Honor Device Co Ltd v Tencent Holdings Limited
[2025] ATMO 31
•12 February 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Honor Device Co., Ltd. to registration of trade mark application 2375282 (9, 41, 42) – HONOR OF KINGS (Figurative) – in the name of Tencent Holdings Limited
Delegate: Nicholas Smith Representation: Opponent: Clayton Utz
Applicant: Abion Australasia LimitedDecision: 2025 ATMO 31
Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44, 59, 60 and 62A considered – s 59 established in respect of a subset of the goods and services – amendment made deleting the goods and services for which the s 59 ground has been established – no other grounds established – trade mark to proceed to registrationBackground
This decision concerns an opposition brought by Honor Device Co., Ltd. (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Tencent Holdings Limited (‘Applicant’):
Application Number:
2375282
Filing Date:
27 July 2023
Priority Date[1]:
31 January 2023
Goods and Services:
Class 9: Computer game software; Computer games for use on mobile and cellular phones; computer software applications, downloadable; computer software, recorded; computer programs [downloadable software]; video game cartridges; electronic publications, downloadable; downloadable music files; downloadable image files; computer hardware; computer peripheral devices; computer keyboards; optical discs; mouse [computer peripheral]; mouse pads; wrist rests for use with computers; laptop computers; sleeves for laptops; tablet computers; covers for tablet computers; integrated circuit cards [smart cards]; memory cards for video game machines; joysticks for use with computers, other than for video games; security tokens [encryption devices]; USB flash drives; mobile telephones; cases for smartphones; protective films adapted for smartphones; cell phone straps; humanoid robots with artificial intelligence for use in scientific research, design and development of computer hardware and software, and computer gaming; virtual reality headsets; wearable video display monitors; headphones; materials for electricity mains [wires, cables]; wires, electric; batteries, electric; battery chargers; decorative magnets; animated cartoons; cinematographic film, exposed; earphones; cameras [photography]; portable power source (batteries); downloadable movies; editing machines for movie films; movie editing projectors; movie film developing machines; movie projectors; projection screens for movie films; holograms; animation software; 3d animation software; animated cartoons in the form of cinematographic films; video disks with recorded animated cartoons; downloadable cartoon videos; downloadable comic videos; downloadable electronic publications in the nature of comics, magazines, books, pamphlets, brochures, periodicals and journals in the field of animated cartoons, animated comics and cartoons; downloadable electronic cartoons; downloadable comic strips; downloadable software applications for viewing electronic cartoons and electronic comics; animated cartoons recorded on dvds, cds and as downloadable video files and as part of downloadable computer software; pre-recorded compact discs, dvds, cd-roms, featuring animated cartoons and animated comics.
Class 41: Game services provided on-line from a computer network; Providing online games; publishing and providing of computer games; organization of competitions [education or entertainment]; organization of cosplay entertainment events; publication of texts, other than publicity texts; providing on-line electronic publications, not downloadable; organization of shows [impresario services]; organization of exhibitions for cultural or educational purposes; arranging and conducting of congresses; presentation of live performances; entertainer services; television entertainment; film production, other than advertising films; providing on-line music, not downloadable; providing on-line videos, not downloadable; providing films, not downloadable, via video-on-demand services; providing television programmes, not downloadable, via video-on-demand services; entertainment services; entertainment information; recreation information; amusement park services; providing amusement arcade services; providing recreation facilities; club services [entertainment or education]; toy rental; games equipment rental; movie showing; movie projectors and accessories (rental of -); movie studio services; movie studios; planning of movie shows; production of special effects for films, animated films, cartoon films, advertising films, motion pictures and television programmes; providing facilities for movies, shows, plays, music or educational training; production of tv shows; editing of television programmes; preparation of television programmes; production of animated programmes for use on television and cable; production of entertainment in the form of a television series; entertainment services, namely, providing non-downloadable movies and television shows via a video-on-demand service; entertainment services, namely, providing a website for livestreaming audio, visual and multimedia content; publishing services.
Class 42: Computer software design; rental of computer software; technical services for the downloading of video games; hosting a website and providing web based services for online management of personal computer game software via a website; software as a service, namely, software for recording time in computer games and video games, software for displaying in-game data and scores, software for recording computer game and video game footage, software for taking screenshots of computer games and video games, software for computer game and video game enhancers; software as a service [SaaS]; platform as a service [PaaS]; software development in the framework of software publishing; information technology [IT] consultancy; installation of computer software; computer software consultancy; computer virus protection services; providing search engines for the internet; monitoring of computer systems by remote access; web site design consultancy; electronic data storage; cloud computing; outsource service providers in the field of information technology; computer technology consultancy; computer security consultancy; graphic arts design; industrial design; styling [industrial design].(‘Applicant’s Goods and Services’)
Trade Mark:
(‘Trade Mark’)
[1] Convention priority claimed: 31 January 2023, EUIPO No. 018830396, in respect of all items in the application.
Unless otherwise indicated, 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.
Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration on 27 October 2023 followed by a Statement of Grounds and Particulars (‘SGP’) on 24 November 2023. The SGP raised grounds of opposition under ss 42(b), 44, 59, 60 and 62A. The Applicant filed a Notice of Intention to Defend on 21 December 2023.
Evidence
The parties filed the following evidence in this matter:
Declarant and Position
Date
Annexures or Exhibits
Evidence in support
Xu Donghui, director of the Opponent (‘Donghui declaration’)
March 22, 2024
1 to 11
Evidence in answer
None filed
Evidence in reply
None filed
Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing. The Opponent requested that the matter proceed to a decision without hearing and paid the appropriate fee. As a result the matter has been allocated to a delegate of the Registrar of Trade Marks for a decision based on the written record.
I am a delegate of the Registrar and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.
In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.
The Opponent
The Opponent is a Chinese company that sells technology products under the HONOR brand.
The Opponent is the owner of 120 trade marks containing the term HONOR set out in Annexure A to this decision (‘Opponent’s Trade Marks’).
The relevant claims/statements in the Donghui declaration can be summarised as follows:
· The Opponent is a vendor of smart devices and technology products by reference to the Opponent’s Trade Marks. In particular the Opponent sells a line of smartphone models under the Opponent’s Trade Marks and is a leading smartphone vendor in China, with an 18% market share.
· The Opponent’s Trade Marks are advertised on the Opponent’s website, accessible globally and are displayed on the Opponent’s products. The Opponent also maintains a YouTube site, Instagram site and Twitter (now known as X) page. The Opponent’s products have been endorsed by various celebrities. The Opponent has used the Opponent’s Trade Marks on its smartphone and related products since 2016.
· The Applicant offers a mobile game title based in China known as Honor of Kings however the scope of the goods and services for which the Applicant seeks to register the Trade Mark is far broader then a mobile game title. Furthermore, the Applicant does not offer, nor does it apparently intend to offer the game under the Trade Mark outside China. Outside China the Applicant’s game has been released under the title ‘arena of valor’
The annexures to the Donghui declaration display various marketing materials that contain the Opponent’s Trade Marks, in various formats and with various taglines. The Opponent provides no evidence of sales in Australia or marketing targeted at Australia under the HONOR OF KINGS mark. Relevantly, Annexure 10 of the Donghui declaration, being a third-party media article, specifically states that while the Applicant’s HONOR OF KINGS mobile game was initially released internationally in 2020 as Arena of Valor, the Applicant plans to release the mobile game internationally in 2024 under HONOR OF KINGS.
The Applicant
The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 59, 60 and 62A. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.
The onus of proof in an opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined for the purposes of ss 42(b) 59 and 62A is 27 July 2023 (‘relevant date’), being the filing date of the application in Australia.[4] The Applicant has also claimed a Convention Priority date pursuant to the Madrid Protocol being 31 January 2023; this is the relevant date for the ground of opposition pursuant to ss 44 and 60. I note that nothing in my decision turns on the difference between the relevant date and the Convention Priority date.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth) s 29(1).
Discussion
Section 59
Section 59 is reproduced below:
Section 59 - Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:(a) to use, or authorise the use of, the trade mark in Australia, or
(b) 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 specified in the application.
The relevant date for assessing the Applicant’s intention to use the Trade Mark is the filing date being 27 July 2023.[5]
[5] See the discussion of the authorities in Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29, [31] (Hearing Officer Kirov). The relevant authorities are Suyen Corporation v Americana International Limited [2010] FCA 638; (Dodds-Streeton J) and Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (Keane CJ, Stone and Jagot JJ).
The nature of the intention in s 59 was considered by Jacobsen J in Health World Ltd v Shin-Sun Australia Pty Ltd where he stated:
In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[6]
[6] [2008] 75 IPR 478, [160].
There is a presumption that where an application has been filed the applicant, has the requisite intention.[7] However:
There is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made.
The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.[8]
[7] Aston v Harlee Manufacturing Co (1960) 103 CLR 391, 401 (Fullagar J) (‘Aston’).
[8] Ibid [162]-[163] (citations omitted).
Jacobsen J also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:
The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[9]
[9] Ibid [161] (citations omitted).
In view of the authorities discussed above, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the relevant date the Applicant lacked the requisite intention. If the Opponent establishes a prima facie case the onus then shifts to the Applicant for rebuttal. The relevant intention requires that an applicant must have ‘a real intention to use, not a mere problematic intention, not an uncertain or indeterminate possibility, but it means a resolve or settled purpose which has been reached at the time when the mark is to be registered’.[10] There must be ‘a real and definite intention’ to use the mark publicly as a trade mark in connection with the services applied for.[11]
[10] Re Ducker’s Trade Mark (1928) 45 RPC 397, 402.
[11] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [158] (Jacobson J).
Where the specification of goods and services in an application extends well beyond the goods or services in respect of which the applicant has previously used the mark, and the applicant has come nowhere near to launching the mark in relation to such goods or services, that is
indicative of an approach to registration that is not aligned with genuine intention, but rather to a desire to cover a field beyond the range of expected or intended use. Such an approach diminishes the benefit of any imputation arising from the fact of registration itself in the sense contemplated in Aston.[12]
[12] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [152] (Burley J) (‘Goodman Fielder’).
The Opponent has particularised this ground of opposition in the SGP as follows:
The Applicant did not at the priority date use, intend to use, or intend to authorise the use of HONOR OF KINGS as a trade mark in respect of all the applied-for goods and services. The applied-for goods and services are very broad. An intention to use the opposed trade mark on such a large range of goods and services is not supported by any obvious use online. Having put intention to use at issue, the onus shifts to the Applicant to demonstrate its intention to use the opposed mark for all the applied-for goods and services.
In the present case I am satisfied that at the relevant date the Opponent did have the intention to offer its HONOR OF KINGS mobile game in Australia and hence use the Trade Mark in Australia in connection with mobile games. Annexure 10 of the Douhai declaration is sufficient evidence of this. However, the breadth of the Applicant’s Goods and Services goes well beyond what one would expect of a provider of mobile games. The range of goods and services is sufficiently broad and implausible, including ‘humanoid robots with artificial intelligence for use in scientific research’ that for the reasons set out in Goodman Fielder, the Applicant does not obtain the benefit of the imputation that would normally arise from the registration.
Given the evidence filed by the Opponent, I find that the Opponent has established a prima facie case that at the relevant date, the Applicant lacked the intention to use the Trade Mark for any of the Applicant’s Goods and Services other than those relating to its HONOR OF KINGS mobile game. The Applicant is a large and well-resourced organisation that is legally represented and has clearly been put on notice, (by the provision of the SGP and the Opponent’s EIS) that lack of intention to use is an issue in these proceedings. It has chosen not to make any submissions or put on any evidence rebutting the Opponent’s prima facie case. Furthermore, I find it exceedingly unlikely that, had the Applicant held an intention to use the Trade Mark in respect of all the Applicant’s Goods and Services, or indeed any of the goods and services other than those relating specifically to its mobile game, there would be a complete absence of documents documenting that intention.
In assessing precisely which of the Applicant’s Goods and Services the Applicant intended to offer in Australia by reason of the intended sale of its mobile game, I note that there is no evidence that the Applicant has ever offered, or intended to offer any of the Class 42 services under the Trade Mark to a third party. For example, the fact that a party offers a mobile game for sale or download is not use of a mark for ‘computer software design’ as it is offering a software product, not design services.
The ground under s 59 has been established in respect of all the Applicant’s Goods and Services other than the goods and services listed below (‘Remaining Goods and Services’). It remains necessary to consider the remaining grounds of opposition for the Trade Mark in connection with the Remaining Goods and Services.
Class 9: Computer game software; Computer games for use on mobile and cellular phones;
Class 41: Game services provided on-line from a computer network; Providing online games; publishing and providing of computer games.Section 44
The relevant provisions of s 44 are reproduced below:
Section 44 - Identical etc. trade marks
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.Section 10 - Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1) and (2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered[13] by a person other than the Applicant:
· has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);
· is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and
· is in respect of similar goods/services, and/or goods/services which are closely related to, the Remaining Goods and Services (‘the third requirement’).
[13] or an international registration designating Australia protected or sought to be protected
In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, there are other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. In the present case as the Applicant has provided no evidence of use in Australia prior to the relevant date or other circumstances that would make registration of the Trade Mark proper, it is not necessary to consider these provisions.
The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks however it is ultimately only necessary to consider the Opponent’s Trade Mark number 1893534 for HONOR (‘HONOR Mark’). This mark has a priority date that is earlier than the priority date of the Trade Mark. It is registered for similar goods (computer software platforms, recorded or downloadable) and services (game services provided on-line from a computer network) as a subset of the Remaining Goods and Services and every other mark particularised by the Opponent is either identical to the HONOR Mark or contains additional elements that differentiates it from the HONOR Mark. If I were to find that the Trade Mark is not substantially identical or deceptively similar to the HONOR Mark I would necessarily reach the same conclusion for the remaining Opponent’s Trade Marks.
As noted in the paragraph above, the first and third requirements are satisfied with the HONOR Mark. It remains necessary to consider the second requirement.
Substantially identical and/or deceptively similar
I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Marks. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[14]
[14] [1963] HCA 66, [12].
The Trade Mark and the Opponent’s Trade Marks are set out below:
HONOR
On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the HONOR Mark and the Trade Mark with the Trade Mark having multiple additional elements that serve to differentiate it from the HONOR Mark. I move then to consider whether the Trade Mark and HONOR Marks are deceptively similar.
The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[15]
[15] Ibid [13].
The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[16] conveniently stated the relevant principles, which was summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[17] as follows:
[16] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[17] [2023] FCA 482, [55] (Jackman J).
(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[18]
[18] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).
(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[19]
[19] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
(c)the marks should not be compared side by side;[20]
(d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[21]
(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[22]
(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[23]
(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[24]
(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [25]
(i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[26]
(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[27]
(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[28] and
(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[29]
[20] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
[21] Ibid.
[22] Ibid.
[23] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [70], [77]-[80] (Yates, Abraham and Rofe JJ).
[24] Shell, [12].
[25] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).
[26] Campomar Sociedad Limitada v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[27] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).
[28] Australian Woollen Mills Ltd, 658.
[29] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) (‘Hastag Burgers’) citing Australian Woollen Mills, 657.
Furthermore the Court, in the same case, noted the following[30]:
In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[31]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[32], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[33]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[34]
[30] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[31] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (emphasis added) (Gummow J), approved in Henschke (2000) 52 IPR 42, 62 [44] (Ryan, Branson and Lehane JJ), Hashtag Burgers, [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598, [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42, [73].
[32] Act, s 68.
[33] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549, 589.
[34] Swancom (2022) 168 IPR 42, 59 [89]. See also Henschke (2000) 52 IPR 42, 62 [44].
As stated above, for the purposes of considering deceptive similarity, the reputation of the HONOR Mark is not a relevant factor.[35]
[35] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
Justice French expressed the view in Registrar of Trade Marks v Woolworths Ltd[36] (‘Woolworths’) that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter that, ‘[t] he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[37]
[36] Woolworths, [39].
[37] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).
In the present case, noting the stylisation of the Honor element in the Trade Mark is de minimus, I find that the Trade Mark wholly incorporates the HONOR Mark. Such marks are often deceptively similar such as the marks MY MELODY DREAMS and MY MELODY[38] however in some cases, a trade mark conveys an overall conceptual meaning sufficiently different from another trade mark which is contained within it, such that the trade marks are not deceptively similar. This was found to be the case in, for example, REBELLION vs SOUL REBELLION[39] and JOCKEY vs THROTTLE JOCKEY.[40] In the present case I consider the additional elements, being the target device and the words ‘of kings’ are more than sufficient to create an overall conceptual meaning that is sufficiently different from the Trade Mark such that consumer confusion is unlikely. The marks are visually and aurally dissimilar. Conceptually the HONOR Mark evokes the abstract concept of honour while the Trade Mark, including the target device, evokes the concept of honour surrounding royalty and warfare (potentially in the middle ages). While I acknowledge that the market in question for the Remaining Goods and Services is a broad one, I do not consider that the Applicant’s registration of the HONOR Mark provides it with a monopoly of all use of marks containing the element ‘Honor’ and the additional elements in the Trade Mark add sufficient distinctiveness that, taken as a whole, I am not satisfied, on the balance of probabilities, that there would be a real likelihood that some people will wonder or be left in doubt about whether the Remaining Goods and Services offered under the Trade Mark and the HONOR Mark come from the same source.
[38] Eau De Cologne’s Application (1990) 17 IPR 540 (Hearing Officer Thompson).
[39] Kingsley v Scott [2011] ATMO 20 .
[40] Jockey International Inc v Wilkinson [2010] ATMO 22 .
I find that the Opponent has failed to establish the ground of opposition under s 44.
Section 60
Section 60 is reproduced below:
Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.
Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:
The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.
The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[41]
[41] [2023] FCA 487, [20]-[21] (Kennett J)
In McCormick & Co Inc v McCormick[42], Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[43] Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[44]
[42] [2000] FCA 1335.
[43] Ibid, [81].
[44] (1992) 33 FCR 302, 343.
On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[45]
[45] (1999) 47 IPR 423, 436.
As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[46] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:
What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[47]
[46] [2000] FCA 1587.
[47] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
The Opponent has particularised the ground of opposition in the SGP in the manner set out below:
The trade mark/s had acquired reputation before the priority date of the trade mark being opposed
The Opponent has since before the priority date of the opposed application used its HONOR and HONOR formative marks in relation to a broad range of goods and services, including smartphones, virtual reality game software, monitors and headsets, wearable video display monitors, software for processing images, graphics and texts, software for smartphones, game services provided on-line from a computer network, design and development of video game software, design and development of virtual reality software and a range of associated goods and services.
As a result of these activities, the Opponent's HONOR and HONOR formative trade marks have generated a reputation and goodwill in Australia and internationally such that the Applicant's use of the opposed mark HONOR OF KINGS in respect of the applied-for goods and services in Australia would be likely to deceive or cause confusion.
While noting the negligible evidence provided by the Opponent of sales and advertising in Australia, I am satisfied on the evidence before me that the HONOR Mark had, before the relevant date, such a level of sales, advertising and reputation in China that there would have been spill-over reputation in Australia for smartphones, sufficient for the requirements under s 60(a). I do not reach the conclusion in respect of the remaining Opponent’s Trade Marks, as evidence of sales and advertising of individual products sold by the Opponent is limited.
It is not sufficient that the Opponent merely establish that its trade marks had a reputation; I must also be satisfied that, because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning trade mark infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:
An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.[48]
[48] (1937) 58 CLR 641, 658.
In Woolworths, French J highlighted the following further matters concerning confusion:
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[49]
[49] [1999] FCA 1020, [25]. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.
In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[50]
[50] [2012] ATMO 124, [40] (Hearing Officer Thompson).
While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[51]
[51] [2016] FCA 729, [142] (Yates J).
Finally I note that in considering whether there is a likelihood of confusion, I must consider the notional use of the Trade Mark by the Applicant, rather than actual use or any reputation in the Trade Mark held by the Applicant.[52]
[52] See, for example, McCormick & Company Inc v McCormick [2000] FCA 1335 where it was established that the fact that the Applicant might have been an honest concurrent user is not relevant to the operation of section 60.
In the present case I am not satisfied that by reason of the reputation held by the HONOR Mark in smartphones, confusion is likely to arise by reason of the use of the Trade Mark for the Remaining Goods and Services. I refer to my discussion of the differences in the Trade Marks under the s 44 ground, and note that those differences are not overcome by the limited reputation acquired by the HONOR Mark. Furthermore, the prospect of confusion is further limited because the market in which the Opponent’s HONOR Mark has established its reputation (smartphones, a hardware product) is different to the one in which the Trade Mark is sought to be registered (software).
I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.
Section 42
Section 42 is reproduced below:
42 - Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)). The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[53] The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[54]
[53] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[54] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).
The Opponent has particularised the ground of opposition in the SGP as follows:
Competition and Consumer Act 2010; Tort of passing off
The Opponent has failed to particularise a ground of the Competition and Consumer Act but on the evidence filed I assume the Opponent refers to ss 18 and 29 of the Australian Consumer Law (‘ACL’). As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the ACL is a more stringent one than that for deception or confusion under s 60,[55] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.
[55] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
Paraphrasing the statement of the Registrar’s delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[56], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Justice Beaumont considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[57] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:
The scope for the operation of s. 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s. 52 or s. 53 will invariably mean that proceedings for passing off would likewise fail.[58]
[56] [2014] ATMO 65, [50] (Hearing Officer Wilson).
[57] [2003] FCA 104, [107] (Beaumont J).
[58] [1989] FCA 506, [40] (citations omitted).
For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).
Section 62A
Section 62A is reproduced below:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:
·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[59]:
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.
… The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[60]
[59] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).
[60] [2012] FCA 81, [147].
Her Honour continued later in the same decision:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[61]
[61] Ibid [165]-[166].
The Opponent has particularised this ground of opposition in the SGP as follows:
Given the Opponent's prior extensive use and reputation of the HONOR and HONOR formative marks the Applicant must have known, or ought to have reasonably known, about the Opponent and its HONOR trade marks.
Accordingly, the Applicant must have known, or ought to have reasonably known, that applying to register a trade mark which wholly incorporates the Opponent's HONOR trademark for the applied-for goods and services falls short of acceptable commercial conduct.
The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[62] Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register a mark containing the name of its well-known computer game that it had offered in China for over 10 years in respect of the Remaining Goods and Services was a decision made to take advantage of the reputation of the Opponent’s Trade Marks, as opposed to the registration of a mark adopted and used successfully by the Applicant in another jurisdiction. In circumstances where the evidence in support of the s 62A ground of opposition is very limited and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character. Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62A.
Resolution of Opposition
[62] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).
In Apple Inc. v Registrar of Trade Marks Yates J stated that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[63]
[63] [2014] FCA 1304, [232].
In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established. I note that in in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited, Murphy J stated:
I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.[64]
[64] [2014] FCA 373, [231].
In the present case, considering the clear evidence of use of the Trade Mark for the mobile game in China, I consider it reasonable to offer an amendment to the Applicant’s Goods and Services to allow the Trade Mark to proceed to registration for the subset of Applicant’s Goods and Services for which the s 59 ground was not established, namely the Remaining Goods and Services.
On 29 January 2025 I provided the Applicant with an opportunity to amend its application to limit the goods and services to the Remaining Goods and Services. The amendment has now been made. On that basis I find that the Opposition under s 59 has not been established for the revised set of goods and services for which the Trade Mark is sought to be registered.
Decision and Costs
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 2375282 may proceed to registration not less than one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.
The parties have sought an award of costs in its favour. As each side has had a degree of success I make no orders as to costs.
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
12 February 2025Annexure A – Opponent’s Trade Marks
Number Visual representation Words Goods & Services classes 1633444 HONOR 9 1645168 HONOR 35 1720970 HONOR 14 1736491 HONOR 9, 35 1842175 HONOR 9A 9 1842201 HONOR 8A 9 1842202 HONOR 6A 9 1843866 HONOR 8X 9 1843867 HONOR 10C 9 1843868 HONOR 6C 9 1843869 HONOR 9X 9 1843870 HONOR 7X 9 1844045 HONOR 6X 9 1863228 HONOR 10A 9 1863229 HONOR 8C 9 1863230 HONOR 7C 9 1863231 HONOR 7A 9 1863234 HONOR 10X 9 1863249 HONOR 9C 9 1870595 Honor View 9 1893534 HONOR 9, 36, 37, 38, 41, 42 1899548 Honor Vision 9 1932465 HONOR VIE 9 1942107 HONOR 9 1980710 HONOR PLAY 9 1988017 HONOR 50C 9 1988049 HONOR 20A 9 1989703 HONOR 50A 9 1989707 HONOR 40C 9 1989711 HONOR 20X 9 1989717 HONOR 30C 9 1989745 HONOR 40X 9 1989750 HONOR 50X 9 1989758 HONOR 20C 9 1989771 HONOR 30A 9 1989774 HONOR 40A 9 1989826 HONOR 30X 9 1990730 HONOR 20N 9 1990735 HONOR 40S 9 1990739 HONOR 40I 9 1990749 HONOR 50S 9 1990759 HONOR 50I 9 1990760 HONOR 30N 9 1990775 HONOR 50N 9 1990790 HONOR 30I 9 1990797 HONOR 10N 9 1990803 HONOR 10I 9 1990828 HONOR 20S 9 1990834 HONOR 40N 9 1990870 HONOR 10S 9 1990998 HONOR 35 1994094 HONOR 30S 9 1994130 HONOR 20I 9 1995737 HONOR MAGICBOOK 9 2025527 HONOR MY WORLD 9, 35, 42 2031943 HONOR 9S 9 2039864 HONOR 7, 8, 9, 10, 11, 12, 18, 20, 21, 25, 28, 37 2044486 HONOR MAGICLINK 9 2076636 HONOR XTRA 9 2083259 HONOR MAGICWATCH 9 2086474 DESIGN FOR HONOR 9, 28 2105714 HONOR MAGICPAD 9 2109560 HONOR VPAD 9 2111204 HONOR VIEWBAND 9 2111230 HONOR MAGICBUDS 9 2115123 HONOR VIEWPAD 9 2126669 HONOR MAGIC-PENCIL 9 2126759 HONOR MAGICBAND 9 2136939 HONOR WATCH ES 9, 14 2147471 HONOR WATCH GS 9, 14 2173008 HONOR MAGIC 9 2176246 HONOR GO BEYOND 9 2178337 HONOR X7 9 2178346 HONOR X5 9 2178367 HONOR X9 9 2178399 HONOR X3 9 2178573 HONOR X6 9 2178602 HONOR X8 9 2178608 HONOR PAD VIEW 9 2181970 HONOR MAGIC V 9 2183551 HONOR X4 9 2183558 HONOR X2 9 2194605 HONOR MAVO 9 2196450 HONOR SuperCharge 9 2201955 HONOR MAGIC MOMENTS 9, 41 2201994 HONOR TALENTS 9, 41 2207349 HONOR LIFE 9, 35, 41 2207427 HONOR FLOATING KEYBOARD 9 2207461 HONOR MEGA 9 2210981 HONOR COMMUNITY 9, 35, 38, 41 2211026 HONOR TALENTS 9, 38, 41 2213171 HONOR TALKS 35, 38, 41 2221503 HONOR IMAGE ENGINE 9 2233149 HONOR STORE 9, 35, 42 2236677 HONOR 9, 35 2236953 HONOR EPARTNER 9, 35, 42 2238646 HONOR VLOG 9, 41 2238712 MY HONOR 9, 35, 42 2240599 HONOR CLUB 9, 35, 38, 41 2240902 HONOR MAGIC FOLD 9 2240909 HONOR MAGIC FLEX 9 2243563 HONOR SMART TURBO 9 2254965 HIHONOR 9, 35, 42 2255095 HONOR CLOUD 9, 42 2264794 HONOR CONNECT 9, 42 2267504 HONOR AI SPACE 9 2269107 HONOR Magic Z 9 2269168 HONOR Magic X 9 2269173 HONOR Magic W 9 2278731 HONOR HEALTH 9 2280433 HONOR Magic Wing 9 2281965 HONOR VISION 9 2283431 HONOR Smart Space 9 2291104 HONOR X04 9 2294457 HONOR RAM TURBO 9 2295840 HONOR MAGIC LIVE 9 2310730 HONOR MAGIC-PEN 9 2318622 HONOR C1 9 2333087 HONOR SOUND 9 2347317 HONOR TO BE WITH YOU 9, 35
Key Legal Topics
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Commercial Law
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