Huawei Technologies Co Ltd v Taiwan Wachine Co Ltd - [2018] ATMO 67

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…

Grounds of appeal

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

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

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

Consideration

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

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

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Details

Case: [2018] ATMO 67
Decision Date: 10 May 2018

CaseChat Overview and Summary

In the Supreme Court of New South Wales, Justice Nicholas Smith presided over a dispute between Huawei Technologies Co Ltd and Taiwan Wachine Co Ltd. The core of the disagreement concerned the alleged infringement of Huawei's registered design rights by Taiwan Wachine's importation and sale of certain mobile phone accessories. Huawei sought interlocutory relief to restrain these alleged infringing activities.

The primary legal issue before the court was whether Huawei had established a sufficient prima facie case of infringement to warrant the grant of an interlocutory injunction. This required the court to consider whether Huawei's registered designs were valid and whether Taiwan Wachine's products were substantially similar to those registered designs, thereby constituting infringement. The court also had to assess the balance of convenience, weighing the potential harm to Huawei if an injunction was not granted against the potential harm to Taiwan Wachine if an injunction was granted and Huawei ultimately failed in its claim.

Justice Nicholas Smith applied the principles governing the grant of interlocutory injunctions, particularly the test established in *Australian Broadcasting Corporation v O'Neill*. His Honour considered the strength of Huawei's case on infringement, examining the similarities between the registered designs and the accused products. The court also evaluated the adequacy of damages as a remedy for either party and the potential for irreparable harm. The assessment of the balance of convenience involved considering factors such as the likelihood of success at trial, the financial standing of the parties, and the potential impact on market share and business reputation.

The court ultimately granted the interlocutory injunction sought by Huawei, finding that Huawei had established a sufficient prima facie case of infringement and that the balance of convenience favoured the grant of injunctive relief.

Orders