Jonathan Hii v Shiming Li

[2020] ATMO 66

TRADE MARKS ACT 1995

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

Re:Opposition by Jonathan Hii to registration of trade mark application number 1885292 (class 29, 30, 32) – JTL Australia Aoan with device - in the name of Shiming Li

Delegate:

Katrina Brown

Representation:

Opponent: Self-represented

Applicant: Yunfei Wu

Decision:

2020 ATMO 66

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44, 58A and 60 pursued – no grounds established – trade mark to proceed to registration.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘Act’) by Jonathan Hii (‘Opponent’) to the registration of the following trade mark:

Trade Mark No:               1885292

Trade Mark:   

(‘Trade Mark’)

Applicant:  Shiming Li (‘Applicant’)

Filing Date:  6 November 2017

Goods:Class 29: Beef; Beef products; Lamb; Lamb products; Pork; Pork products; Chicken (not live); Chicken products; Cooked chicken; Canned fish; Fish (not live); Fish products; Seafood (not live); Seafood products; Vegetables, preserved; Edible fats; Milk products; Cooked truffles (edible fungi); Dried truffles (edible fungi); Truffles, preserved; Peanut butter; Prepared peanuts; Processed peanuts; Edible seeds; Processed edible seeds

Class 30: Chocolate; Rice; Starch for food; Wheat flour; Breakfast cereals; Cereal flour; Cereal preparations; Candy (not medicated); Candy, other than for medical purposes; Honey; Common salt for cooking; Cooking salt; Table salt

Class 32: Beer; Mineral water (beverages); Natural mineral water (not for medical purposes); Soda water; Still water (not for medical purposes); Fresh fruit juices; Fruit juice beverages; Alcohol-free beverages; Drinking water; Natural water (not for medical purposes); Waters (beverages); Aerated water

1. The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 29 March 2018.

2. The Opponent filed a Notice of Intention to Oppose on 19 April 2018 followed by a Statement of Grounds and Particulars (‘SGP’) on 18 May 2018.  

3. The Applicant filed a Notice of Intention to Defend on 9 July 2018.

4. The Opponent filed the following declaration as evidence in support of its opposition:

• Declaration of Jonathan Hii (Opponent) made on 24 September 2018 with Exhibits 1 to 12 (‘Hii Declaration’).

1. The Applicant did not file evidence in answer.

2. On 10 January 2019 IP Australia wrote to the parties advising that the evidence in answer stage had ended and that either party could now request a hearing. Neither party did so and accordingly the parties were duly informed that the matter would be decided based on the material properly filed during the proceedings including evidence and any written submissions.

3. Neither party filed written submissions.

4. As a delegate of the Registrar of Trade Marks I will now decide this opposition.

Grounds of opposition, onus and relevant date

1. In the SGP, the Opponent nominated grounds under ss 44, 58A and 60 of the Act.

2. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition. The standard of proof is the ordinary civil standard of the balance of probabilities.[1]

   [1] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133].

3. The date at which the rights of the parties are to be determined is 6 November 2017 being both the filing and priority date of the Trade Mark.

Section 44

1. Section 44 of the Act relevantly provides:

   (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.

2. To succeed the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services. 

3. In the SGP, the Opponent identifies the following trade mark as the basis for this ground of opposition:

Trade Mark No:               1813628

Trade Mark:  

Registered Owner:  Aoan International Pty Ltd

Priority Date:  7 December 2016

Services:Class 35: Association services being the provision of business support or advice; Business advice relating to marketing; Business advisory services; Business advisory services relating to product development; Business enquiries; Business negotiations; Business project management services for construction projects; Business promotion services; Conducting business shows; Operation of businesses (for others); Marketing; Product marketing; Online advertising on a computer network; Online promotion on a computer network

1. From the information set out above, it is evident that TM 1813628 is held in a name other than that of the Applicant and its priority date of 7 December 2016 is earlier than the priority date of the Trade Mark which is 6 November 2017.

2. In the SGP, the Opponent asserts that the Trade Mark is deceptively similar to TM 1813628. I do not intend to discuss whether the trade marks are substantially identical, other than to state that the trade marks are quite obviously not substantially identical.

3. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

   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.

4. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J provided the following insights on deceptive similarity:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[2]

   [2] [1963] HCA 66 [13].

5. As such, I must estimate the impression that a person of ordinary intelligence and memory would have of TM 1813628 and of the Trade Mark.

6. TM 1813628 consists of an apex device dissected by a swoosh. A person of ordinary intelligence and memory would regard this trade mark as a stylised capital letter ‘A’.

7. The Trade Mark consists of the letters ‘JTL’ and the word ‘Australia’ inside a globe like device positioned above the term ‘Aoan’ which is in a stylised font. In my opinion ‘JTL’, ‘Aoan’, or some combination thereof, is likely to be carried away and retained in the mind of an ordinary consumer.

8. Having regard to these impressions, I must now decide whether there is a real and tangible likelihood of confusion or deception. In my opinion, the impressions of the trade marks are so completely different that it seems quite unlikely that the trade marks would be misremembered for each other or that consumers would think that the trade marks identify the same proprietor of a common trade source.  In the words of Neville J in Application by Thomas A. Smith to Register a Trade Mark:

   I do not think…a reference to one would in the least leave such an impression in the mind of the reader as to make him mistake the other for it. Looking at the marks I do not think that there is any possibility of anybody being deceived. That nobody will ever make a mistake is more than I am prepared to say, but, if there is a mistake, I think it will be made by some person so foolish, or so unobservant, as in that respect to be without the pale of the protection of the law.[3]

   [3] (1913) 30 RPC 363, 366.

9. For the reasons above, I am not satisfied that the Trade Mark is deceptively similar to TM 1813628.

10. The ground of opposition under s 44 of the Act has not been established.

Section 58A

1. Section 58A of the Act relevantly provides:

   (1)This section applies to a trade mark…the application for registration of which has been accepted because of:

   (a)    Subsection 44(4);

   …

2. Section 44(4) allows a trade mark to be accepted because it has been continuously used since before the priority date of the trade mark with which it is substantially identical or deceptively similar.

3. For s 58A to apply, the trade mark must have been accepted by the examiner under the provisions of s 44(4), or a hearing officer finds during an opposition that it is appropriate to apply the provisions of s 44(4).

4. In this matter the Trade Mark was not accepted by the examiner under the provisions of s 44(4). Furthermore, given my finding that the Trade Mark is not substantially identical with, or deceptively similar to TM 1813628, the provisions of s 44(4) are not available to be applied in this opposition proceeding.

5. The ground of opposition under s 58A of the Act has not been established.

Section 60

1. Section 60 of the Act provides:

   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.

2. To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia before 6 November 2017. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

3. This ground of opposition is particularised in the SGP as follows:

   AOAN is an Australian fully owned and operated entity and has had wide business representations prior to 2013. It is a prominent and active company within the Chinese Australian market. The goods and services include export of the following Australian products: Wine, beverages, confectionery, milk powder, health supplements, cosmetics and cleaning products.

Reputation

1. For the purposes of s 60 ‘reputation’ is ‘the recognition of the [trade mark] by the public generally’.[4] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[5] number of people or potential consumers. The evaluation of what amounts to significant or substantial ‘will depend on the nature of the goods that are the subject of the application in question and the class of consumers of those goods’.[6]

   [4] McCormick & Company Inc v McCormick [2000] FCA 1335 [81].

   [5] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170.

   [6] Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39 [80].

2. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[7] In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[8]

   [7] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77].

   [8] [2019] FCA 923 [83].

3. Turning to the evidence in this matter, the Hii Declaration solely consists of twelve exhibits; that is the declaration does not contain any statements of fact, or otherwise, made by Mr. Hii. None of the exhibits to the Hii Declaration are of any great assistance in evaluating the quantitative or qualitative dimensions of any potential reputation existing in the trade mark AOAN, or any other trade mark. 

4. Exhibit 1 consists of a certificate of registration for trade mark number 1903010 for the word ‘AOAN’ in the name of Aoan International Pty Ltd. Registration of a trade mark does not of itself demonstrate that a reputation exists in that trade mark.

5. Similarly, registration of a business name (Exhibit 2) does not of itself demonstrate that the business name has been used as a trade mark. In Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation Lander J stated:

   There is a clear distinction, in my opinion, between conducting business under a particular name and using a mark in respect of goods and services….to use the name to brand its businesses, that does not mean, however, it has established that it has used a mark or a sign to distinguish goods or services in the course of trade.[9]

   [9] [2005] FCA 1278 [73].

6. Notably, the references to ‘Aoan’ in the following exhibits are quite plainly identifying or referring to the business ‘Aoan International Pty Ltd’ rather than showing use of, or reputation in, a trade mark containing the word ‘Aoan’:

• Exhibit 3 – Licence to export wine, brandy and grape spirit issued to Aoan International Pty Ltd;

• Exhibit 4 – Webpage from amazon.cn where the only references to ‘Aoan’ are listed next to ‘business name’ and ‘company name’.

• Exhibit 5 – article from the Eastern Courier Messenger which makes one reference to ‘Aoan’ in the following context: ‘Aoan International managing director’;

• Exhibit 9 & 10 – Utilities bills issued to Aoan International Pty Ltd;

• Exhibit 11 – Mobile telephone bill issued to Aoan International Pty Ltd; and

• Exhibit 12 – Certificates of vehicle registrations in the name of Aoan International Pty Ltd.

1. Exhibits 6 - 8 arguably show use of ‘Aoan’ as a trade mark. However, Exhibit 6 is not in English and a translation has not been provided. Exhibit 7 consists of a single email interaction and Exhibit 8, which is a photograph of external signage on a commercial premise, is undated.  

2. For the reasons explained above, I am not satisfied that the Opponent has established, as a matter of fact, that a trade mark containing the word ‘Aoan’ had the reputation contemplated by s 60 of the Act.

3. The ground of opposition under s 60 of the Act has not been established.

Decision

1. Section 55(1) of the Act provides:

   Unless subsection (3) applies to the proceedings, 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.

2. The Opponent has not established a ground of opposition. Accordingly, trade mark number 1885292 may proceed to registration one month from the date of this decision.

3. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or direction.

Costs

1. The Applicant sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995.

Katrina Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

28 April 2020