the public would be affected in any way by the removal from the Register (for the Unused Goods) of a trade mark which does not appear to have been used and which is not therefore known by the public at all. In those circumstances I am not prepared to exercise the Registrar’s discretion pursuant to s 101(3) in favour of the Opponent to allow the Trade Mark to remain on the Register for the Unused Goods.

   Decision

   20.     I decide that the Opponent has partly established its opposition to removal and the Trade Mark should only be removed from the Register in respect of the Unused Goods.

   21.     Accordingly, I refuse to remove trade mark registration 1682249 in its entirety but direct that one month from the date of this decision the specifications of goods be amended to the goods listed below and the Trade Mark will be removed from the Register in respect of all remaining goods.  If the Registrar is served with a notice of appeal before then I direct that removal 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 sees fit.

   Class 25: dresses and evening dresses.

   Nicholas Smith
   Hearing Officer
   Hearings and Oppositions
   12 November 2019