Huawei Technologies Co Ltd v Taiwan Wachine Co Ltd
[2018] ATMO 67
•10 May 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Huawei Technologies Co., Ltd. to registration of trade mark application 1733272 (30) – WAWEI (Device) - filed in the name of Taiwan Wachine Co., Ltd
| Delegate: | Nicholas Smith Decision on the Written Record |
| Decision: | 2018 ATMO 67 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44, 58, and 60 considered – none established – trade mark to proceed to registration |
Background
1. This is an opposition brought by Huawei Technologies Co., Ltd. (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Taiwan Wachine Co., Ltd (‘Applicant’):
Application Number:
1733272
Filing Date:
9 November 2015
Goods: Class 30: Condiments; Farinaceous foods; Buckwheat flour; Cake flour; Cereal flour; Chick pea flour; Chinese batter flour; Corn flour; Dough flour; Flour for baking; Flour for culinary purposes; Flour for doughnuts; Flour mixes; Flour mixtures for use in baking; Flour of barley; Flour of corn; Flour of millet; Flour of oats; Flour of rice; Flour ready for baking; Maize flour; Mixed flour for culinary purposes; Non-medicated flour confectionery; Nut flours; Oilseed flour for culinary purposes; Pizza flour; Potato flour for food; Rice flour; Rye flour; Soya flour; Tapioca flour for food; Unsorted wheat flour; Vegetable flour; Wheat flour; Wheaten flour; Food products containing flour; Food products made from potato flour; Foodstuffs made with flour; Groats for human food; Meal; Muesli; Noodles; Rice; Sauces (condiments); Seasonings; Cereal-based snack food; Rice-based snack food; Soya sauce; Spring rolls; Tapioca flour for food
(‘Applicant’s Goods’)Trade Mark:
(‘Trade Mark’)
Endorsements
The applicant has advised that the CHINESE characters appearing in the trade mark may be transliterated as HUA which may be translated into English as MAGNIFICENT OR FLOURISHING.
2. Following the advertisement on 31 March 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 31 May 2016. The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 2 June 2016. The SGP raised grounds of opposition under ss 44, 58 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 20 July 2016.
Evidence
3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 26 October 2016. This evidence consists of a declaration made on 21 October 2016 by Tania Paula Cresswell Weir, litigation assistant employed by AJ Park, the Opponent’s representative, with Attachments TPCW-1 to TPCW-11 (‘Weir Declaration’) and a declaration made on 20 October 2016 by Sun Yafang, President of the Opponent (‘Yafang Declaration’).
4. The Applicant filed Evidence in Answer (‘EIA’) on 30 January 2017. This evidence consists of a declaration made on 25 January 2017 by Shine Lu, General Manager of the Applicant, with Exhibits CH1 to CH14 (‘Lu Declaration’). The Opponent chose not to file any evidence in reply.
5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Neither party chose to avail themselves of these opportunities at that time. By letter issuing from IP Australia on 7 June 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record. The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon. Neither party filed any written submissions.
6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the preceding paragraphs:
(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.
The Opponent
7. The Opponent is a Chinese company that is a leading provider of telecommunications equipment, computer equipment and mobile phones.
8. The Opponent is the registered owner of the Australian trade marks set out in the table at Annex 1 (‘Opponent’s Trade Marks’). The goods and services for which the Opponent’s Trade Marks are registered are collectively referred to as the (‘Opponent’s Goods and Services’).
9. The Yafang Declaration contains the following claims/statements:
· The Opponent’s business originated in China but has spread around the world. It commenced business in Australia in 2004 and presently has offices in Sydney and Melbourne with 800 employees and works with all major Australian telecommunications operators including Vodafone, Optus and Telstra.
· The pronunciation of Huawei and Wawei is the same or at least very similar.
The Weir Declaration consists entirely of annexures providing information about the Opponent. Those annexures contain the following information:
· The Opponent is involved in supplying telecommunications and network products to both large enterprises and the general public, from routing and switching products to mobile phones and watches (which it sells through retailers such as Harvey Norman and JB Hi-Fi).
· As of 2013 the Opponent’s sales in Australia since 2007 amounted to over $500 million. It has received various international awards of innovation and management.
· The correct pronunciation of Huawei is ‘WAH-wey’.
· The Opponent has marketed itself through various sponsorships of organisations such as the Canberra Raiders and various community and non-profit organisations, such as the Children’s Hospital at Westmead and Jobs Australia Foundation.
The Applicant
The Applicant is a company from Taiwan that distributes and sells Asian (specifically Chinese) food throughout the world.
The Lu Declaration contains the following claims/statements:
· The Opponent distributes many famous Chinese food brands overseas through mainstream supermarket channels. It operates in the United States, Australia, New Zealand, Canada, Brazil, Chile and Albania.
· The Trade Mark was first used in Taiwan on 1 June 2015 and in Australia on 26 November 2015.
· The Trade Mark and various trade marks registered by the Opponent currently co-exist on the Taiwanese trade mark register.
Grounds of Opposition, Onus and Standard of Proof
As indicated above in the SGP the Opponent nominated grounds of opposition under ss 44, 58 and 60 of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.
The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 9 November 2015, being the filing date of the application in Australia (except in circumstances not present here, in which a different priority date is provided for in the Act).[3]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).
Discussion
Section 44
The relevant provisions of the Act with respect to the ground pursuant to s 44 are reproduced below:
Section 44 - Identical etc. trade marks
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).
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.
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 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:
· 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, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).
In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application pursuant to ss 44(3) and s44(4) if the Registrar is satisfied that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make its registration proper or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. As the Applicant has identified no other circumstances and acknowledged that the Trade Mark was not used in Australia prior to the relevant date, I do not need to consider these provisions.
The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks, which are registered for electronic and informational technology goods and related services.
Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Mark. The first requirement is satisfied. I now consider the third requirement, namely that the Opponent’s Trade Marks are registered in respect of goods similar to, and/or services closely related to, the Applicant’s Goods.
Similar goods
Section 14 of the Act relevantly provides:
14Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods for which the Opponent’s Trade Marks are registered are goods of the same description as the Applicant’s Goods as follows:
Whether the relevant goods are of the same description is essentially a question of fact.
The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold. As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade: see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:
The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’: Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.
On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [4]
Closely related services
[4] [2000] FCA 1335 [17].
The recent case of Paypal, Inc v Braintree Communications Pty Ltd[5] summarises the legal principles applicable when determining if the services for which the Opponent’s Trade Marks are registered are closely related to the Applicant’s Goods as follows:
[5] [2017] ATMO 90.
In Qantas Airways Ltd v Edwards[6] Yates J quoted from the judgment of French J in Registrar of Trade Marks v Woolworths Ltd[7]:
[6] [2016] FCA 729 at [111].
[7] (1999) 93 FCR 365; [1999] FCA 1020 at [37].
... The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...
Yates J continued:
His Honour also said in this connection that “closely related” was of wider import than “similar”.
Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:
Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...
His Honour also made reference to Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; [1983] FCA 143 (Caterpillar) in which Lockhart J said (at 150):
... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.
Significantly, in Woolworths, French J (at [38]) also said that the range of relationships between goods and services which may support the designation “closely related” will be “limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting marks which attach to them”. This observation might suggest that his Honour had in mind that, in a case arising under s 44 of the Act, the determination of whether the goods and services are “closely related” will be informed by the determination of whether the competing marks are, in fact, deceptively similar.
However, at [38] his Honour continued by stating that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” (emphasis added). It was in this context that his Honour gave the examples quoted at [113] above and referred to the examples given by Lockhart J in Caterpillar. This part of his Honour’s reasoning suggests that the question of whether goods and services are “closely related” is a discrete question within the injunction against registration provided by s 44 of the Act.
This understanding is supported by the following passage in [39] of his Honour’s reasons:
... Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second: “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.” This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is “likely” to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of “closely related” goods and services.
His Honour concluded at [40]:
In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.
The practical judgment to which his Honour referred in the last passage is, quite clearly, the judgment involved in determining whether the two marks are deceptively [similar]. The passage marks his Honour’s acceptance that the question of deceptive similarity between allegedly conflicting marks will be informed, in part, by the closeness of the relationship between the goods and services in respect of which the marks severally are, or are sought to be, registered. I do not accept that his Honour was there directing attention to the judgment involved in determining whether given goods and services are “closely related” as such. [8]
[8] [2017] ATMO 90, [28]-[29].
I fail to identify any of goods and services for which the Opponent’s Trade Marks are registered that are similar or closely related to the Applicant’s Goods. The Applicant’s Goods are foodstuffs. The Opponent’s Trade Marks are registered for, broadly, telecommunications equipment, computer equipment, mobile phones, watches and services relating to the installation, advertising, maintenance and management of telecommunications and computer equipment. The Applicant’s Goods are goods of a different nature for a different purpose and sold in different channels from the Opponent’s Goods and Services.
I find that the Opponent has failed to establish the ground of opposition under s 44.
Section 58 – Applicant not owner of trade mark
Section 58 of the Act is reproduced below:[9]
[9] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].
Section 58. Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.
The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:
· that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[10]
· that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[11] and
· that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[12]
[10] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.
[11] Re Hicks’ Trade Mark (1897) 22 VLR 636.
[12] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.
The ground based on s 58 of the Act was particularised in the SGP as follows:
The applicant's trade mark application includes WAWEI which is a substantially identical or deceptively similar trade mark to the opponent's HUAWEI trade mark.
The opponent has an earlier, at least 9 June 2000, claim to ownership of the HUAWEI trade mark in Australia. The applicant cannot be the owner of the trade mark WAWEI applied for under number 1733272.
In respect of the second factor the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews[13] stated as follows:
The “same kind of thing” in respect of the goods or services of the parties does not equate to goods or services which may be “of the same description” (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership[14].
[13] Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14]-[18].
[14] Colorado Group Limited v Strandbags Group Pty Ltd (‘Colorado’) [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340.
Given that I have found that the Opponent’s Goods and Services are not ‘of the same description’ or ‘closely related’ as the Applicant’s Goods, I must necessarily reach a similar conclusion with respect to the s 58 ground of opposition, namely that the Applicant’s Goods are not the ‘same kind of thing’ as the goods and services for which the Opponent's HUAWEI trade mark were used.
As the Opponent has failed to established the second factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58 of the Act.
Section 60
Section 60 of the Act 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.[15]
[15] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.
In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had 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’.[16] 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 …[17]
[16] [2000] FCA 1335, [81].
[17] (1992) 33 FCR 302, 343.
On the subject of reputation Kenny J also referred to the Hugo Boss decision, 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.[18]
[18] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.
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[19] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955. 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.[20]
[19] (2000) 50 IPR 1.
[20] Ibid 20. Heerey J’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].
Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[21]
[21] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <
The Opponent has particularised the ground of opposition in the SGP in the manner set out below:
The opponent has owned the trade mark HUAWEI in Australia since at least June 2000. The opponent has used the HUAWEI trade mark in Australia for more than 10 years. The opponent's business includes building telecommunications networks, providing telecommunications services and consultancy services, providing telecommunications devices and consumer products. The business uses the trade marks represented in trade mark registrations. As a consequence there is an awareness, knowledge, cognisance, or reputation for the opponent's trade mark.
The opponent’s HUAWEI trade mark is well known in Australia.
Use of the applicant's trade mark on the goods of the application is likely to deceive or cause confusion given the reputation and well known standing of the opponent's trade marks.
The particulars referred to above do not clearly specific whether the Opponent relies upon the word mark HUAWEI (‘HUAWEI Mark’) on this ground or if they additionally seek to rely on the device mark (‘Device Mark’), however I address this ground of opposition on the basis that that reference to the HUAWEI trade mark in the particulars is meant to include both the HUAWAI Mark and Device Mark.
I am satisfied on the evidence before me that both the HUAWEI Mark and the Device Mark had, before the relevant date, acquired a reputation in Australia for telecommunications equipment, mobile phones and for services related to those goods. The Opponent’s has traded in Australia since 2001, with sales in Australia between 2007 and the relevant date amounting to over $500 million. The sales, advertising and esteem in which the HUAWEI Mark and Device Mark has been held in Australia more than satisfies the requirements under s 60(a) of the Act.
It is not sufficient that the Opponent merely establishes that its trade marks have a reputation; the Registrar 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 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 observations of men considered in the mass affords the standard.[22]
[22] (1937) 58 CLR 641, 658.
In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:
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.
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.[23]
[23] (1999) 45 IPR 411, 428. 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.[24]
[24] [2012] ATMO 124 at [40].
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.’[25]
[25] [2016] FCA 729 at [142].
This is not a case where the Trade Mark is being sought to be registered for the same or similar goods as the goods and services for which the HUAWEI Mark and Device Mark have a reputation. The Trade Mark is sought to be registered in respect of foodstuffs, a completely different market to the markets in which the Opponent trades. It is highly unlikely that a consumer would consider or wonder whether the Opponent, a supplier of telecommunications and computer products, is also involved in the supply of foodstuffs. I consider that the very significant difference between the Applicant’s Goods and the goods and services for which the Opponent has a reputation strongly tends to reduce the likelihood of confusion.
Furthermore while I accept the evidence that the Trade Mark is aurally similar to the HUAWEI Mark and Device Mark (when pronounced correctly), there are significant visual differences between the marks. This includes the different devices in the Trade Mark and the Device Mark, the fancy lettering used in the Trade Mark and the fact that the Trade Mark commences with the letters ‘Wa’ and the HUAWEI Mark and Device Mark commence with the letters ‘Hua’.
While the reputation of the HUAWEI Mark and Device Mark in Australia is significant, because of the very significant difference between the respective goods and services and the visual differences between the Trade Mark and the HUAWEI Mark and Device Mark I consider it unlikely that because of the reputation of the HUAWEI Mark and Device Mark, the use of the Trade Mark would be likely to deceive or cause confusion. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.
Decision
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade Mark application no. 1733272 may proceed to registration not less than one month from the date of this decision. If the Registrar has been 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.
Nicholas Smith
Hearing Officer
Oppositions and Hearings
10 May 2018
Annex 1 – List of selected trademarks owned by the Applicant
| Number | Trade Mark | Priority Date | Goods and Services |
| 838552 | HUAWEI | 9 Jul 2000 | Class 9: Telecommunication facilities; stored-program switching systems for telecommunication facilities; radio apparatus for telecommunication; data communication apparatus; transmission apparatus (for communication purposes); optical telecommunication apparatus; intelligent network apparatus (for communication purposes); power supply; transmitters (for communication purposes); receivers (for communication purposes); integrated circuits |
| 1079026 | 4 Oct 2005 | Class 9: Computer hardware, firmware, and software, namely computers, peripherals, computer networks and networking components, and components for managing and interconnecting telecommunications networks, for providing computer and computer network security, and for providing network management and enhanced services development and deployment, and for managing and interconnecting multimedia, audio and video data equipment, namely, wired and wireless network interface devices, switching devices, gateways for use in wireless communications systems' computer network bridges, hubs, routers, modems, electric cabling, integrated circuits, electrical power supplies, remote access equipment for use in the field of computer networking and telephony, telephones, and related software for all of the foregoing, namely, computer software for diagnosing, installing, supporting, managing, configuring, connecting, interoperating, upgrading and controlling computer hardware, firmware, and software; computer software for diagnosing, installing, supporting, managing, configuring, connecting, interoperating, upgrading and controlling computer hardware, firmware, and software; computer software for use in the field of education, namely, for data communications among users; telecommunication equipment, namely, wireless radio frequency switches; radio transmitters and receivers for telecommunication; wireless local loop access apparatus for radio signal transmission comprised of base station controllers, antennas, subscriber units that transmit and receive signals, and network management switches for use in managing radio signals and voice transfer between subscriber terminals and local exchanges; wireless switching platforms for selection of optical channel connections for voice and signals, call processing and system maintenance; access network apparatus, namely base station controllers; directional and omni antennas; subscriber terminals; mobile phones, wireless telephones; wireless base stations, wireless antennas; transceivers for telecommunication purposes; and telecommunication trunk circuits and trunk line assemblies comprising trunk line cables and trunk line amplifiers; stored program controlled switching system, namely, stored program controlled switching machine for use in processing the information from incoming calls to outgoing terminals in the public service telephone network; radio apparatus, namely, data, voice, and image switching equipment for mobile communications; optical telecommunications apparatus, namely, optical line terminal for use in receiving, transmitting and analyzing the optical signal, optical network unit, also known as an optical line terminal which manages the optical network; fiber optical CATV transmissions equipment, namely, electric light switches, optic fibers, fiber optic cables; isdn access adapter, telecommunication system, namely, intelligent high frequency network comprised of computer workstations telecommunication terminal equipment, namely, telephone isdn phone, visual phone, digital enhanced cordless telecommunications (DECT) phone, mobile phone; and, digital phone; wireless local loop equipment, namely, connections for mobile subscribers to access switching systems | |
| 1521926 | 8 Aug 2012 | Class 37: Machinery installation, maintenance and repair; electric appliance installation and repair; installation, maintenance and repair of computer hardware; repair information; factory construction; rebuilding machines that have been worn or partially destroyed; upholstery repair; vehicle maintenance; airplane maintenance and repair; telephone installation and repair | |
| 1662312 | 8 Sep 2014 | Class 9: Smart mobile phones; tablet computers; batteries for mobile phones; batteries for wireless routers; batteries for modems; batteries for tablet computers; solar batteries; batteries for communication equipment; cameras; headphones; portable power sources for mobile phones or tablet computers; apparatus for remote video conference; protective cases for mobile phones; protective cases for tablet computers; protective covers for mobile phones; protective covers for tablet computers; digital photo frames; set-top boxes; inverters (electricity); monitoring apparatus; chips (integrated circuits); low voltage power source; audio and video receivers; electric cables; submarine electrical cables; photoelectric switches (batteries); automatic teller machines (ATM); data processing apparatus used for managing the queue of customers in the field of window service industries; computer software for updating and saving information, photographs and video of mobile phone contacts; computer software for the protection of the privacy of mobile phone owners; screens for mobile phones; protective films for mobile phones; shell for mobile phones; protective films for tablet computers; uninterrupted power supply for machine room; regulated voltage supply; smart bracelets for use with mobile phones; smart watches for use with mobile phones; data lines for mobile phones, tablet computers and communication apparatus; operating system software for mobile phones; chargers for mobile phones or tablet computers; servers for computer room (computer hardware); software for servers for computer room; monitors (computer hardware); monitors (computer programs); instant messaging software; adapters | |
| 1662338 | 8 March 2014 | Class 35: Advertising; advertisement planning; business management assistance; sales promotion for others; employment agencies; relocation services for businesses; systemization of information into computer databases; tax preparation; rental of vending machines; sponsorship search | |
| 1663715 | 19 Mar 2014 | Class 9: Smart mobile phones; tablet computers; batteries for mobile phones; batteries for wireless routers; batteries for modems; batteries for tablet computers; solar batteries; batteries for communication equipment; cameras; headphones; portable power sources for mobile phones or tablet computers; apparatus for remote video conference; protective cases for mobile phones; protective cases for tablet computers; protective covers for mobile phones; protective covers for tablet computers; digital photo frames; set-top boxes; inverters (electricity); monitoring apparatus; chips (integrated circuits); low voltage power source; audio and video receivers; electric cables; submarine electrical cables; photoelectric switches (batteries); automatic teller machines (ATM); data processing apparatus used for managing the queue of customers in the field of window service industries; computer software for updating and saving information, photographs and video of mobile phone contacts; computer software for the protection of the privacy of mobile phone owners; screens for mobile phones; protective films for mobile phones; shell for mobile phones; protective films for tablet computers; uninterrupted power supply for machine room; regulated voltage supply; smart bracelets for use with mobile phones; smart watches for use with mobile phones; data lines for mobile phones, tablet computers and communication apparatus; operating system software for mobile phones; chargers for mobile phones or tablet computers; servers for computer room (computer hardware); software for servers for computer room; monitors (computer hardware); monitors (computer programs); instant messaging software; adapters | |
| 1720957 | 11 Sep 2015 | Class 14: Wristwatches; watch bands; stopwatches; straps for wristwatches; chronographs (watches); watches; watch chains; necklaces; bracelets (jewelry); pins (jewelry); earrings; rings; key rings (trinkets or fobs); jewelry; jewelry cases (caskets or boxes); cases for watches (presentation); watch bags; smart bands; smart watches; smart watches comprised primarily of a wristwatch mainly for viewing, sending and receiving texts, emails, data and information and answering calls; wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; wearable digital electronic devices; smart wrist wearable bands with display screens for viewing, sending and receiving texts, emails, data and information and answering calls | |
| 1720960 | 11 Sep 2015 | Class 14: Wristwatches; watch bands; stopwatches; straps for wristwatches; chronographs (watches); watches; watch chains; necklaces; bracelets (jewelry); pins (jewelry); earrings; rings; key rings (trinkets or fobs); jewelry; jewelry cases (caskets or boxes); cases for watches (presentation); watch bags; smart bands; smart watches; smart watches comprised primarily of a wristwatch mainly for viewing, sending and receiving texts, emails, data and information and answering calls; wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; wearable digital electronic devices; smart wrist wearable bands with display screens for viewing, sending and receiving texts, emails, data and information and answering calls |
Key Legal Topics
Areas of Law
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Civil Procedure
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Commercial Law
Legal Concepts
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Jurisdiction
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Stay of Proceedings
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Abuse of Process
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Res Judicata
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