Jonathan Hii v Shiming Li

This decision concerns an opposition filed by Jonathan Hii against the registration of trade mark application number 1885292, filed by Shiming Li. The application sought registration for goods in classes 29, 30, and 32, including various food products, beverages, and water. The opponent, Mr. Hii, self-represented, lodged an opposition under section 52 of the *Trade Marks Act 1995* (Cth), pursuing grounds under sections 44, 58A, and 60 of the Act. The applicant, Mr. Li, did not file evidence in answer or written submissions.

The delegate of the Registrar of Trade Marks was required to determine whether the opponent had established any of the nominated grounds for opposition. Specifically, the delegate had to consider whether the applicant's trade mark was substantially identical or deceptively similar to an earlier registered trade mark (section 44), whether the application was accepted based on prior continuous use under section 44(4) (section 58A), and whether an earlier trade mark had acquired a reputation in Australia such that the use of the applicant's trade mark would be likely to deceive or cause confusion (section 60). The onus was on the opponent to prove these grounds on the balance of probabilities, with the relevant date for assessment being the filing date of the application, 6 November 2017.

Regarding the section 44 ground, the opponent relied on trade mark number 1813628, registered to Aoan International Pty Ltd with a priority date of 7 December 2016. While this earlier trade mark was held by a different entity and had an earlier priority date, the delegate found that the applicant's trade mark was neither substantially identical nor deceptively similar to it. The delegate applied the principles of deceptive similarity, considering the impression left on a person of ordinary intelligence and memory, and concluded that the trade marks were too dissimilar to cause confusion. Consequently, the section 44 ground was not established. The section 58A ground was also dismissed as the trade mark was not accepted under section 44(4) and the delegate had already found no deceptive similarity. For the section 60 ground, the opponent needed to demonstrate a reputation in Australia for an earlier trade mark. However, the evidence provided by the opponent, primarily exhibits to a declaration, did not establish the quantitative or qualitative dimensions of any such reputation. The delegate noted that trade mark registration or business name registration alone does not prove reputation.

As none of the grounds of opposition were established, the delegate ordered that the opposition be dismissed and that the trade mark application proceed to registration.