Jiangsu Yuyue Medical Equipment & Supply Co. Ltd. v Shenzhen Aiboli Technology Co. Ltd

[2022] ATMO 119

TRADE MARKS ACT 1995

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

Re:Opposition by Jiangsu Yuyue Medical Equipment & Supply Co. Ltd. to registration of trade mark application 2079709 (10) – yuwell – in the name of Shenzhen Aiboli Technology Co. Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Spruson & Ferguson

Applicant: Laminar IP Pty Ltd

Decision:

2022 ATMO 119

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 58 considered and established – registration refused

Background

1. This decision concerns an opposition brought by Jiangsu Yuyue Medical Equipment & Supply Co. Ltd. (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Shenzhen Aiboli Technology Co. Ltd (‘Applicant’): 

Application Number:	2079709
Filing Date:	3 April 2020 (‘relevant date’)
Goods:	Class 10: Medical masks; Respirators for artificial respiration; Apparatus for artificial respiration; Medical apparatus and instruments; Sphygmotensiometers; Thermometers for medical purposes; Stents; Glucometers; Hearing aids; Sterile sheets (surgical); Masks for use by medical personnel; Portable hand-held urinals; Breast pumps; Baby feeding dummies; Massage apparatus (‘Applicant’s Goods’)
Trade Mark:	yuwell	(‘Trade Mark’)

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 20 November 2020 (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 58, 59, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 18 January 2021. 

   Evidence

3. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 16 April 2021 by Huang Juan, the Manager of the Overseas Business Division of the Opponent, with Annexures SX-1 to SX-17 (‘Huang Declaration’).

   ·Declaration made on 19 April 2021 by Nathan John Sinclair, Senior Associate at Shelston IP, the Opponent’s representative, with Annexure NS-1[1] (‘Sinclair Declaration’).

   [1] The text of the Sinclair Declaration refers to Annexure NS-1 as ‘Confidential Annexure NS-1’ (the cover sheet for the Annexure refers to it as Annexure NS-1), but this is obviously an error or an improper assertation of confidentiality since the material contained in the annexure amounts to publicly available records from various trade mark offices in countries other than Australia.  It will not be treated as confidential.

4. The Applicant did not file any evidence in answer.

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Opponent requested that the matter proceed to a decision by written submissions, provided written submissions and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

7. The Opponent is a Chinese enterprise, established in 2007 (with a predecessor in title that was established in 1998) that is involved in the manufacture and sale of medical apparatus and equipment.     

8. The relevant claims/statements in the Huang Declaration can be summarised as follows:

   ·     The Opponent has manufactured and sold medical apparatus and equipment under the Trade Mark internationally since 2014 and in Australia since 2015.  The Opponent also promotes its goods sold under the Trade Mark through its website, Facebook and Twitter page.

   ·     The Opponent has entered into a number of distribution agreements with Australian distributors and has sold large quantities of medical equipment to the Australian distributors under the Trade Mark prior to the relevant date

9. The Annexes to the Huang Declaration include copies of distribution agreements between the Opponent and its Australian distributions, purchase orders, invoices and receipts as well as evidence of the Opponent’s marketing material such as the Opponent’s website and various catalogues.  These documents evidence the sale of medical apparatus under the Trade Mark (with minor stylisation) prior to the relevant date and the use of the Trade Mark to market the Opponent’s medical products prior to the relevant date. 

10. The Sinclair Declaration provides evidence of the numerous registrations for the Trade Mark obtained by the Opponent in other jurisdictions.  The Opponent has applied to register the Trade Mark in Australia.

    The Applicant

11. The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

    Grounds of Opposition, Onus and Standard of Proof

12. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 59, 60 and 62A. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 58 in relation to all the Applicant’s Goods. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

13. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is the filing date 3 April 2020, which is also the priority date for the purposes of s 60.[4]

    Discussion

    [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

    [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

    [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

    Section 58 – Applicant not owner of trade mark

14. Section 58 is reproduced below:[5]

    [5] 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] (Hearing Officer Wilson).

    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.

15. 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’);[6]

    · 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’);[7] 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’).[8]

    17. The ground based on s 58 was particularised in the SGP as follows:

    The Opponent is entitled to ownership and was the first user of the YUWELL trade mark in Australia in relation to medical apparatus and instruments. The Opponent commenced using the YUWELL trade mark in Australia, in relation to goods covered by the application or the same kind of thing, before the filing date of the opposed application, namely, 3 April 2020.

    Current investigations of records indicate that the Opponent’s use of the YUWELL trade mark in Australia in relation to various medical apparatus and instruments dates back to at least 2015.

    18. The evidence before me satisfies all 3 factors required under s 58. The Opponent has been using the Trade Mark (or a mark substantially identical to the Trade Mark) in respect of a variety of medical apparatus and instruments since 2015, prior to the relevant date (the Applicant having provided no evidence of any actual use of the Trade Mark). Based on the Opponent’s catalogue/price list and its purchase orders Opponent has offered and sold an extensive range of medical supplies including medical furnityre in Australia prior to the relevant date. The Applicant’s Goods are either identical to the goods for which the Trade Mark was used by the Opponent (Hearing aids, thermometers) or goods that are the same kind of thing (Furniture for medical purposes being the same kind of thing as massage apparatus).

    19. I find that the Opponent has established the ground of opposition pursuant to s 58.

    [6] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).

    [7] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

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

    Decision and Costs

16. I have found the Opponent has established the ground of opposition it raised pursuant to s 58. As the delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of this application should be in accordance with the Court’s orders or directions.

17. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    19 July 2022