Li Ma v Chowbus Inc

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Li Ma to application under section 92 of the Trade Marks Act 1995 (Cth) by Chowbus Inc to remove trade mark number 2098412 (classes 9, 35, 39, 42 & 43) - chowbus - in the name of Li Ma

Delegate:

Tracey Berger

Representation:

Opponent: Russell Kennedy

Applicant: Linkwell Lawyers

Decision:

2023 ATMO 104

Trade Marks Act 1995 (Cth) – s 96 opposition: application under section 92(4)(a) – no intention to use the trade mark in good faith or authorise use or assign the trade mark to a body corporate and no use in good faith by the registered owner – trade mark to be removed from the Register

Background

Li Ma (‘Removal Opponent’) is the registered owner of the following trade mark:
Registration Number:              2098412
Trade Mark:                chowbus (‘Trade Mark’)
Filing Date:  24 June 2020
Specification:[1]  Class 9: Computer software for use by customers in the ordering of food from restaurants, and for use by restaurants in receiving such food orders; downloadable, interactive and networked software, files and applications, all for use by customers in the ordering of food from restaurants, and for use by restaurants in receiving such food orders for computers…
Class 35: Retail and wholesale services relating to food and drink, including prepared meals…
Class 39: Transportation services; delivery, collection, transport, forwarding and courier services; food and drink delivery, storage, collection, transport, forwarding and courier services…
Class 42: Providing temporary use of online non-downloadable software for providing transportation services, bookings for transportation services and for dispatching motorized vehicles to customers
Class 43: Services for providing food and drink; restaurant, cafe, bar services; catering services…
(‘Registered Goods and Services’)
[1] The complete specification is set out in Annexure A.
On 9 April 2021, Chowbus Inc (‘Removal Applicant’) filed an application under s 92(4)(a) of the Trade Marks Act 1995 (Cth)[2] seeking removal of the Trade Mark from the Register for non-use in respect of all of the Registered Goods and Services (‘Removal Application’).
[2] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The Removal Opponent opposed the Removal Application filing a Notice of Intention to Oppose the removal on 10 June 2021 followed by a Statement of Grounds and Particulars (‘SGP’) on 5 July 2021. The Removal Applicant lodged its Notice of Intention to Defend the Removal Application on 1 September 2021.
On 3 December 2021, evidence in support of the opposition to removal (‘EIS’) was filed consisting of a declaration of the Removal Opponent made on 3 December 2021 with Exhibits 1 to 5.
On 4 March 2022, the Removal Applicant filed its evidence in answer comprising:
i. Declaration of Gina Tresidder, Special Counsel at Russell Kennedy Lawyers, made on 4 March 2022 with Exhibits GT-1 to GT-12; and
ii.Declaration of Linxin Wen, CEO of the Removal Applicant, made on 2 March 2022 with Exhibits 1 to 9.
The Removal Applicant did not file any evidence in reply. The parties were then given an opportunity to request a hearing in this matter or a decision without hearing. The Removal Applicant requested a hearing by written submissions and those submissions were filed on 16 March 2023. The Removal Opponent did not elect to be heard. I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to decide based on the aforementioned materials.
Relevant Provisions
Part 9 of the Act deals with the removal of trade marks from the Register for non-use and s 92(4)(a) relevantly provides:
(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) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) 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 to which the non‑use application relates and that the registered owner:
(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;
The Removal Opponent bears the onus of rebutting the allegation under s 92(4)(a) on the balance of probabilities.[3] This onus is articulated in s 100 which relevantly provides:
[3] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.
100 Burden on opponent to establish use of trade mark etc.
(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
(a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) 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 to which the opposed application relates (relevant goods and/or services); or
(b) any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or
[…]
(2) For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:
(a) the opponent has established that the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services before that period; or
(b) in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:
(i) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee in relation to those goods or services before that period and that that use was in accordance with the terms of the assignment; and
(ii) the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee before that period as having been a use of the trade mark in relation to those goods or services by the registered owner.
In accordance with s 101, I may decide to remove the Trade Mark from the Register for all or some of the Registered Goods and Services, 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.
Removal Opponent’s Evidence
Ms Ma attests that she worked in the restaurant industry in Canberra for many years as service staff and management. In early 2020, she decided to set up a business focusing on the delivery of food from Asian restaurants (’Business’).
Ms Ma’s son suggested the Trade Mark as a clever mix of ‘chow’, being slang for food as well as the Cantonese spelling of her son’s surname ‘Zhou’, and ‘bus’ suggesting delivery services.
Ms Ma declares that she asked her son’s friend Hao Wang, who had some experience with registering trade marks, to assist her in registering the Trade Mark. In mid-2020, Mr Wang informed Ms Ma that he had filed two applications, one for the Trade Mark and one for a logo form of the Trade Mark that he had found on the Internet. The second application was allocated trade mark number 2098413 and covered the mark (‘Logo Application’).
Mr Wang also informed Ms Ma that he had filed the trade mark applications in his own name to ensure that he received the relevant correspondence and that he would transfer the marks to Ms Ma once the marks were registered. Ms Ma paid Mr Wang $4000 to cover the application fees.
Ms Ma declares that shortly after the filing of the applications, she consulted Linkwell Lawyers who advised that the Trade Mark should be transferred to her and recommended that the Logo Application be withdrawn “due to copyright concerns”. The Trade Mark was assigned to Ms Ma by a Deed of Assignment dated 30 June 2020. This assignment was recorded on the Register on 20 July 2020. The Logo Application was withdrawn on 3 July 2020.
The Trade Mark was registered on 2 February 2021 and on 4 February 2021, Ms Ma incorporated Chowbus Delivery Pty Ltd (‘Company’). Ms Ma claims that she authorised the Company to use the Trade Mark.
In early February 2021, Ms Ma instructed WebUmate Pty Ltd (‘WebUmate’) to register the domain name and design a website for the Business (‘Website’). Ms Ma states that the domain name was registered on about 18 February 2021 and the Website was uploaded that day.
Ms Ma claims that from February 2021 to 12 April 2021, as agreed in an informal arrangement, four restaurants trialled the Business.
Finally, Ms Ma claims that she intended to use the Trade Mark for the Business before the filing of the Trade Mark and intends to continue to use it once the current proceedings are resolved.
Removal Applicant’s Evidence
The Removal Applicant was founded in Chicago, USA in 2016 and now operates in over 20 cities across the USA. Since March 2016, the Removal Applicant has used the mark chowbus for its takeaway food delivery platform (similar to UberEats or Deliveroo) which targets independent Asian restaurants and provides menus in Mandarin, Cantonese and English. In addition to the word chowbus, the Removal Applicant used the logo until it was updated in March 2019 to .
As a result of the pandemic, the Removal Applicant’s business experienced 700% growth in 2020 which attracted significant media and investor attention.
The Removal Applicant’s chowbus mobile phone app (‘App’) has been available in Apple’s App Store since 19 March 2016. On 20 March 2016, the App was first downloaded in Australia even though the Removal Applicant was not yet offering its delivery services in Australia.
In April 2020, the Removal Applicant started to conduct market research about entering the Australian market and consulted with the Asian restaurant community in this country. On 3 June 2020, the Removal Applicant registered a local subsidiary, Chowbus Australia Pty Ltd.
In June 2020, the Removal Applicant employed two General Managers, one to operate its business in Canberra and the other in Melbourne. These employees immediately commenced entering into partnerships with Australian restaurants entering into the first contract on 20 June 2020. By August 2020, the Removal Applicant had over 200 delivery staff and the Removal Applicant started to accept orders on its App in September 2020.
The Removal Applicant has two major competitors in Australia operating a similar business focussed on the delivery of Asian restaurant food being Hungry Panda and EASI. Hao Wang is the owner of the Canberra branch of EASI and hence the Removal Applicant claims that Mr Wang would have been well aware of its App and the steps being taken to enter the Australian market at the time of filing the Trade Mark.
On 8 March 2021, the Removal Applicant first became aware of the Removal Opponent when it received an email from Apple Inc advising that the Removal Opponent had complained that the App infringed the Trade Mark. On 11 March 2021, the Removal Applicant received a cease and desist letter (‘Dispute Letter’) from the Removal Opponent which claimed that the Removal Opponent had been operating a food delivery service in Canberra.
Ms Tresidder declares that between 12 and 18 March 2021, she conducted online searches including via Google, ASIC and LinkedIn for the Removal Opponent’s business and any use of the Trade Mark, particularly in Canberra. The Website was not active at the time of these searches and no use of the Trade Mark was found other than the ASIC registration for the Company.
On 19 March 2021, Russell Kennedy responded to the Dispute Letter which requested the Removal Opponent provide proof of its use of the Trade Mark given they had been unable to identify any use. On 30 March 2021, Mr David Li of Linkwell Lawyers telephoned Ms Tresidder who informed her that the Removal Opponent was looking to sell the Business and already had an offer for $1 million. Mr Li declined to provide any details of the Business unless the Removal Applicant indicated they were interested in purchasing it and said he could not remember the Website address when asked.
Ms Tresidder also conducted enquiries into Hao Wang who is also known as Jack Wang. These enquiries disclosed that on 24 June 2020, in addition to filing an application for the Trade Mark and the Logo Application, Mr Wang also filed application numbers 2098414 for (‘Fantuan Logo’) and 2098415 for ‘fantuan delivery’. Ms Tresidder’s further research disclosed that Fantuan Delivery is a popular food delivery app in North America which was launched in 2014. On 3 July 2020, the application for the Fantuan Logo was withdrawn and application 2098415 was opposed by Just Order Enterprises Corp, the owner of US trade mark registrations for fantuan and part of the Fantuan Logo.[4]
[4] This opposition has since been withdrawn after application 2098415 was assigned to Just Order Enterprises Corp.
Discussion
To successfully oppose the Removal Application, the Removal Opponent must establish:
(i)that on 24 June 2020 when the Trade Mark was filed, the applicant for registration had an intention to use the Trade Mark in good faith or authorise another person to use the mark or assign the Trade Mark to a body corporate for use in Australia for the Registered Goods and Services; or
(ii)the Removal Opponent used the Trade Mark in good faith in the period ending one month before the filing of the Removal Application (ie. before 9 March 2021).
Intention to use the Trade Mark in Good Faith
Meeting the requirement that a removal opponent had the requisite intention to use a trade mark is not arduous. Justice Fullagar observed in Aston v Harlee Manufacturing Co:
[T]he making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that "intention" in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.[5]
[5] [1960] HCA 47, [21].
However, once a removal opponent establishes a prima facie case it had the requisite intention to use a mark, the onus shifts to the removal applicant. In this regard, the delegate in Structureco Inc v Starite Distributors Pty Ltd commented:
Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s.92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case - perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.[6]
[6] [2000] ATMO 31 (Hearing Officer I. Forno).
In its SGP, the Removal Opponent states that “the applicant was applying for the trade mark on behalf of the registered owner. The registered owner intended to use (and in fact has already used) the trade mark in Australia”. In addition, Ms Ma declares in her EIS that prior to the application for the Trade Mark being filed, she intended to use the Trade Mark for the Business and to continue to use it once the present proceedings are resolved. These statements would usually be sufficient to establish the requisite intention to use the Trade Mark and shift the onus to the Removal Applicant.
However, the initial applicant for registration of the Trade Mark was Hao Wang and it is his intention at the time of filing the Trade Mark which is relevant. The phrase ‘intention in good faith’ means a “genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions”.[7] This is not a case where the Trade Mark has a long history and the intention of the applicant at the time of filing the Trade Mark cannot be determined. Nevertheless, there is no evidence that Mr Wang intended to use the Trade Mark for commercial purposes, authorise use of the Trade Mark or assign it to a body corporate for its use. In fact, the EIS indicates that he had no such intention and filed the Trade Mark for the sole purpose of assigning it to the Removal Opponent upon registration. This is not a proper basis for filing a trade mark under s 27 (which defect is not cured by the assignment of the Trade Mark to Ms Ma[8]) and does not constitute an intention to use the Trade Mark in good faith sufficient to successfully oppose the Removal Application. I am satisfied that the applicant, Mr Hao Wang, did not have an intention to use the Trade Mark in good faith at the time of filing.
[7] Edwards v Liquid Engineering 2003 [2008] FCA 970, [8] (Gordon J); affirmed in Liquideng Farm Supplies v Liquid Engineering 2003 [2009] FCAFC 7, [56] (Tamberlin, Sundberg & Besanko JJ).
[8] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).
Use of the Trade Mark in Good Faith
I now turn to a consideration of whether the Removal Opponent has used the Trade Mark in good faith before 9 March 2021.
In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J stated:
The expression “use in good faith” has a well understood meaning in this context, viz, real, as opposed to token, use in a commercial sense.[9]
[9] Woolly Bull Enterprises v Reynolds [2001] FCA 261, [16].
Even a small degree of use can be for a genuine commercial purpose[10] but if a single act of use is relied on, it should be established by “if not conclusive proof, at any rate overwhelmingly convincing proof”.[11]
[10] E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd [2010] HCA 15, [64] (French CJ, Gummow, Crennan and Bell JJ).
[11] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).
Ms Ma claims that the Website was available to be accessed from about 18 February 2021. In support, the EIS includes an invoice from WebUmate, an invoice dated 3 March 2021 from Amazon Webservices Inc for their services in relation to the Website for the billing period 1 to 28 February 2021 and an undated extract of the Website. The Removal Applicant argues that these documents do not establish use of the Trade Mark.

In particular, the Removal Applicant points out, the WebUmate invoice does not identify the website created although I note that the invoice is addressed to the Company. Nevertheless, it is not conclusive proof that the Website was available for consumers to place orders for food delivery before 9 March 2021.
There are a number of issues with the Amazon invoice. The invoice is issued to Ms Ma and not the Company, it is for the amount of one cent which the Removal Opponent claims is due to a lack of website traffic and it is for ‘Amazon Simple Storage Service’. There are no charges for data transfer suggesting that the Website was not live. Moreover, there is no indication that the invoice relates to the Website or the Business. Again, even if the charge in the Amazon invoice relates to services provided in relation to the Website, this is not evidence that consumers could place food orders for delivery.
In relation to the undated Website extract, Ms Ma declares that the extract is from 21 December 2021, after the relevant period, but reflects the contents of the Website since February 2021. Ms Ma’s evidence is somewhat inconsistent in that she declares that she convinced four restaurants to trial the Business’ services between February and April 2021 but in the next paragraph, she declares that an informal agreement had been reached with each of the four businesses by the end of February 2021. These four restaurants are all listed in the Website extract. Yet by the time Ms Tresidder tried to access the site between 12 and 18 March 2021, it was inactive. Moreover, there is no supporting documentation of any food delivery orders, takeaway bags, uniforms or other promotional use that would usually accompany a food delivery service.
In my view, there is no clear documentary evidence showing that the Removal Opponent used the Trade Mark in good faith in the period ending one month before the filing date of the Removal Application.
I am not satisfied that the applicant, Mr Hao Wang, had an intention to use the Trade Mark in good faith at the time of filing and that the Removal Opponent used the Trade Mark in good faith in the period ending one month before the filing date of the Removal Application. Accordingly, the application under s 92(4)(a) is successful.
Discretion
The Removal Opponent has not argued that I should exercise my discretion under s 101(3) not to remove the Trade Mark from the Register even if the grounds on which the application was made have been established. To exercise this discretion, I must be positively satisfied by the Removal Opponent that it is reasonable to not remove the Trade Mark.[12] The Removal Opponent has made no submissions in respect of the discretion. I therefore do not consider it appropriate to exercise my discretion not to remove the Trade Mark.
[12] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).
Decision
The Removal Opponent has not established its opposition to the Removal Application. Accordingly, I direct that registration 2098412 be removed from the Register in respect of all of the Registered Goods and Services one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.
The Removal Applicant has sought an award of costs. It is usual for costs to follow the event and I see no reason to depart from that principle. Accordingly, I award costs against the Removal Opponent under s 221 in accordance with Schedule 8 of the Regulations.
Tracey Berger
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
31 July 2023
ANNEXURE A
Class 9:
Computer software for use by customers in the ordering of food from restaurants, and for use by restaurants in receiving such food orders; downloadable, interactive and networked software, files and applications, all for use by customers in the ordering of food from restaurants, and for use by restaurants in receiving such food orders for computers, multi-function hand-held computers, electronic personal organizers, e-readers, tablet computers, personal audio players, mobile phones; magnetic data carriers, audio CDs; compact discs, DVDs and other digital information carrying mediums, including with recordings; downloadable application software for use by customers in the ordering of food from restaurants, and for use by restaurants in receiving such food orders; electronic and downloadable vouchers and coupons; encoded loyalty cards; interactive and networked software for use by customers in the ordering of food from restaurants, and for use by restaurants in receiving such food orders; downloadable digital animations and moving images; downloadable digital images; downloadable digital media and computer files being text messages, video messages, musical messages and multimedia messages; downloadable digital educational media; electronic publications and downloadable electronic publications, not being publications in the field of computer security; downloadable menus; podcasts; downloadable computer software for modifying the appearance and enabling transmission of images, audio-visual and video content; computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software for use by customers in the ordering of food from restaurants, and for use by restaurants in receiving such food orders for use as an application programming interface (API); computer software in the nature of an application programming interface (API) which facilitates online services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; none of the foregoing being computer security products
Class 35:
Retail and wholesale services relating to food and drink, including prepared meals; processing purchase orders; organisation, operation and supervision of customer loyalty programs and loyalty card services; business intermediary services for the provision of goods, other than computer security goods, services, other than computer security services, food, drink; business introductions; advertising and promotion services; order procurement services; consumer research; marketing research; procuring consumer generated reviews for market research purposes; business management services, business administration services and business information services, provided via a web-based system and online portals in the field of consumer-to-business commerce; business information management, namely, electronic reporting of business information; business analytics, namely, information and analytics regarding the sale of products and services of others, and regarding the authenticating, processing and management of mobile payments; preparation of business reports; preparing reports for others regarding the sale of products and services of others; business information management, namely, electronic reporting of business analytics relating to payment processing, authentication and tracking; electronic processing of orders for others; invoicing services; organisation, operation and supervision of loyalty card and loyalty scheme services; loyalty, incentive and bonus program services and the administration, organisation, management thereof; customer loyalty services for commercial, promotional and/or advertising purposes; organisation, operation and supervision of loyalty, incentive and bonus program services; provision of information, advisory and consultancy services in relation to the aforesaid services; none of the foregoing services relating to computer security goods and services
Class 39:
Transportation services; delivery, collection, transport, forwarding and courier services; food and drink delivery, storage, collection, transport, forwarding and courier services; collection, transport, delivery, forwarding and courier services relating to goods, packages, gifts, parcels, documents, post, mail, correspondence, advertising materials; provision of information, advisory and consultancy services in relation to the aforesaid services
Class 42:
Providing temporary use of online non-downloadable software for providing transportation services, bookings for transportation services and for dispatching motorized vehicles to customers
Class 43:
Services for providing food and drink; restaurant, cafe, bar services; catering services; contract food services being the provision of food; serving food and drink; food and drink consultancy; preparation of food and drink; restaurant services for the provision of fast food; take away services; corporate hospitality services relating to food and drink; charitable and benevolent provision of food and drink; provision of information relating to food, drink, restaurants, bars, supermarket food courts, providers of food and drink; providing food and drink via mobile transportation, mobile vans, mobile trucks, mobile vehicles; food truck services; personal chef services; provision of information, advisory and consultancy services in relation to the aforesaid services

[2023] ATMO 104

24 June 2020

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Intellectual Property

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