Harbin Brewing Co., Ltd - [2012] ATMO 48

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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2012] ATMO 48
Decision Date: 11 May 2012

CaseChat Overview and Summary

This matter concerned an application by Harbin Brewing Co., Ltd (the Holder) to register the trade mark "HARBIN" in relation to beverages. The application was opposed by another party, and the court was required to determine whether the trade mark was inherently adapted to distinguish the Holder's goods or had acquired distinctiveness through use in Australia.

The primary legal issues before the court were whether the trade mark "HARBIN" was inherently adapted to distinguish the Holder's beverages under section 41(6) of the relevant Act, and whether the Holder had provided sufficient evidence of use of the trade mark in Australia to establish distinctiveness. The court also considered the potential for other traders to use the word "HARBIN" to indicate the origin of their beverages.

The court reasoned that "HARBIN" is a geographical name and not inherently adapted to distinguish the claimed goods, as other traders might legitimately use the word to indicate the origin of their beverages. Furthermore, the court found the evidence of use in Australia to be insufficient. While the Holder provided various documents, including registration certificates from China and sales agreements, many were in Chinese without translation, making it impossible to ascertain the nature of the goods or confirm the trade mark's use on them. Although some point-of-sale material featured the trade mark, the court was not satisfied that this, in conjunction with the other evidence, established sufficient use to demonstrate distinctiveness in Australia. The court referenced the principle from *Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors* that different parts of packaging can contribute to a trade mark's branding function.

The court ultimately found that the trade mark was not inherently adapted to distinguish the goods and that the evidence of use in Australia did not establish distinctiveness. Consequently, the application for registration was not successful.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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.

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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