Harbin Brewing Co., Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:International Registration Designating Australia 1370743 (IR No. 1041941) (32) - HARBIN- in the name of HARBIN BREWING CO., LTD.

Delegate:

Heath Wilson

Representation:

Holder: John O’Mahoney of Collison & Co Patent & Trade Marks Attorneys

Decision:

2012 ATMO 48

Reg 17A.24: section 41 of the Trade Marks Act 1995 - evidence insufficient - IRDA refused protection in Australia.

Background

Harbin Brewing Co., Ltd (‘the Holder’), being a company based in Harbin City, Heilongjiang Province, China applied on 26 April 2010 to extend the protection in Australia for an International Registration Designating Australia (`the IRDA'), the current details of which are:
Trade Mark No.: 1370743
International Registration No.: 1041941
Class 32: Beer; beer wort; malt wort; non-alcoholic fruit extracts; non-alcoholic fruit juice beverages; non-alcoholic fruit drinks; water (beverages); mineral water (beverages); cola drinks; lactic acid beverages (fruit products, non milk)
The Holder’s trade mark was examined under regulation 17A.12 of the Trade Marks Regulations 1995 (‘the Regulations’) and the examiner issued a provisional refusal on 28 July 2010. The objection was made under section 41(5) of the Trade Marks Act 1995 (‘the Act’) and the details of that objection as described by the examiner were:
Your IRDA is refused as the trade mark is not capable of distinguishing the specified goods/services because HARBIN is a city in China. Other traders should be able to use this term to indicate the origin of their similar goods.
On 24 October 2011, IP Australia received a response from the Holder’s Australian legal representative along with a statutory declaration of Miguel Nuno Da Mata Patricio (legal representative of Harbin Brewing Co., Ltd) dated 8 October 2011 with attached exhibits HB1 to HB5.
A second examination report was issued on 11 November 2011 maintaining the ground for rejection under section 41(5). The examiner was critical in particular of the Holder’s evidence stating that the examples were not use of the trade mark as applied for. On 17 November 2011, the Holder’s legal representative provided further response to the second report and requested the examiner review the evidence previously submitted. However, a third report issued on 24 November 2011 maintaining the ground for rejection and reiterating that “the mark does not function as a badge of origin for the goods, rather as a direct description on the origin of the goods (sic)”.
Subsequently, on 3 February 2012 the Holder requested a hearing from the Registrar on the matter. No further evidence was submitted by the Holder and the submissions made were similar in content to those previously before the examiner. The hearing took place in Canberra on 10 April 2012 before me as a Delegate of the Registrar of Trade Marks. John O’Mahoney of Collison & Co, Patent and Trade Marks Attorneys represented the Holder.
Discussion
Section 41 of the Act relevantly provides (with notes omitted):
Section 41: Trade mark not distinguishing applicant’s goods or services
(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a)the Registrar is to consider whether, because of the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.
(6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
The initial test for the inherent adaptability of a trade mark to distinguish was set out by Justice Kitto in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd[1] as follows:
The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.
[1] (1965) 112 CLR 537 at 555.
The Holder’s trade mark consists of the word HARBIN presented in a slightly stylized font. The extent of stylization in the font is minimal and I find that it does not make an appreciable difference to my overall determination. HARBIN is defined in the Macquarie Dictionary[2] as:
[A] city in north-eastern China, the capital of Heilongjiang province.
[2] The Macquarie Dictionary Online. © Macquarie Dictionary Publishers Pty Ltd (2012).
In 2006, the city of HARBIN had an estimated population of 3,075,300.[3] It is clearly a geographical name but it does not have an obvious connection to beer and non-alcoholic beverages. Despite this fact, the nature of the goods is such that they may be manufactured in a wide range of geographical areas, and due to the size of the Chinese city, there is a potential connection or association with the goods.
[3] Oxford Dictionary of English. (Edited by Angus Stevenson. Oxford University Press, 2010).
A ground for rejection (or opposition) made under section 41 (or section 24 under the 1955 Act) in relation to a geographical name is not a new development. In the ‘Michigan’ case[4], Justice Kitto stated:
The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if the goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, ie in its own nature, adapted to distinguish the applicant's goods...
[4] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 [at 515]. See also Oxford University Press v Registrar of Trade Marks (1990) 17 IPR 509 (OXFORD for printed publications).
HARBIN is a geographical place where it is reasonable to suppose that beverages may in the future be produced. Consequently, I am not satisfied that the Holder’s trade mark is prima facie inherently adapted to distinguish the claimed goods from those of other traders such that it may be accepted under section 41(3) of the Act. The remaining consideration is whether HARBIN is to some extent inherently adapted to distinguish (s41(5)) or lacks any inherent adaptation (s41(6)) to distinguish the claimed goods.
In Blount v Registrar of Trade Marks,[5] Branson J considered the word OREGON (within a border device) in relation to power tool accessories under the provisions of section 41(6) and more recently delegate Thompson, in deciding that the word ‘FIJI’ for natural spring water should be assessed under section 41(6) rather than section 41(5), commented[6]:
[T]he use of the word FIJI as a trade mark for ‘water’ is not fanciful, as might be NORTH POLE for bananas, or SAHARA for lettuce. Neither is the word the name of a place where the goods are unlikely to originate. The word is one which is needed in the normal course of trade, without improper motive, by other traders in Fiji to describe the origin of their goods.
[5] [1998] FCA 440; (1998) 40 IPR 498.
[6] Paramount International Export, Ltd [2009] ATMO 94.
Some guidance is also contained in the following paragraph from part 15.1 of the Trade Marks Office Manual of Practice & Procedure (my emphasis added):
The following geographical names have no inherent adaptation to distinguish:
· Geographical names with some obvious or potential connection with the goods or services. This would include big cities where the likelihood of a connection with most goods or services is high but also tourist destinations with very small populations where the goods or services relate to tourism.
On the level of inherent adaptation to distinguish the goods, Mr O’Mahoney argued that the name HARBIN is not immediately recognisable to the average Australian consumer as the name of a city. It is true that in terms of recognition and reputation the city HARBIN is not in the same category as Beijing (for example), but this does not address the main issue as articulated by the Federal Court in Oxford University Press:[7]
The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration; see Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at 515-516.
[7] Oxford University Press v the Registrar of Trade Marks [1990] FCA 175; 24 FCR 1 (at 41).
The word HARBIN does not appear to have any other meaning apart from the primary one, that is, the name of the city in China. I am also mindful of the reasoning of the Full Federal Court’ in Colorado Group v Strandbags Group[8] where Justice Allsop considered the distinctiveness of ‘Colorado’ as applied to backpacks, bags, wallets, purses and shoes, and commented (at 129):
On this basis, the correct next step might be seen to be to examine the position under s 41(6) on the hypothesis that the trade mark is not inherently adapted to distinguish the designated goods or services from those of others: cf Woolworths Ltd v BP plc (No 2) [2006] FCAFC 132; (2006) 154 FCR 97. The respondent, however, accepted in submissions in its approach to the appeal that the word was to some extent inherently adapted to distinguish the designated goods or services and submitted that the relevant enquiry was under s 41(5). It is unnecessary, therefore, to consider the application of s 41(6) and whether it would lead to any different result than would the application of s 41(5).
Justice Gyles, in the above case, affirmed (at 30):
Further, I agree, for the reasons stated by Allsop J, that the use by the respondent of the word "Colorado" is relevant to an inquiry under s 41(5) of the 1995 Act (and, for the same reasons, an inquiry under s 41(6)). Having regard to the evidence, which is set out in detail by Allsop J, it is tolerably clear that, as his Honour concludes, it cannot be said that, as at 2001, the appellants’ use of the word "Colorado" alone or in conjunction with any device was such that the word did or would distinguish the designated goods as being the appellants’. If s 41(5) applied, then it did not assist the appellants. There seems no reason to believe that s 41(6) would offer them any greater assistance.
[8] Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184; (2007) 74 IPR 246.
To the extent that the above judgment provides any guidance on whether the ground for rejection under section 41(5) or 41(6) is appropriate in the current matter, the implication from the court is that in the absence of the concession by the respondent, the appropriate position would have been to examine that trade mark under section 41(6) of the Act.[9]
[9] This interpretation of the Full Federal Court’s reasoning was affirmed in Yarra Valley Dairy Pty Ltd v Lemnos Pty Ltd [2010] FCA 1367; (2010) 90 IPR 117 [at 76].
One of the arguments put to me by Mr O’Mahoney was that due to the extensive reputation of the Holder in China any use of the word HARBIN by other traders in Australia in relation to beer would only arise from other trader’s improper motives. Even if this proposition were accurate, it presumes a considerable reputation in the trade mark. Once it has been decided that the trade mark is not prima facie inherently adapted to distinguish the relevant goods, the onus lies with the Holder to demonstrate that reputation in the trade mark with the provision of evidence. The Holder’s argument therefore holds little weight in determining the level of inherent adaptation to distinguish.
In brief, HARBIN is not the name of a place where beverages are unlikely to originate and the word has no other meaning or connotation apart from the geographical signification it ordinarily possesses. While it is not specifically known for the production of these goods, it is a large city with a potential connection to them. Other traders (operating without improper motive) would need to use the word HARBIN to indicate the origin of their beverages in class 32. The IRDA is not inherently adapted to distinguish the claimed goods under section 41(6) of the Act.
The Holder’s Evidence of Use
The Holder attests that the first use of the trade mark in Australia was in July 2007 but it was first used in China as early as 1900. The trade mark has also been used in the United States, Hong Kong, Taiwan, South Korea, Russia, New Zealand, Singapore and Thailand.
The first exhibit in the declaration comprises various trade mark registration certificates from China. One of these registrations is identical to the Holder’s trade mark but a translation of the text in the certificate is not provided. The second exhibit consists of a sales and purchase agreement dated 20 May 2009 between the Holder and an Australian company. The Holder has filed a number of other documents some of which appear to be export invoices to Australian purchasers. However, the majority of the documents are in Chinese characters and without a translation I cannot determine the nature of goods sold or whether the goods featured the trade mark in question. In fact, one invoice instead refers to a different product being ‘12Degree Beer.’ The declarant does not adequately explain the content of these invoices and I am not satisfied that any of them establish use of the trade mark on the goods in Australia.
The third and fourth exhibits are point of sale material including pictures of mugs, ash trays, and umbrellas, some of which feature the Holder’s trade mark. While some examples appear to be used in conjunction with a distinctive device element, they cannot be easily disregarded as use of a different trade mark to the one applied for. This point was emphasised in Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors[10] where Allsop J stated in relation to aspects of packaging including the trade mark:
It is not to the point, with respect, to say that because another part of the label (the white section with "Budejovicky Budvar") is the obvious and important brand, that another part of the label cannot act to distinguish the goods. The "branding function" if that expression is merely used as a synonym for the contents of ss 7 and 17 of the TM Act, can be carried out in different places on packaging, with different degrees of strength and subtlety. Of course, the existence on a label of a clear dominant "brand" is of relevance to the assessment of what would be taken to be the effect of the balance of the label.
[10] [2002] FCA 390; 56 IPR 182 [at 191]; see also Wellness Pty Limited v Pro Bio Living Waters Pty Limited [2004] FCA 438.
The final exhibit is an article from the Sydney Morning Herald dated 5 April 2004. The article describes how SABMiller paid “$US86.6 million for 29.6 per cent of Harbin Brewery. Harbin has the fourth-ranked market share, 4.3 per cent”. While this points to the Holder’s presence in the overseas market, it provides little support for the recognition of the HARBIN brand in Australia.
In summary, there is some evidence of use of the trade mark but the extent of that use is insufficient and only accompanied by simple assertions of a reputation in Australia.
I note for completeness that even had I found the Holder’s trade mark contained a limited adaptation to distinguish the goods, the evidence of use, intended use or other circumstances provided by the Holder would still have been insufficient to allow the provisions of section 41(5) to be applied. As it is, I find that the trade mark is not capable of distinguishing its goods from those goods of other persons and section 41(6)(b) of the Act is applicable.
17A.24Final decision on examination
(1)The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:
(a)it is not in accordance with this Division; or
(b)there are grounds for rejecting it.
(2)The Registrar may accept the IRDA subject to conditions or limitations.
(3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:
(a)it is not in accordance with this Division; or
(b)there are grounds for rejecting it, in whole or in part.
The ground for rejection under section 41(6) has been established and I am satisfied that the IRDA is not in accordance with Division 3 of the Regulations. I reject IRDA no. 1370743 in respect of all the goods listed in the specification.
Heath Wilson
Hearing Officer
Trade Marks Hearings
11 May 2012

[2012] ATMO 48

11 May 2012