Jackson Bob Yip v Country Garden Estate Development Co Ltd

[2022] ATMO 113

TRADE MARKS ACT 1995

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

Re:Opposition by Jackson Bob Yip to application under section 92 of the Trade Marks Act 1995 (Cth) by Country Garden Estate Development Co., Ltd to remove trade mark number 1281851 (class 36) – COUNTRY GARDEN BI GUI YUAN Chinese Characters & Device - in the name of Jackson Bob Yip

Delegate:

Tracey Berger

Representation:

Opponent: Self-represented

Applicant: King & Wood Mallesons

Decision:

2022 ATMO 113

Trade Marks Act 1995 (Cth) – application under section 92 – no evidence of use during relevant period – discretion not exercised – trade mark removed

Background

1. On 5 March 2020, Country Garden Estate Development Co Ltd (‘Removal Applicant’) filed an application under s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] (‘Removal Application’) for the complete removal of Australian trade mark registration number 1281851 (‘Registration’) in the name of Jackson Bob Yip (‘Removal Opponent’) in class 36 for “Insurance, financial affairs, real estate affairs” (‘Services’) for the trade mark below:

(‘Trade Mark’)

[1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995(the ‘Act’) or the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’), respectively.

2. The Removal Opponent filed both a Notice of Intention to Oppose the Removal Application and Statement of Grounds and Particulars (‘SGP’) on 16 March 2020. The Removal Applicant filed a Notice of Intention to Defend the Opposition to the Removal Application on 3 July 2020.

3.     The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 9.16.  After extensions of time were obtained, the Removal Opponent filed Evidence in Support (‘EIS’) on 28 April 2021.  The Removal Applicant filed Evidence in Answer (‘EIA’) on 29 July 2021.  The Removal Opponent did not file Evidence in Reply.

4.     At the conclusion of the evidence stages of the opposition, the parties were given the opportunity to be heard by way of videoconference or written submissions.  The Removal Applicant requested to be heard by way of written submissions and paid the requisite fee.  Written submissions were filed by Cate Nagy and Simon Webster of King & Wood Mallesons on 26 April 2022.  The Removal Opponent did not request to be heard.  This matter was allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks based on the particulars in the SGP, the evidence and written submissions of the Removal Applicant.

Evidence

EIS

5.     The EIS consists of a declaration of Jackson Yip made on 9 December 2020.

6.     The Removal Opponent declares that he is a licensed real estate agent and uses the Trade Mark in relation to real estate licence services.  Mr Yip also makes various statements about the Removal Opponent which are not relevant to the present proceedings.

EIA

7.     The EIA comprises a declaration of Simon Webster, an employee of King & Wood Mallesons, attorneys for the Removal Applicant, made on 29 July 2021 with Exhibits SW-01 to SW-11.

8.     Based on information provided to him by a company related to the Removal Applicant, Mr Webster avers that the Removal Applicant is a subsidiary of Country Garden Holdings Company Limited (‘Country Garden’), a multinational property development company founded in China in 1992.  In 2020, Country Garden was ranked 147^th on the Forbes Global 500 list. 

9.     In 2008, Country Garden created the logo below (‘Country Garden Mark’) and commenced using it in China and Hong Kong.  In support of this assertion, Mr Webster attaches Country Garden’s 2008 Annual Report featuring the Country Garden Mark and copies of Certificates of Registration for the Country Garden Mark registered from 2008 in all 45 classes of goods and services in Macau and in Hong Kong in classes 36, 39 and 43.

10.   In addition, Mr Webster details various investigations undertaken by an investigation firm of Mr Yip’s activities including at his address and address for service recorded on the Register.  Mr Webster also undertook his own online enquiries into Mr Yip and any use of the Trade Mark by him which disclosed that Mr Yip is the General Manager of WorldExpress Education, Migration & Commerce.  This business uses the same address as that used by Mr Yip for his trade mark registration, is the address listed on the public registered estate agent details for Mr Yip and on a letter dated 4 June 2020 sent by Mr Yip to the Removal Applicant.  None of the enquiries undertaken by Mr Webster or the investigation firm instructed on behalf of the Removal Applicant revealed any use of the Trade Mark by or on behalf of the Removal Opponent.

Grounds, Onus and Relevant Period

11. The Removal Applicant filed for removal of the Trade Mark under s 92(4)(b) which relevantly provides:

92  Application for removal of trade mark from Register etc.

(4)  An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

(a)  …

(b)  that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)  used the trade mark in Australia; or

(ii)  used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

12. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application for the Trade Mark[2] and I confirm that this requirement is satisfied.

[2] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) of the Act applies to Trade Marks filed from 24 February 2019 onwards.

13. As the Removal Application was filed on 5 March 2020, for the purposes of deciding this opposition, the relevant period is the three year period ending on 5 February 2020 (‘Relevant Period’).

14.   The Removal Opponent bears the onus of rebutting the allegation of non-use[3] and may do so by establishing on the balance of probabilities[4] that the Trade Mark (or a substantially identical trade mark[5]) was:

(i)used in good faith by or on behalf of the Removal Opponent in relation to the Services during the Relevant Period;[6] or

(ii)not used because of circumstances that were an obstacle to use of the TradeMark during the Relevant Period.[7]

[3] Act s 100(1)(c).

[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[5] AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

[6] Act s 100(3)(a).

[7] Ibid s 100(3)(c).

15. In accordance with s 101, I may decide to remove the Trade Mark from the Register for all or some of the services identified in the Removal Application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

16. I further note that a single bona fide use of the Trade Mark in the course of trade during the Relevant Period may be sufficient to rebut the allegation under s 92(4)(b),[8] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[9]

[8] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

[9] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

17.     As a preliminary point, I note that some of the EIA appears to suggest that the Trade Mark was wrongly registered either on the basis that the Removal Opponent was not the owner of the Trade Mark, the Trade Mark infringes the Removal Applicant’s copyright in the Country Garden Mark or for some other reason.  If so, the appropriate avenue to raise this matter is under s 88 via an application to a prescribed court.  As the Registrar’s delegate in the present matter, my role is to determine whether or not the Trade Mark was used by or on behalf of the Removal Opponent as a trade mark in Australia during the Relevant Period.

18.     The Removal Opponent has not filed any documentary evidence to support its claim that it uses the Trade Mark in relation to real estate services.  The Removal Applicant has undertaken fairly extensive enquiries which did not disclose any evidence of use and the Removal Opponent has not responded, by filing evidence in reply, to explain why this is the case. 

19.     In the present case, the Removal Opponent has not discharged its onus of establishing that the Trade Mark was used for the Services during the Relevant Period or not used because of circumstances that were an obstacle to use of the Trade Mark during the Relevant Period.

Discretion

20. Section 101(3) provides that even if the grounds on which the Removal Application was made have been established, I may decide not to remove the Trade Mark if satisfied that it is reasonable to do so.

21.   The Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[10]  

[10] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

22.   The Removal Opponent has not put forth any reasons why I should exercise my discretion not to remove the Trade Mark and I am not satisfied that it is reasonable to do so.

Decision and Costs

23.   The Removal Opponent has not established either use of the Trade Mark for the Services during the Relevant Period or circumstances justifying the non-use, or that it is appropriate to exercise discretion to allow the Trade Mark to remain registered. As such, registration number 1281851 should be removed from the Register.

24. Given it is the right of both parties to appeal this decision to the courts, the removal shall not take place until at least one month from the date of this decision. If the Registrar is served with a notice of appeal before then the Trade Mark shall not be removed until the appeal has either been discontinued or, the Removal Application has been dealt with as the Court sees fit.

25. The Removal Applicant has sought an award of costs. Costs usually follow the event and hence I award costs against the Removal Opponent in the amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

11 July 2022