Huawei Technologies Co. Ltd v Ubisoft Entertainment, Societe Anonyme

[2019] ATMO 54

TRADE MARKS ACT 1995

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

Re:Opposition by Huawei Technologies Co., Ltd to extension of protection of International Registration Designating Australia 1819967 (International Registration: 1328045) (Class 9, 28, 41) - FOR HONOR - in the name of UBISOFT ENTERTAINMENT, Societe Anonyme.

Delegate:	Aaron Walters
Representation:	Opponent: No Submissions Holder: No Submissions
Decision:	2019 ATMO 54 Trade Marks Act 1995 and Trade Marks Regulations 1995 - Regulation 17A.33 opposition to protection under ss 42(b), 44, 58, 59 and 60 – s 44 partially established for some goods – no other ground established.

Background

1. On 25 November 2015, UBISOFT ENTERTAINMENT, Societe Anonyme (‘the Holder’) filed an application under the Madrid Protocol to extend to Australia the protection of International Registration 1328045. Such an application in known as an International Registration Designating Australia (‘IRDA’). Details of the IRDA are as follows:

   IRDA number: 1819967

   IR Number: 1328045

   Trade Mark:

   (‘the Trade Mark’)

   Class 9:

   Apparatus for recording, transmitting, receiving, reproducing and processing sound and images; magnetic, optical, digital and electronic recording media; magnetic, optical and digital disks; computer programs; digital personal assistants, computer memories; printed circuits; computers; computer peripheral devices, namely screens, keyboard, control consoles and levers, magnetic, optical and digital disk and diskette drives; telephony and telecommunication apparatus; recorded computer programs; computer game software; software (recorded programs); computer software for playing video games, computer games and on-line games; interactive multimedia software; computer software on mobile telephones and tablet personal computers; magnetic, optical and digital media for computer programs; CD-ROMs; compact discs; computer games; downloadable electronic publications; software containing music and soundtracks from cinematographic films; cinematographic films; mouse pads; component parts for all the aforesaid goods

   Class 28:

   Apparatus for electronic games other than those designed for use with television receivers only; audiovisual games on computer platforms; action figures; miniature figures; board games; dolls; clothing for dolls; automatic game machines other than prepaid ones and those for use solely with a television set; toys, coin-operated games, playing cards; electronic game consoles; game apparatus designed for use with a television set; video and audio games

   Class 41:

   Education; teaching; tuition; training; entertainment; sporting and cultural activities; organization of competitions relating to video games, education and/or entertainment; organization and conducting of colloquiums, conferences, congresses, organization of exhibitions for cultural or educational purposes; organization of exhibitions in the field of entertainment; editing of entertainment, educational and teaching texts; publication of press magazines, publication of newspapers, editing of books, editing of newspapers, editing of magazines, publication of books; training services relating to information and telecommunication technologies, information services on on-line computer games and other on-line entertainment; game services provided online (from a computer network); game services via cellular telephones; game services via mobile telephones or for use thereon; film production (other than advertisements), shows, film studios, rental of films, rental of video and sound recordings; entertainment services in the form of an amusement park, namely a themed area; amusement park and theme park services; operation of fairground ride apparatus and fairground services; organization of shows; leisure services; production of radio programs, television programs, filmed and televised entertainment, recording of sounds (recording studios) or images (filming) on magnetic recording media

   (‘the Holder’s goods and services’)

   Filing Date: 25 November 2015

   Convention Priority Date: 11 June 2015

   Endorsements:

   Colour Claimed: Dark brown, light brown, beige and white; Mark Description: The mark consists of the words "FOR HONOR" in a stylized font; the "H" in "HONOR" has a tip that juts out at the side and the letters "O" and "R" in "HONOR" are joined.

2. The Trade Mark was examined as required under reg 17A.12 of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’). Acceptance of the Trade Mark for protection to be extended to Australia was advertised in the Australian Official Journal of Trade Marks on 16 February 2017.

3. On 13 April 2017, Huawei Technologies Co., Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the extension of protection of the Trade Mark to Australia, pursuant to reg 17A.33 of the Regulations. A Statement of Grounds and Particulars (‘SGP’) followed on 15 May 2017 which nominated grounds of opposition under ss 42(b), 44, 58, 59 and 60 of the Trade Marks Act 1995 (Cth) (‘the Act’). The Holder filed a Notice of Intention to Defend the extension on 29 June 2017.

4. The Opponent filed its Evidence in Support on 10 October 2017. This consists of the following:

   ·A declaration made on 29 September 2017 by Sun Yafang, President of the Opponent, including Exhibit 1 and Confidential Exhibit 2 (‘the Yafang Declaration’).

   ·A declaration made on 5 October 2017 by Tania Weir, Litigation Assistant for AJ Park Intellectual Property, including Exhibit 1 to Exhibit 6 (‘the Weir Declaration’).

5. No further evidence has been provided by either party. No request to be heard was made and neither party has provided submissions for me to consider.

6. As a delegate of the Registrar of Trade Marks,[1] I provide the following reasons for the decision that follows, which is made under reg 17A.34N of the Regulations, based on what is contained in the SGP and the Opponent’s Evidence in Support.

   [1] Pursuant to s 206 of the Act.

   Onus and Grounds of Opposition

7. Regulation 17A.34 allows for the extension of protection to be opposed under any of the grounds on which a domestic trade mark application may be rejected, those being found in ss 39 to 44 of the Act, as well as those grounds of opposition set out under ss 58 to 61 and 62A of the Act. I have assumed the Opponent relies upon all of the nominated grounds in the SGP, being those under ss 42(b), 44, 58, 59 and 60 of the Act. To succeed in an opposition, the Opponent need only establish one of the nominated grounds in relation to all or some the Holder’s goods and services.[2]

   [2] Reg 17A.34N of the Regulations.

8. The onus of proof rests with the Opponent,[3] the standard being the civil standard on the balance of probabilities.[4] The rights of the parties are generally determined as at the date of filing of the application.[5] Here, however, a right of priority is claimed as per reg 17A.15 of the Regulations, rendering the rights of the parties being determined as at the Convention Priority Date, being 11 June 2015 (‘the relevant date’).

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [4] Pfizer Products Inc v Karam [2006] FCA 1663; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132].

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73.

   The Evidence

   The Yafang Declaration

9. The Opponent owns a suite of trade marks featuring the word ‘HONOR’, either solus or in combination with some form of additional material. Of the 20 trade marks detailed, only two trade mark registrations, being 1633444 and 1645168, have a priority date earlier than that of the relevant date. I have reproduced these below:

Trade Mark	Priority Date	Goods and/or Services
1633444 (IR 1208289) (‘the Class 9 Mark’)	28/03/2014	Class 9: Navigation apparatus for vehicles (on-board computers); network communication equipment; satellite navigational apparatus; hands free kits for phones; portable telephones; optical communication equipment; portable radiotelephony sets; portable radiotelephony devices; transmitters of electronic signals; sonar navigation and detection systems; compact discs (audio-video)
1645168 (‘the Class 35 Mark’)	04/09/2014	Class 35: Advertising for communication products; presentation of goods on communication media for retail purposes; sales promotion for others; retail services for communication products; on-line advertising on a computer network

(Together, ‘the relevant registered Trade Marks’).

1. Mr Yafang states the HONOR trade mark was first used in 2015.[6] I suspect this is intended to mean first used in Australia, though it is not specifically mentioned. Mr Yafang continues to state:

   The main retailer of [the Opponent’s] HONOR smart and mobile phones and associated goods in Australia is JB Hi-Fi, which is Australia’s largest home entertainment retailer.

   Attached and marked Exhibit-1 is a HUAWEI and JB Hi-Fi open channel report from 29 July to 22 October 2015, which provides details of the use of the HONOR trade mark.[7]

   [6] The Yafang Declaration, paragraph 5.

   [7] Ibid, paragraph 7-8.

2. Exhibit-1 receives no further comment and segments of the exhibit itself are pixelated to the point of being illegible. From what is legible, it appears to me to be a report outlining the manner in which JB Hi-Fi advertised and marketed the Opponent’s products between July 2015 and October 2015, both instore and external advertisement media (‘the JBHF Report’). Perusing the contents, it is quickly apparent the JBHF report details a range of the Opponent’s products, not just those provided under the HONOR brand, and I observe much of the focus is on the HUAWEI P8 branded smart phone.

3. I am able to identify the following references specific to the relevant registered Trade Marks:

   and;

4. The JBHF Report also contains a graph entitled “Retail Sell Out” which appears to track, amongst other products, the “HUAWEI Honor 4X Black Outright Handset” over a period of 17 weeks. However, without further explanation I cannot be certain if this refers to product sales, or, even if such is the case, the specific quantity of products sold.

5. On the topic of sales, the Yafang Declaration attaches Confidential Exhibit-2 described as the sale revenue for products bearing the HONOR trade mark in Australia.[8] Confidential Exhibit-2 simply contains a lump amount and it is not clear whether this is the total sales since 2015, or for a single financial year, prior to the relevant date.  

   The Weir Declaration

   [8] The Yafang Declaration, paragraph 9.

6. The Weir Declaration suggests the HONOR trade mark was in use in Australia as early as 2012, contrary to Mr Yafang’s statement above. Exhibit 3 is described as “an article from ‘5 years ago’ reporting Dick Smith and JB Hi-Fi are selling Huawei Honor for $399” (‘the Android Australia article’).[9] The article, (published online in 2012 on ‘ provides a quick review of the Huawei Honor smart phone before noting its possible availability through Australian retail outlets Dick Smith and JB Hi-Fi.

   [9] The Weir Declaration, paragraph 4.

7. Two additional online reviews, published to ‘ on 9 January 2015 and 3 March 2015, of the Opponent’s HONOR 6 and HONOR 4X smart phones are provided in Exhibit 2 (‘the CNET reviews’). Within, the HONOR 6 is described as a competitive and feature packed smart phone, while the HONOR 4X is discussed as a budget friendly option.

8. The CNET Reviews contain images of the Opponent’s mobile phone displaying the word HONOR. Reproduced below is an example:

9. I think it worth noting too, when discussing the physical design of the smart phone, the CNET Reviews mention that the “Huawei logo is not printed anywhere on the phone.”

10. The Weir Declaration provides some additional information regarding the Opponent’s corporate endeavors in Australia. Exhibit 4 contains several news articles published throughout 2013 to 2015 on the Opponent’s website ‘ However, these articles do not mention the Opponent’s HONOR branded products, instead describing more broadly their product procurement, marketing and charitable campaigns in Australia.

11. Lastly, I shall dispose of the exhibits not yet described and included in the Weir Declaration here:

    -     Exhibit 1 is described as “pages from the website for the HONOR trade mark, ‘ The webpages themselves appear to market a cross-promotional offer granting “Honor 9 users” additional content for a specific 3^rd party game. Looking to the “Terms & Conditions”, I’ll make two observations. First, the promotional offer commenced in July 2017, being well beyond the relevant date. Second, the offer was not redeemable in Australia. A trade mark used on a website will not amount to use in Australia unless that website specifically targets Australian consumers.[11]

    -     Exhibit 5 is described as “the first pages of results from a search using the Google search engine for Huawei Honor for sale in Australia in the period 1 October 2000 – 1 June 2015.”[12] No further comment is made with regards to the search results and I can give this information little weight.

    -     Exhibit 6 is described as “the first part of JB Hi-Fi’s 2015 annual report.”[13] Again, no further comment is made with regards to this report and I am left to infer its relevance, if any, to this opposition.

    Discussion

    [10] The Weir Declaration, paragraph 2.

    [11] Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471, [43].

    [12] The Weir Declaration, paragraph 6.

    [13] The Weir Declaration, paragraph 7.

    Section 44

12. As the sole ground established, it is appropriate that I begin by discussing the ground of opposition under s 44 of the Act, which relevantly provides:

    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) the applicant's trade mark 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.

    (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 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.

13. Sub-sections (3) and (4) provide that a substantially identical or deceptively similar trade mark may still achieve registration should the Registrar be satisfied of the Holder’s honest concurrent use, or some other circumstances, or prior continuous use.[14] As the Holder provides no evidence, this need not be considered any further.

    [14] Section 44(3)(a), (3)(b) and (4), respectively.

14. Therefore, to establish this ground of opposition the Opponent must satisfy the three requirements of s 44. The first of which is easily satisfied as the priority dates of the relevant registered Trade Marks are earlier than that of the Trade Mark. With respect to the next two requirements, I find the Trade Mark to be deceptively similar to the Class 9 Mark for some goods only. My reasons follow.

    Substantially Identical or Deceptively Similar

15. The Opponent alleges in its SGP:

    [The Trade Mark] is substantially identical or deceptively similar to [the relevant registered Trade Marks].

16. As I will detail later on, the Opponent has not established the services registered under the Class 35 Mark are either similar or closely related to the goods and services specified under Trade Mark.

17. Focusing then on the Class 9 Mark, the relevant test for substantial identity, as explained by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (‘Shell’), is one of a “total impression of resemblance” arising from a side by side comparison.[15] Accordingly, I have reproduce below the two marks to compare side by side:

    [15] [1963] HCA 66; (1961) 109 CLR 407 at 415.

27.    

28.   

29.    

30.    

31.      

32.      

1. The comparison is one of statutory rights of use.[16] To that end, I would note the Holder seeks protection for the Trade Mark to be extended with the following limitation[17]:

   Colour Claimed: Dark brown, light brown, beige and white.; Mark Description: The mark consists of the words "FOR HONOR" in a stylized font; the "H" in "HONOR" has a tip that juts out at the side and the letters "O" and "R" in "HONOR" are joined.

   Accordingly, the use to which protection of the Trade Mark is extended in Australia is confined to the colours claimed[18] and the stylization described above. The Class 9 Mark contains no such limitations.

   [16] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864.

   [17] Section 6 of the Act defines limitations as meaning a limitation on the exclusive right to use a trade mark given by the registration of a trade mark, including limitations as to the mode of use.

   [18] Section 70(1), the Act.

2. Accepting the fact that both trade marks prominently feature the word “HONOR”, the question becomes whether these are “essential features” which strike the eye in a side by side comparison such as to render the marks substantially identical.[19] Answering this affirmatively, would, in my view, incorrectly overlook the inclusion of the additional word “FOR” in the Trade Mark. Its prepositional role to the accompanying word “HONOR” serves to distinguish it from simple descriptive material. As such, the Trade Mark is unavoidably comprehended as a whole, rather than as distinct elements. With this in mind, and taking into account the additional differences when viewed side by side, I am satisfied there is not a “total impression of resemblance” such that the two trade marks would be considered substantially identical.     

   [19] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [51].

3. However, while the addition of “FOR” may sufficiently differentiate the Trade Mark from the Class 9 Mark such that they are not substantially identical, I do not find it so discerning as to prevent the marks from being deceptively similar. As Windeyer J said 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.[20]

   [20] [1963] HCA 66; (1961) 109 CLR 407 at 416.

1. Section 10 of the Act defines “deceptively similar” as:

   Definition of deceptively similar

   For the purposes of the 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.

2. The likelihood of deception or confusion existing between the trade marks must be real and tangible.[21] In considering deceptive similarity, Dixon and McTiernan JJ said in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (‘Woollen Mills’):

   … 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.[22]

   [21] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020.

   [22] [1937] HCA 51.

3. A determination of deceptive similarity thus requires that I evaluate what impression the trade marks would have on the mind of consumers relevant to the goods. In so evaluating, each trade mark should be compared in its entirety,[23] with consideration given to any visual and aural similarities as well as the idea of the marks in question.[24] Importantly, allowance is to be made for the imperfect recollection of consumers in determining whether the resulting impressions amount to a tangible likelihood of deception or confusion,[25] as well as regard had for the surrounding circumstances,[26] including the manner in which the trade marks are used.

   [23] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 at [92]

   [24] Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606, [95]. Per Perram J summarising the principles discussed in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [72]-[79].

   [25] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [77], referring to Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641.

   [26] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

4. The word “HONOR” is the sole element of the Opponent’s Class 9 Mark and is wholly contained in the Trade Mark, though preceded by the word “FOR”. Thus, I accept there are some visual and aural differences between the marks, both of which occur at the start of the Trade Mark. However, the prepositional “FOR” also serves to channel attention to “HONOR” in a way that invokes in the consumer a heraldic sense that the Holder’s goods are of or related to honour, perhaps more emphatically so than just the single word “HONOR”. Nonetheless, in the mind of the consumer, the impression of both marks is secured to the word “HONOR”.      

5. Noting the allowance made for imperfect recollection, the insight of Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd is useful in this context:

   “Polo” is also a quite distinctive word, and the taking of it is bound to cause confusion which the mere addition of the word “Club” will not dissolve. Bearing in mind that the test requires consideration of the customer with an imperfect recollection of the mark, it is important that the distinctive impact of the word “Polo” is likely to affect the mind although the presence or absence of the blander word “Club” may escape notice. At the same time, some persons may be quite aware that one mark contains the added word, and the other does not, but may yet think of “Polo Club” bed linen as a particular style of “Polo” bed linen.[27]

   [27] [1993] FCA 203, [10].

6. I consider the latter scenario a likelihood in the present circumstances. That is, to adapt his Honour’s words, some persons may be quite aware that the Trade Mark contains the added word “FOR”, and the Class 9 Mark does not, however, may yet be confused into thinking of “FOR HONOR” goods as meant for “HONOR” products. I am satisfied this confusion goes beyond a mere possibility.

   Goods and services which are similar or closely related

7. Turning then to a comparison of the goods and services, s 14 of the Act relevantly provides:

   Definition 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.

   (2)  For the purposes of this Act, services are similar to other services:

   (a)  if they are the same as the other services; or

   (b)  if they are of the same description as that of the other services.

8. The SGP broadly alleges:

   [The Trade Mark] is in respect of similar goods or closely related services to the goods to those (sic) of [the relevant registered Trade Marks].

   [The Trade Mark] is in respect of similar services or closely related goods to those of [the relevant registered Trade Marks].

9. The factors for determining the similarity of goods and services are well established and include considerdation as to the nature of, uses of or trade channels through which the goods or services are accessible.[28]

   [28] ReJellinek's Appn (1946) 63 RPC 59 as approved of in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, 606-607. It is worth noting much of the early defining case law refers to marks for which goods are sought to be registered. However, it was accepted in MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616 that these principles will also apply in relation to marks for which services are sought to be registered, subject to any relevant modification.

10. In the absence of submissions I must conclude the Holder considers all of the Holder’s goods and services are either similar or closely related to those of the relevant registered Trade Marks. I cannot agree this is so, particularly when seen in light of the gamut of goods and services forming the trade marks under comparison.

11. It is quite clear to me there will be certain goods and services, not being similar or closely related, to which protection will extend in Australia. Though I am mindful over whether the Registrar should differentiate between goods and services without any argument or “principled basis” identified by the parties.[29] Absent an advocated position by either party, the task is inherently fraught for understandable procedural fairness reasons. This is no more overtly so than with regards to determinations of “closely related” goods and services.  

    [29] Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373, [231]; See also Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [13]-[16].

12. The onus nonetheless remains on the Opponent to establish its opposition and I do not consider mere silence by either party prevents differentiation between what appear in essence to be similar or dissimilar goods and services. In any event, the de novo nature of an appeal to the relevant court would permit the court consider the question of similarity unfettered by any conclusions I may draw.

13. Returning then to the established factors for determining similar goods and services, I have answered what I consider to be the appropriate questions below.

    Are the Holder’s goods similar to those registered under the Class 9 Mark?

14. I have, at points earlier in this decision, reproduced all the Holder’s goods as well as those of the Class 9 Mark. However, for convenience, I shall reproduce them again here:

    Class 9:

    Apparatus for recording, transmitting, receiving, reproducing and processing sound and images; magnetic, optical, digital and electronic recording media; magnetic, optical and digital disks; computer programs; digital personal assistants, computer memories; printed circuits; computers; computer peripheral devices, namely screens, keyboard, control consoles and levers, magnetic, optical and digital disk and diskette drives; telephony and telecommunication apparatus; recorded computer programs; computer game software; software (recorded programs); computer software for playing video games, computer games and on-line games; interactive multimedia software; computer software on mobile telephones and tablet personal computers; magnetic, optical and digital media for computer programs; CD-ROMs; compact discs; computer games; downloadable electronic publications; software containing music and soundtracks from cinematographic films; cinematographic films; mouse pads; component parts for all the aforesaid goods

    Class 28:

    Apparatus for electronic games other than those designed for use with television receivers only; audiovisual games on computer platforms; action figures; miniature figures; board games; dolls; clothing for dolls; automatic game machines other than prepaid ones and those for use solely with a television set; toys, coin-operated games, playing cards; electronic game consoles; game apparatus designed for use with a television set; video and audio games

15. The Opponent’s Class 9 mark on the other hand is registered for:

    Class 9:

    Navigation apparatus for vehicles (on-board computers); network communication equipment; satellite navigational apparatus; hands free kits for phones; portable telephones; optical communication equipment; portable radiotelephony sets; portable radiotelephony devices; transmitters of electronic signals; sonar navigation and detection systems; compact discs (audio-video)

16. Apparent in the words, the Holder’s goods in Class 9 would conceivably encompass a wide range of technological apparatus or products, many of which will be the same or of the same description as those of the Opponent’s. Certainly too the thrust of the Opponent’s evidence confirms its interest in communication devices such as mobile phones or smartphones. In the modern era, I think it fairly well understood that such devices perform an array of technological functions, many of which being similar to the functions of various apparatus claimed by the Holder. Therefore, I consider there is a seemingly obvious similarity between much of the Holder’s apparatus in Class 9 and the goods for which the Opponent’s Class 9 Mark is registered. Given the conceivable broadness of the Holder’s specification and, in the absence of any argument otherwise, I think it an arbitrary exercise to attempt to differentiate which of the technological apparatus or products fall on the side of not being similar.

17. I turn then to the Holder’s software products. The Class 9 Mark does not include any such items and these are less obvious with regards to the question of similarity. I think it questionable whether the Holder’s software products can be considered “of the same description” as, for example, the Opponent’s mobile phones and smartphones, or navigational apparatus and communication equipment.

18. In Moroccanoil Israel Ltd v Aldi Foods Pty Ltd, Katzmann J did not accept a narrow construction of the phrase “of the same description” contained in s 14 the Act to mean “the same kind of thing”. That is, it is not necessary for goods to be “substantially analogous in kind”; instead, the question must be approached from a commercial point of view and the answer dependent on whether the goods belong in the same or different trades.[30]

    [30] [2017] FCA 823, [223].

19. I acknowledge, as a matter of common knowledge, that software can be used as a component in the operation of the goods registered by the Opponent. Though, simply because such goods are conceivably used in close association with one another, does not necessarily render them “of the same description”.[31] Nor is it a conclusive factor that a large company may produce both products; it would be of more relevance were it demonstrated such products are usually produced by the same company.[32] The parties are silent on any such matter and I am not inclined, on the evidence before me, to infer in the Opponent’s favour.

    [31] See "Atlas" Trade mark [1979] RPC 59.

    [32] Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372.

20. The Holder has also sought protection for a wide array of toys, games, gaming consoles and related apparatus in Class 28. However, playthings such as these strike me as being quite dissimilar in nature and purpose to the goods registered under the Class 9 Mark. The Opponent provides no reason for me to consider otherwise.     

    Are the Holder’s services similar to those registered under the Class 35 Mark?

21. Turning then to a comparison of the services, the Holder has sought protection for the following: 

    Class 41:

    Education; teaching; tuition; training; entertainment; sporting and cultural activities; organization of competitions relating to video games, education and/or entertainment; organization and conducting of colloquiums, conferences, congresses, organization of exhibitions for cultural or educational purposes; organization of exhibitions in the field of entertainment; editing of entertainment, educational and teaching texts; publication of press magazines, publication of newspapers, editing of books, editing of newspapers, editing of magazines, publication of books; training services relating to information and telecommunication technologies, information services on on-line computer games and other on-line entertainment; game services provided online (from a computer network); game services via cellular telephones; game services via mobile telephones or for use thereon; film production (other than advertisements), shows, film studios, rental of films, rental of video and sound recordings; entertainment services in the form of an amusement park, namely a themed area; amusement park and theme park services; operation of fairground ride apparatus and fairground services; organization of shows; leisure services; production of radio programs, television programs, filmed and televised entertainment, recording of sounds (recording studios) or images (filming) on magnetic recording media

22. The Opponent’s Class 35 Mark is registered in respect of:

    Class 35:

    Advertising for communication products; presentation of goods on communication media for retail purposes; sales promotion for others; retail services for communication products; on-line advertising on a computer network

23. Although contemplated in terms of infringement under s 120 of the Act, the Full Federal Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’) noted services “of the same description” to be a broader notion than that of being “true equivalents”.[33] A number of considerations for determining services to be “of the same description” were outlined. Relevantly, the first of these considered the inherent character of the services, which their Honours explained may “emerge as a function of language but is likely to be the subject of evidence.” Their Honours continued to list as applicable:

    [33] [2017] FCAFC 56, [332].

    (2)    To whom are the services offered?

    (3)    How are they provided?

    (4)    How are they used?

    (5)    What is their purpose?

    (6)    Are they bundled together with other services?

    (7)    Are they differentiated by the functional level at which they are provided:  wholesale or retail?

    (8)    Where do they originate?

    (9)    What is the method of their communication to the relevant target audience:  is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?

    (10)   How closely contestable are the services in substance:  are they in the same market or trade?

    (11)   How might consumers of the services perceive the services:  see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd(2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71]‑[73]. [34]

    [34] Ibid, [339].

24. While the services listed by the Holder are described broadly, it does not follow they are to be characterized as the same or of a similar description to the Opponent’s registered retail and advertisement services, simply because of this broad description.[35] Looking at the evidence, the Opponent has not pointed to, or clearly indicated, anything which would assist in affirmatively determining the considerations mentioned in Accor. What I am provided, in the form of the JBHF Report, lacks cogency as it does not clearly distinguish whether the advertising or promotional activities identified therein are conducted by the Opponent, or whether the Opponent engages JB HI-FI to conduct these on its behalf. Even were I to ignore any potential involvement by JB HI-FI (which I am not inclined to), this would not, without more, substantiate a finding of similarity with the Holder’s services.   

    [35] Singtel Optus Pty Limited v Optum Inc [2018] FCA 575, [164].

25. I am left then to draw conclusions as to any potential similarity which may emerge as a function of language. I believe this can be dealt with relatively swiftly. An ordinary use of language does not, in my mind, lead me to conclude the inherent character of the Opponent’s specific advertising and retail of communication products would be obviously similar to any of the Holder’s services detailed above.

26. It is perhaps suggestable that in providing the more broadly described presentation of goods on communication media, online advertising or sales promotion for others, the Opponent could conceivably provide services which share incidental features to some of the Holder’s services. As an example, the Holder’s organization of exhibitions in the field of entertainment may incidentally promote or offer for sale the goods or services of others. Similarly, the content forming the Holder’s publishing services or online game services may incidentally engage in advertising or promotion. However, as stated in Singtel Optus Pty Limited v Optum Inc (‘Singtel Optus’):

    The mere fact that services have an incidental feature in common is not sufficient to render them “similar”, within the defined meaning of that term, because incidental services are to be treated as taking their character from the whole: Accor[36]  

    [36] Ibid, [173].

27. Based on what is before me, the Opponent has not convinced me of a similarity in services between those of the Class 35 Mark and the Trade Mark.

    Are there closely related goods or services?

28. Any determination of goods and services as being “closely related” is one which should be approached cautiously. As observed by French J in Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’):

    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”.[37]

    [37] [1999] FCA 1020, [37].

29. His Honour continued to consider the relationship which supports a designation of “closely related” will, in most cases, “be defined by the function of the service with respect to the goods” and gave as an example:

    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.[38]

    [38] Ibid.

30. What then can be said of present circumstances? The marks before me include many broadly described goods and services, and in some instances, extremely so. Such generalization makes discerning the true nature of the goods or services involved, including how these may relate to each other, extremely problematic as any attempt to do so would rely far too heavily on assumption.

1. This is particularly so when considering the goods registered under the Opponent’s Class 9 Mark and the Holder’s services under the Trade Mark. For example, the Opponent’s ‘network communication equipment’, ‘optical communication equipment’ or ‘transmitters of electronic signals’ are items so broadly described that any attempt to consider what specific goods are involved becomes meaningless, as the culmination of these items could refer to almost any good, electrical or otherwise, which is capable of communicating information. The Delegate in Braintree Communications Pty Ltd v Paypal, Inc, when faced with a similarly broad claim for “[t]ransmission, receiving and storage equipment, apparatus and systems; including but not limited to …”, posited:

   However, were the Opponent’s Specification to be held to include goods being ‘data transmission, receiving and storage equipment, computer apparatus and systems’, it would be pertinent to observe that the Opponent’s contentions are again, in essence, that those goods are closely related to the Applicant’s services performed upon the information that they might receive, convey or store.  At its most extreme, any reasoning which held those goods to be closely related to the services within the Opponent’s Specification would also find that the same goods, being capable of transmitting, receiving and storing music or video, are also closely related to entertainment services.  In the circumstances here before the Registrar, this line of reasoning is an obvious fallacy as it wrongly conflates the goods with the services performed upon or in relation to the information that those goods contain, receive, or transmit.[39]

   [39] [2017] ATMO 90, [39].

2. I find the above reasoning of the Delegate apt in the circumstances, and, absent submissions to guide my consideration, I am necessarily confined to consider the goods and services which appear on evidence, most of which seems directed towards the Opponent’s smartphones and how these are retailed, advertised, promoted or reviewed.

3. Interestingly, in Woolworths, French J referred to Rowntree plc v Rollbits Pty Ltd (‘Rowntree’),[40] being an appeal from the decision of the Registrar concerning two trade mark applications. In that matter, the Applicant had sought registration of two marks, the first in respect of food goods, and the second in respect of restaurants, takeaway or retail food stores. His Honour noted at [39]:

   … Needham J found the applicant’s mark in respect of goods to be deceptively similar to the opponent’s registered mark as covering goods “of the same description” under s 33(1). His Honour also concluded that the goods covered by the opponent’s registered mark were “closely related” to the services in respect of which registration of the applicant’s service mark was sought. While accepting that it was not a logical necessity that the relevant question under s 33(2) of the 1955 Act must be answered in the same way as the question under s 33(1), his Honour said at 546:

   ...I think, in the present case, that the conclusion that the goods are goods of the same description requires a conclusion that the services contemplated by the defendant, which would feature the goods already held to be goods of the same description as those of the plaintiff, are services closely related to the plaintiff’s goods.”   

   [40] (1988) 10 IPR 539.

4. Though there appears some parallels between the present circumstances and those in Rowntree, I do not find the evidence greatly assists the Opponent in concluding the services registered under the Class 35 Mark should be considered as “closely related” to the goods under the Trade Mark merely because of its goods (of a similar description) registered under the Class 9 Mark.

5. Furthermore, in Qantas Airways Limited v Edwards, Yates J said of broadly described “advertising, marketing and merchandising services”:

   What is it then, in the present case, that makes “advertising, marketing and merchandising services” and more particularly (on the appellant’s case) “merchandising services”, services that are “related” to “clothing; footwear; headwear; shirts; T-shirts” beyond the fact that each of the respondent’s goods is capable of being, along with a vast range of other goods and services, the subject of “advertising, marketing and merchandising”? The answer is, in truth, nothing. The respondent’s goods are no more and no less related to “advertising, marketing and merchandising services” than any other goods or services that can be advertised, marketed or merchandised.[41]

   [41] [2016] FCA 729, [126].

6. I acknowledge the Opponent has also registered services specific to the advertising or retailing of communication products. However, I would further highlight his Honour’s reasoning at [129]:

   The appellant’s registration of the 1984 kangaroo/tail fin mark for “advertising, marketing and merchandising services” is for those services as a class of services, and nothing else. It is not a registration for the goods or services in respect of which the services of advertising, marketing and merchandising using the 1984 kangaroo/tail fin mark might be supplied or provided. This is an important conceptual distinction to be borne in mind. This is the reason why, for the purposes of s 44(1) of the Act, it is necessary for the appellant to establish that its services (in respect of which the 1984 kangaroo/tail fin mark is registered) and the respondent’s goods (for which registration is sought) are “closely related”. [Emphasis added]     

7. The Opponent has made no attempt to establish any such relationship. Instead, the Yafang Declaration states JB Hi-Fi, a third party retailer, is the main retailer of the Opponent’s HONOR branded products. The accompanying JBHF Report shows a broad range of the Opponent’s goods being made available and promoted throughout JB Hi-Fi stores. The Weir Declaration suggests JB Hi-Fi has been retailing the Opponent’s goods since 2012. Relatedly, the CNET Reviews, published by a third party publisher, go into great detail regarding the Opponent’s smartphones, including technical specifications and information on performance and functionality, as well as how the Opponent’s smartphone compares to other devices. Noting too the CNET Reviews contain links to articles on a number of other devices from other manufactures, I presume the purpose of such reviews is to educate, inform and, in some ways, promote to consumers the products subject of the review. Such evidence indicates the services of a third party are the primary point at which a potential consumer is exposed to the retailing or promoting of the Opponent’s products, or is educated or informed in its capabilities.[42] Absent any further information available to me, I do not find the Opponent has adequately established the relationship between the goods and services should be designated as “closely related”.

   Conclusion in respect of section 44

   [42] Cf. Christian v Société Des Produits Nestlé SA (No 2) [2015] FCAFC 153, [93]-[94], where the Full Federal Court considered it unremarkable that the primary judge, having considered French J’s analysis in Woolworths,  should conclude health and nutrition products were closely related to services for the instruction, education and information in relation to health and nutrition as “one of the functions for which the services are registered is the recommendation of the type of goods (supplements) to be used by the consumer, [is] a service likely to be provided at the same time as the goods are supplied, or combination with the supply.”

8. A determination under s 44 of the Act will have regard to the likelihood of deception or confusion arising between the marks under comparison. Taking into account my above findings, I am satisfied there is a tangible danger of confusion arising between the Opponent’s Class 9 Mark and the Trade Mark. Accordingly, the Opponent has established its ground of opposition under s 44 of the Act, though only with respect to the Holder’s goods earlier identified as being similar.

   The remaining grounds of opposition

9. The Opponent has established its s 44 ground of opposition, though for only some of the Holder’s goods. Necessarily, I must determine the remaining grounds of opposition under ss 60, 42(b), 58 and 59 of the Act with respect to the Holder’s remaining goods and services.

   Section 60

10. Section 60 of the Act relevantly provides:

    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.

    Note:       For priority date see section 12.  

11. To establish a ground of opposition under s 60 of the Act the Opponent must first demonstrate a reputation exists in another trade mark within Australia as at the relevant date. In so demonstrating the Opponent must then show, as a result of the aforesaid reputation, that the use of the Trade Mark would be likely to deceive or cause confusion.

12. The SGP alleges:

    [The Opponent has extensively used and promoted the HONOR trade mark in Australian and due to this and other circumstances there is a reputation].

    [The Opponent’s] reputation for the HONOR trade mark pre-dates the [Trade Mark].

    By reason of the reputation for the HONOR trade mark use of the [Trade Mark] on the goods of the application is likely to deceive or cause confusion.

13. The word ‘reputation’ is given its ordinary dictionary meaning and, within the context of s 60, refers to the recognition of the trade mark by the public generally.[43] Necessarily, the Opponent is required to demonstrate that its trade mark’s reputation is one in which “a significant or substantial number of persons were aware.”[44]

    [43] McCormick & Company Inc v McCormick [2000] FCA 1335, [79].

    [44] Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587, [91].

14. There are numerous ways an opponent may prove a reputation exists in a particular mark. The Federal Court has previously indicated a reputation can be inferred from evidence showing a high volume of sales or promotional expenditure,[45] or through evidence of significant television, radio or print advertising.[46] Though what is considered significant or substantial will depend on the nature of the goods in question.[47]

    [45] McCormick & Company Inc v McCormick [2000] FCA 1335, [86].

    [46] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [118]; see also more recently the Full Court’s discussion in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [81].

    [47] Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587, [91].

15. Setting aside the vague reference to “other circumstances”, the SGP claims the Opponent has a reputation in what it refers to (though does not define) as the HONOR trade mark, based on extensive use and promotion throughout Australia. The evidence shows a number of iterations of an HONOR mark,[48] though regardless of which mark the Opponent may be referring to, I am not satisfied the evidence before me supports this conclusion.

    [48] Examples of which are seen in my summary of the evidence.

16. Earlier, I explained Confidential Exhibit-2 to the Yafang Declaration contains a single lump sum figure, provided in US dollars, which is described simply as “sale revenue for products bearing the HONOR trade mark in Australia.”[49] No dates are provided with regards to this figure. As such, I find there is a clear need for this evidence to be further detailed before any meaningful inference of reputation can be drawn from it. Without more, it is unreliable at best.

    [49] The Yafang Declaration, paragraph 9.

17. With regards to its advertising and promotional claims, the Opponent provides the JB Hi-Fi Report, which I have described in detail already (though would reiterate focuses heavily on the Opponent’s P8 branded smartphones) as a well as JB Hi-Fi’s 2015 Annual Report, the relevance of which I can only assume extends to an indication of how many stores there are in Australia. Similarly, Exhibit 2 and Exhibit 3 to the Weir Declaration, being the CNET Reviews and the Android Australia article, are not, without more, indicative of a substantial reputation. It is not clear from the articles themselves what sort of viewership these received in Australia and no indication is made by the Opponent in this regard.

18. Noting such, I am not convinced on the evidence that the Opponent has established a substantial reputation existing in a trade mark in Australia, as at the relevant date. It follows that I find the Opponent has failed to establish the ground of opposition under s 60 of the Act.

    Section 42(b)

19. Section 42(b) of the Act provides:

    Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    …

    (b)  its use would be contrary to law.

20. The onus is on the Opponent to establish the Trade Mark would (not could) be contrary to law, on the balance of probabilities.[50]

    [50] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28].

21. The Opponent’s SGP particularises the ground as follows:

    [The Opponent has extensively used and promoted the HONOR trade mark in Australia and due to this and other circumstances there is a reputation].

    [The Opponent’s reputation for the HONOR trade mark pre-dates the Trade Mark].

    [By reason of the reputation for the HONOR trade mark use of the Trade Mark on the goods of the application is likely to deceive or cause confusion].

    Use of the [Trade Mark] on the goods of the application will:

    -give rise to passing off;

    -contravene sections 18 and 29 of the Australian Consumer Law (schedule 2 of the Competition and Consumer Act 2010).

22. Turning to ss 18 and 29(1)(g) and (h), being the relevant provisions of the Australian Consumer Law 2010 (‘the ACL’),  I have reproduced these below:

    Section 18: Misleading or deceptive conduct

    (1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

    Section 29: False or misleading representations about goods or services

    (1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

    ...

    (g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or

    (h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation.

23. The above provisions of the ACL mimic the terms expressed in s 52 and ss 53(c) and (d) of the now repealed Trade Practices Act 1974 (Cth), meaning the consideration and principles pertaining to the repealed sections remain relevant to the interpretation of the ACL.

24. The Opponent relies upon its claim of a reputation in the HONOR trade mark, a claim which I have earlier held to be unfounded. It has become well established in similar matters before this Office, that where an Opponent has failed to establish its ground of opposition under s 60 of the Act, it is likely that a ground brought under s 42(b) will also fail. As observed by the Registrar’s delegate in Ingeus Australia Pty Ltd and Ingeus Pty Ltd v Qantas Airways Ltd:

    In the present matter the Opponents failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the [the ACL] is a more stringent test than that for deception or confusion under s 60,[51] I am satisfied that the Opponents have also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

    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, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[52] Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) 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.[53]

    [51] See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).

    [52] [2003] FCA 104, [107].

    [53] [1989] FCA 506, [40] (citations omitted).

25. It follows that I am not satisfied that use of the Trade Mark would be contrary to law. The Opponent has accordingly failed its ground of opposition under s 42(b) of the Act.

    Section 58

26. Section 58 of the Act relevantly provides:

    Applicant not the 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.

27. To establish a ground of opposition under s 58 of the Act, the Opponent is required to prove an earlier claim to the ownership, whether through authorship or actual use,[54] of a mark which is either identical or substantially identical[55] to the Trade Mark and used on goods which are the “same kind of thing”[56]. The Opponent’s SGP alleges:

    The Opponent has extensively used and promoted the HONOR trade mark in Australia and due to this and other circumstances there is a reputation for the HONOR trade mark.

    The [Trade Mark] is identical or substantially identical to the Huawei HONOR trade mark.

    The [Trade Mark] covers identical goods and services, or are the same kind of thing, as the Opponent’s goods and services.

    The Holder is not the owner of the [Trade Mark]. 

    [54] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413

    [55] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936.

    [56] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636.

28. It is generally appropriate to begin by considering whether the mark relied upon by the Opponent is substantially identical or identical to the Trade Mark. In this instance, I reiterate my earlier finding with regards to substantial identity between the Trade Mark and the Class 9 Mark. Furthermore, with regards to the Opponent’s reference to the “Huawei HONOR trade mark” in the SGP quoted above, it is not clear to me and no effort has been made to define which mark the Opponent is referring too. That said, I see no mark on the evidence which I would consider to be substantially identical, particularly in light of my findings under the s 44 ground.

29. Accordingly, the Opponent has not succeeded in establishing its ground of opposition under s 58 of the Act.

    Section 59

30. Section 59 of the Act provides:

    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.

    Note:   For applicant see section 6.

31. Relevant to the s 59 ground, the filing of an application for registration of a trade mark is prima facie evidence of an intention to use that mark.[57] Though, this intention arising from filing may be rebutted by the Opponent’s evidence to the contrary.[58] Should the Opponent present a prima facie case that there was a lack of intention to use the Trade Mark, the onus then shifts to the Applicant to establish their intention.[59]

    [57] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [72].

    [58] Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1966] HCA 81

    [59] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [163].

1. For the purposes of s 59 of the Act, the Applicant’s lack of use, by itself, does not establish a lack of intention to use. On this point, the Opponent relies only upon the claims made in its SGP, which are described as:

   The [Trade Mark] includes a broad range of goods and services.

   [The Holder] is not using the [Trade Mark] on all or some of the goods and services of the application, and without limitation, the goods and services of the Huawei HONOR registrations/

   The Opponent does not use or have a bona fide intention to use the [Trade Mark] on all or some of the [Holder’s goods and services]. [My emphasis]

2. I will presume the Opponent’s reference to itself is made in error. In any event, the Opponent provides no evidence to support a contrary intention by the Applicant to use the Trade Mark. As such, there is no prima facie case for the Applicant to answer.

3. The Opponent has failed to establish the grounds of opposition under s 59 of the Act.

   Decision

100. Regulation 17A.34N provides:

Decision on opposition

(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

(2) The Registrar must notify the International Bureau of the Registrar's decision.

101. I am satisfied that the Opposition has been established, under s 44 of the Act in respect of the following goods:

Class 9:

Apparatus for recording, transmitting, receiving, reproducing and processing sound and images; magnetic, optical, digital and electronic recording media; magnetic, optical and digital disks; digital personal assistants, computer memories; printed circuits; computers; computer peripheral devices, namely screens, keyboard, control consoles and levers, magnetic, optical and digital disk and diskette drives; telephony and telecommunication apparatus; magnetic, optical and digital media for computer programs; CD-ROMs; compact discs; mouse pads; component parts for all the aforesaid goods

102. That being the case, I extend protection of the IRDA in respect of the following goods or services:

Class 9:

Computer programs; recorded computer programs; computer game software; software (recorded programs); computer software for playing video games, computer games and on-line games; interactive multimedia software; computer software on mobile telephones and tablet personal computers; computer games; downloadable electronic publications; software containing music and soundtracks from cinematographic films; cinematographic films

Class 28:

Apparatus for electronic games other than those designed for use with television receivers only; audiovisual games on computer platforms; action figures; miniature figures; board games; dolls; clothing for dolls; automatic game machines other than prepaid ones and those for use solely with a television set; toys, coin-operated games, playing cards; electronic game consoles; game apparatus designed for use with a television set; video and audio games

Class 41:

Education; teaching; tuition; training; entertainment; sporting and cultural activities; organization of competitions relating to video games, education and/or entertainment; organization and conducting of colloquiums, conferences, congresses, organization of exhibitions for cultural or educational purposes; organization of exhibitions in the field of entertainment; editing of entertainment, educational and teaching texts; publication of press magazines, publication of newspapers, editing of books, editing of newspapers, editing of magazines, publication of books; training services relating to information and telecommunication technologies, information services on on-line computer games and other on-line entertainment; game services provided online (from a computer network); game services via cellular telephones; game services via mobile telephones or for use thereon; film production (other than advertisements), shows, film studios, rental of films, rental of video and sound recordings; entertainment services in the form of an amusement park, namely a themed area; amusement park and theme park services; operation of fairground ride apparatus and fairground services; organization of shows; leisure services; production of radio programs, television programs, filmed and televised entertainment, recording of sounds (recording studios) or images (filming) on magnetic recording media

103. The IRDA may then proceed to protection 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 protection shall not occur until the appeal has been decided or discontinued and the disposition of the IRDA be in accordance with the Court’s order or direction.

Costs

104. While the Opponent made no mention of costs, the Holder did indicate it sought costs as part of its Notice of Intention to Defend. In this matter however, both the Opponent and the Holder have each enjoyed partial success and I think it appropriate they each bear their own costs.  

Aaron Walters
Hearing Officer
Oppositions and Hearings
8 April 2019