Hisense Corp v Zheng Shi

[2005] ATMO 38

TRADE MARKS ACT 1995

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

Re:Opposition by Hisense Corporation to registration of trade mark application 807708(9) - HISENSE AND DIVIDED DISC DEVICE - filed in the name of Zheng Shi.

Delegate:

Terry Williams

Representation:

Opponent: Deborah Jackson, solicitor, Spruson & Ferguson

Applicant: Zheng Shi

Decision:

S 52 opposition: s 42: copying established, breach of copyright – s 58 and 59: both established on lack of answer to opponent’s evidence – registration refused.

Background

1. Zheng Shi has applied to register the following trade mark. 

1. The Trade Marks Office has also published the following information:

   The applicant has advised that the Chinese characters appearing in the trade mark may be transliterated as HAIXIN which may be translated into English as HISENSE.

2. Mr Shi’s application is in class 9, for goods listed as:

   Golf indoor computer game played via a computer and a virtual golf club, (the liquid crystal display on the head of the all-purpose club displays yardage, par, course geography and wind conditions and pressing a button on the grip simulates the club striking the ball); virtual computer games relating to sports, weight reduction, diving or driving and all played via a computer; exposed photosensitive materials including amateur photographic films, cinefilm, aerial and aerospace film, X-ray film, graphic film, scientific and technical film; photo processing kits; boxes namely electric devices that record the motion of the course of computers, machines, aeroplanes and submarines; metal detectors; detectors being environmentally friendly equipment for detecting water or air ingredients; speakers for audio equipment or microphones; magnetic recording materials including high speed duplicating tape, audio cassette tape, video tape, computer tape, magnetic film and floppy disc, magnetic cards, magnetic cards; compact disc/digital video disc writer/driver, floppy/zip disc writer/driver; cartridges for storing tapes, cassettes or discs; cameras/video cameras; computer printers; projection equipment, overhead projectors; batteries, satellite navigation equipment, street pilot systems; electric devices for repelling insects; scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, solar energy equipment, automatic driving systems, electric maps/indicators, lie detector machines; apparatus for recording, transmission or reproduction of sound or images, including televisions, video recorders, super video compact discs (SVCD), portable audio equipment, radios, robots, portable radio/cassette/CD players; telephones, mobile phones and satellite phones, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin operated apparatus; cash registers; calculating machines; data processing equipment and computers, including computer parts and accessories, computer software for sending and receiving electronic mail; fire extinguishing apparatus; electric ID cards, alarms, security systems; laser equipment (not for medical purposes); electric locks; translating equipment; and parts and accessories for all of the above.

3. After examination, the application was accepted for registration.  However, registration of the trade mark has been opposed by Hisense Corporation, of Quindao, in China.  I heard the parties and am to decide the opposition under delegation from the Registrar of Trade Marks.

4. It is common ground that the trade mark below

was previously owned and used in China by HiSense Corporation, including on goods sent to Australia.  That trade mark is now on the register as number 804055, registered in respect of air conditioners.

1. When the matter came on for hearing, the opponent was represented by Deborah Jackson, solicitor, of the patent attorney firm of Spruson and Ferguson.  Mr Shi appeared and put submissions on his own behalf.  Mr Shi has some informal knowledge of law but he had with him neither a qualified legal advisor nor a translator.  Equally, from the material on the file and his comment at the hearing, Mr Shi does not have a good knowledge of written English.  Therefore, in the interests of fairness, I will try and deal with the most relevant issues as simply and as briefly as possible.

Evidence

1. Mr Shi asserted that he is entitled to rely on unsworn evidence that he sent to the opponent’s lawyers and filed at the Trade Marks Office.  This was in answer to the opponent’s own evidence, which I will not list in detail.  Mr Shi believes that his own material would show some of the opponent’s evidence to be untrue, the opponent’s claims to be based on over-stated facts and that such facts as are in the evidence are irrelevant to the fate of the present application.

2. On 11 August 2004, just after he filed this evidence, a senior examiner in the Hearings Section of the Trade Marks Office wrote to Mr Shi and explained, in very plain language, just what was required of evidence in a trade mark matter.  Mr Shi agreed that he had received this letter.  Most important in it was the warning that evidence must be in the form of a declaration.  The letter explained what a declaration was and the senior examiner offered to return Mr Shi’s material so that it could be properly sworn.  Mr Shi has not responded to this, other than to ring me after the hearing and confirm that the material was filed at the Trade Marks Office within the proper time.  I also accept that the material sent to the opponent’s attorneys was sent within the proper time.

3. The problem with Mr Shi’s material is not the time at which it was sent, but its form.  It would not be proper for me to give any weight at all to unsworn written assertions. 

Issues and Decision 

Contrary to law – Copyright Act

1. Ms Jackson’s strongest argument is that the use of the trade mark by Mr Shi would be an infringement of the copyright held in the device element by the opponent.  It is clear that this is a relevant issue, since breach of the Copyright Act would be a use contrary to law and this would be relevant to the opponent’s ground under s 42 of the Trade Marks Act.

2. Mr Shi appeared to understand the issue at the hearing.  He replied that the device was not exactly a copy, that others had used the mark, and that when he filed the application in 1999 the trade mark was not owned by the opponent.  He claimed that he could not have copied the trade mark as it was not a trade mark in Australia at that date.  However, I understood Mr Shi to say that he got the idea from Hisense.  Mr Shi went on to attempt to cover a number of issues that do not appear to be greatly relevant, such as the present ownership of the trade mark in other countries, and the fact that there were, so he said, many Hisense companies.  He mentioned the uncertainty of the Pinyin translation.  However, he repeated that he had copied only a part of the opponent’s trade mark and that “This part I reference to them”.  Mr Shi was at that time pointing to the device portion of the mark.

3. Ms Jackson replied that authorship of the device was attributable to the opponent in 1994, and that this was clearly more than the taking of an idea, this was a plain copying in material form.

4. Mr Shi claimed that the Copyright Act relied on exact sameness, that merely copying part of a protected work was not enough.  He also said that, for some reason that I was not able to understand, there is a five year limit on all claims made under copyright or other laws.  Section 5 of the Paris Convention was also relevant, he said.

5. To come to the point, the Copyright Act 1968 is a piece of Australian law that does not need the support of the Paris Convention and is not subject to any limits imposed by treaty obligations unless those limits are written into the legislation itself.

6. Section 36 of the Copyright Act reads:

   Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.

7. Section 31(1) defines the right comprised.  In relation to an “artistic work” (see below):

   (1)         For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a work, is the exclusive right:

   (b)         in the case of an artistic work, to do all or any of the following acts:

   (i)           to reproduce the work in a material form;

   (ii)          to publish the work;

8. The relevant issues appear to be:

Extension of copyright protection to China: section 184 of the Copyright Act extends copyright protection to works published in China, which acceded to the Berne Convention in 1992.  Therefore, copyright in its original work in China is protected by Australian law.

Artistic work: the disc device is an artistic work for the purposes of s 10 of the Copyright Act. While it is doubtless at the bottom of the artistic barrel, that is not fatal.  All that is required is that the work be new, originate with the author and not be a copy of other material.

Copying:  I am satisfied that Mr Shi derived the disc device from the opponent’s original artistic work by copying, given the identity of the disc devices and Mr Shi’s own submissions on the topic.

Substantial part: Mr Shi’s trade mark includes the entire of the opponent’s artistic work. I understood Mr Shi to say that he believed it was legal to copy an artistic work provided that slight changes were made. This appears to be incorrect. Section 14(1) of the Copyright Act deals with the copying of a substantial portion of an artistic work.  Mr Shi also said that the logo was not the entire of his own trade mark.  However, since each use of his trade mark would involve an unlawful copying of the opponent’s artistic work, the use of his trade mark would be contrary to law.

1. Mr Shi disputed that the trade mark was originally coined by the opponent.  However, the evidence of its derivation, on behalf of the opponent, by Beijing Mu Sen Lin Advertising Planning Co Ltd, is in the opponent’s evidence.  As I understand Mr Shi, his argument is based on the fact that others may have used the trade mark since then, perhaps outside China, and that there are a number of Hisense companies.  Since these claims are not supported by evidence, I will not consider them in detail.  I regret that in any case I do not fully understand their relevance.

2. I am satisfied that the use of the trade mark by Mr Shi would be an unauthorised publication of a work that is subject to copyright.  Such use would be contrary to law and this ground of opposition is therefore established.

Other issues

1. Very briefly, Ms Jackson also relied on grounds of opposition under sections 58, 59, 60 and 62.

2. Firstly, Ms Jackson argued that the opponent, rather than Mr Shi, is the owner of the trade mark because it was the first user of the same mark for the same kind of thing.  In brief, I agree with her that the addition of the Pinyin characters and their transliteration, Hi Sense, do not alter the sameness of the mark in question[1].  However, the opponent’s first use was on air conditioners, which are outside the scope of Mr Shi’s application, as he argued at the hearing.  I reject Ms Jackson’s argument that any of the class 9 goods specified, even the “detectors being environmentally friendly equipment for detecting water or air ingredients” or the general run of “scientific …electric … apparatus and instruments” in class 9 are sufficiently close.  Since the first use claimed by the opponent in relation to any relevant goods - televisions only – did not occur until 2002, the opponent has not established prior use. 

   [1] Once copying is established, it is hard to see how there is any good public policy to be served in giving undue weight to the mere addition of a translation and transliteration of that which has been copied.

3. However, Ms Jackson also attacked the intention of the applicant to use his trade mark. This can go to both ownership under s 58[2] and to, in the present tense, s 59. Ms Jackson referred to the evidence in support, which suggests that Mr Shi has no potential to manufacture the goods in question, a pattern of filing applications for trade marks that were known in China, and that Mr Shi had, in the course of offering to withdraw the application in return for 5 Million RMB (about $800,000 Australian), asserted:

   I have considered to cooperate with your company in the first stage and intend to import your products bearing the mark “HiSense”.  However, considering the factors of the prices and qualities, etc I cannot contact your company further.  I file the application in order to import your products easily without further purposes”

   [2] See Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401 on the importance of intention to use when applying for a mark not previously used in Australia.

4. These things, taken together, are sufficient to require an answer from Mr Shi. While Mr Shi asserted at the hearing that he is able to import relevant goods from various factories in China and does and will market them in Australia under the trade mark, this is all simply unsworn assertion. It may well be that Mr Shi is defeated on this issue by his failure to bring the right evidence in the form of a declaration. However, on the evidence as it is, I find that, while he may well import and sell goods in this country under other trade marks, Mr Shi does not have a resolve and settled purpose to use the present trade mark in Australia, and that he did not have such an intention at the time of filing. He was not entitled to put himself forward as the owner of the trade mark. The differing but related grounds under s 59 and s 58 are therefore established.

5. Ms Jackson also attempted to argue that the opponent’s trade mark had a reputation in Australia.  However, there is very little evidence of any real reputation in Australia in 1999.  While the opponent’s trade mark is registered in China as a famous trade mark, Mr Shi said at the hearing that this did not mean what it might appear to at face value.  He went on to make various assertions about the number of such registrations, suggesting that they did not mean that the trade marks in question were necessarily well-known in that country.  While I cannot give great weight to those claims, I think that I should be cautious in putting undue weight on the consequences of registrations when I am completely ignorant about the practice of the registry in question. 

6. Mr Shi went on to assert that at the time he filed his application, the opponent was unknown outside one city in China, Quindao, where the opponent is located. While this last assertion is interesting, and could almost support the opponent’s case, I think that the small amount of direct evidence on which I can rely and the uncertain weight that I can put on some aspects of it, show that I am on safer ground to find that the opposition fails under s 60.

7. Ms Jackson also argued that there were false representations made as to ownership when Mr Shi filed his application. However, the decision to accept the application had nothing to do with a consideration of ownership. Prima facie, an application is a claim to ownership and lack of ownership is not a ground of rejection under Part 4 of the Trade Marks Act and cannot, therefore, be an issue in the acceptance of the application.

8. Finally, Ms Jackson looked at the history of the application.  It had lapsed in late 2001, then been revived and afterwards the statement of goods had been amended.  She first argued that the application had been improperly revived.  Ms Jackson argued that therefore the amendments made to the revived application were contrary to the Act.  While I agree that the Act does not allow amendment of an application that is no longer pending, the fact is that Mr Shi was granted more time to set his application in order.  At that point it became again a pending application and was no longer a lapsed one.  I do not think that I have the power to overturn that decision, which was apparently made in good faith.  It follows that, since I cannot declare the application to be lapsed, the attack on the amendments must fail.

Conclusion

1. The opponent has made out grounds of opposition under sections 42, 58 and 59 of the Act. I refuse to register the application.

2. I direct that Mr Shi pay the opponent its costs up to the limit set out in the regulations.

Terry Williams

Hearing Officer

Trade Marks Hearings

30 June 2005