Liu Cheng Hsiung v JTC Electronics Corp - [2023] ATMO 190

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Liu Cheng Hsiung to applications under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth) by JTC Electronics Corp. for cessation of protection of Protected International Trade Mark numbers 1202287 (International Registration number 935333) (class 8) and 2020936 (International Registration number 1474998) (classes 6, 7 & 9) - JTC & Device (figurative) - in the name of Liu Cheng Hsiung

Delegate:

Tracey Berger

Representation:

Opponent: John O’Mahoney, Collison & Co

Applicant: Sharon Givoni and Rahul Shah, Sharon Givoni Consulting

Decision:

2023 ATMO 190

Trade Marks Act 1995 (Cth) – application under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth) – no use or authorised use of trade mark established for registration 1202287 – no intention to use trade mark established for registration 2020936 – discretion not exercised – protection of international trade marks to cease

Background

Liu Cheng Hsiung (‘Opponent’) is the registered holder in Australia of the Protected International Trade Marks (‘Registrations’) detailed below:

Number

Trade Mark

Priority Date

Goods

1202287
(IR 935333)

(‘87 Mark’)

(‘Trade Mark’)

6 June 2007

Class 8: Fullers (hand tools); nippers; spanners (hand tools); nail drawers (hand tools); screwdrivers; dilaters (hand tools); pestles (hand tools); lifting jacks, hand-operated; ratchet wheels (hand tools); three-jaw pulling bearing (hand tools)

(‘87 Goods’)

2020936

(IR 1474998)

(‘36 Mark’)

4 March 2019

(‘Relevant Date’)

Class 6: Ladders of metal; screws of metal; vice claws of metal; belt stretchers of metal; bottles [metal containers] for compressed gas or liquid air; tool chests of metal, empty; cask stands of metal; identity plates of metal.

Class 7: Hand-held tools, other than hand-operated; power-driven wrenches; grinders, electric; pneumatic hammers [hand-held]; pneumatic wrenches; spray guns for paint.

Class 9: Weighing apparatus and instruments; measures; measuring instruments; diagnostic apparatus, not for medical purposes; optical apparatus and instruments

(‘36 Goods’)

Collectively, the 87 Goods and 36 Goods are referred to as the ‘Registered Goods’.
2.On 29 January 2022, JTC Electronics Corp. (‘Applicant’) filed an application under reg 17A.48C of the Trade Marks Regulations 1995 (Cth)[1] seeking cessation of protection of the 87 Mark for all of the 87 Goods, pursuant to reg 17A.48D, with respect to the ground under s 92(4)(b). On 7 February 2022, the Applicant filed a similar application with respect to the ground under s 92(4)(a) for the cessation of protection of the 36 Mark for all of the 36 Goods. Collectively these applications are referred to as the ‘Removal Applications’.
[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995(Cth).

The Opponent filed Notices of Intention to Oppose the Removal Applications on 29 March 2022 and Statements of Grounds and Particulars on 19 April 2022. On 20 May 2022, the Applicant filed Notices of Intention to Defend the Removal Applications.
On…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2023] ATMO 190
Decision Date: 27 November 2023

CaseChat Overview and Summary

This matter concerned applications for the removal of two trade mark registrations, numbers 1202287 and 2020936, from the Register of Trade Marks. The Opponent, Liu Cheng Hsiung, sought to maintain these registrations, while the Applicant sought their removal on the grounds of non-use or lack of intention to use. The proceedings were heard by Tracey Berger, Hearing Officer, in the context of the *Trade Marks Act 1995* (Cth) and the *Trade Marks Regulations 1995* (Cth).

The primary legal issues before the Hearing Officer were whether the Opponent had established an intention to use the trade mark at the time of filing for registration 2020936, and whether there had been use or authorised use of the trade mark for registration 1202287 during the relevant period. The core of the dispute revolved around whether the use of the mark by a company named JTC Tools constituted authorised use by the Opponent, as defined by the *Trade Marks Act*.

The Hearing Officer found that while there was evidence of use of the mark by JTC Tools, the Opponent had not sufficiently demonstrated that this use was authorised. Specifically, the Opponent failed to establish that he exercised the necessary quality or financial control over JTC Tools' use of the trade mark, which is a requirement for authorised use under section 8(1) of the Act. The evidence presented, including shipping documents and invoices, did not conclusively prove the requisite control, and reliance on website information was deemed inappropriate for evidentiary purposes. Consequently, the Hearing Officer concluded that the Opponent had not established his opposition to the removal applications.

Accordingly, the Hearing Officer directed that protection of registrations 1202287 and 2020936 cease one month from the date of the decision, unless an appeal was filed. The Applicant was successful in the removal applications and was awarded costs against the Opponent, with costs for registration 2020936 being reduced.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

The relevant claims in the LCH Declaration are summarised below:· the Opponent states he had an intention to use the Trade Mark at the time the Registrations were filed and has used the Trade Mark continuously for the Registered Goods throughout 2019 to 2022;· the Trade Mark was first used in Taiwan in 1981 by a company associated with the Opponent and his family and information about the businesses associated with the Opponent is available at (‘JTC Website’);· Exhibit LCH-1: undated extracts from the website of an Australian distributor of the Opponent’s goods at LCH-2: Bills of Lading for shipments of ‘JTC’ products from JTC Tools Co Ltd (‘JTC Tools’) in Taiwan to PTSB Investments in Australia dated 26 March 2019, 27 November 2020 and 4 January 2022. Mr Liu claims he is associated with JTC Tools which is the company referenced on the JTC Website;· Exhibit LCH-3: invoices issued by JTC Tools to PTSB Investments dated 21 December 2021, 17 November 2020, 13 March 2019;· Exhibit LCH-4: export documents from JTC Tools to PTSB Investments which are predominantly in Chinese with no English translation provided; · Exhibit LCH-5: invoice from PTSB Investments Holdings to a customer named ‘Mobile Workshop Supplies’ dated 31 December 2021 for JTC products;· Exhibit LCH- 6: examples of remittances of invoices paid by The Arthur Superannuation Fund in Tasmania, Australia to JTC Tools dated 11 November 2021 and 5 October 2020; and· Exhibit LCH-7: Statement dated 9 August 2022 by the Chairman/CEO of MWS Company and PTSB Company that he met with Harrison (Mr Lin), manager (CEO) of JTC Tools, and since 1 October 2015 has been placing orders with JTC Tools a couple of times per year. Applicant’s Evidence The Givoni Declaration outlines various online searches conducted for ‘Liu Cheng Hsiung’ and JTC Tools and the results of enquiries undertaken by the Applicant’s Chinese attorneys for JTC Tools, ‘Ling Hongru’ and ‘Liu Cheng Hsiung’. Ms Givoni also attests to the purchase of two JTC products from MWS Auto Tools and provides listings for the same products on the Amazon Australia website. Based on these enquiries, Ms Givoni states that her conclusion is that the Opponent did not have an intention to use the Trade Mark at the time of filing the application for the 36 Mark and has not used or authorised use of the Trade Mark which is the subject of the Registrations.Discussion The parties are in agreement that the Trade Mark has been used by JTC Tools. In relation to the Removal Application for the 87 Mark, the central issue in dispute is whether or not that use is authorised by the Opponent. However, other than a single instance of use of the Trade Mark in the undated website extracts at Exhibit LCH-1 of the LCH Declaration, all of the evidence shows use of JTC solus and not the Trade Mark as protected. Section 7(1) provides that a person has used a trade mark if that person uses a mark with additions or alterations not substantially affecting the identity of the mark. Accordingly, for the purpose of this discussion, I have referred to the use by JTC Tools as use of the Trade Mark but if the use by JTC Tools is found to be authorised use, it is necessary to consider whether that use is use of the Trade Mark or a mark with additions or alterations not substantially affecting the identity of the mark as protected.

Decision

Reasons for decision

Firstly, I note that there is no evidence that the Opponent has used or intends to use the Trade Mark itself but rather the mark will continue to be used by a family company that presumably has some association with the Opponent. Given that the Opponent does not appear to be in a position to exercise control over the use of the Trade Mark by JTC Tools and that any reputation in the mark would reside with JTC Tools and not the Opponent, I am not persuaded that it is appropriate to retain the Registrations. If JTC Tools wishes to apply to register the Trade Mark for the Registered Goods, that is an option available to it. In view of the importance of the integrity of the Register, I do not consider it appropriate to exercise my discretion not to the remove the Trade Mark in respect of the Registered Goods.Decision The Opponent has not established its opposition to the Removal Applications. Accordingly, I direct that protection of registrations 1202287 and 2020936 cease one month from the date of this decision. If the Registrar is served with a notice of appeal before then, I direct that cessation of protection shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the Registrations be dealt with as the Court sees fit. The Applicant has been successful in the Removal Applications and has requested its costs. Accordingly, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations with respect to registration 1202287 and in respect of registration 2020936, I award reduced costs against the Opponent in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Co Pty Ltd.[17] [17] [2001] ATMO 78 (Hearing Officer T. Williams).Tracey BergerHearing OfficerOppositions and HearingsTrade Marks and Designs27 November 2023

Ratio Decidendi

Legal Principle Established

For the 36 Mark, the question is whether the Opponent had the requisite intention to use the Trade Mark given that the Trade Mark (or at least the mark ‘JTC’) was already in use by JTC Tools at the time the application was filed. Use of Trade Mark in the Relevant Period – Registration 1202287 Section 7(3) provides that an authorised use of a trade mark by a person is taken to be a use of the trade mark by the registered owner. Section 8(1) defines an authorised user as a person who uses a trade mark under the control of the trade mark owner. What constitutes control is not exhaustively defined by the Act but includes quality control and financial control.[7][7] s 8. The Opponent argues that JTC Tools and the Opponent act with a unity of purpose and contends that the Opponent exercises quality control and financial control over JTC Tools’ use of the Trade Mark. In support of this contention, the Opponent points to the attestation in the LCH Declaration that use of the Trade Mark commenced in Taiwan in 1981 by a company associated with the Opponent and his family. The company which first used the mark is not named in the evidence but the Opponent does refer to information about the businesses associated with him at the JTC Website. No extracts from this website are in evidence. It is not appropriate during an opposition for the Registrar to obtain evidence from weblinks. Weblinks can break and the information on them can change over time. Any evidence on which a party wishes to rely should be printed or scanned to PDF and filed as evidence. If that is not possible due to technical issues, some other evidence substantiating the party’s claims should be filed. In any event, the company presently referred to on this website is JTC Auto Tools and there does not appear to be any mention of the Opponent or how JTC Auto Tools is related to JTC Tools. The Opponent submits that it is apparent that the Opponent and JTC Tools are essentially one entity because the address of the Opponent recorded on the Register is the same address used by JTC Tools in some shipping documents[8] and invoices.[9] Also, the Opponent argues he clearly had access to these documents in order to include them in evidence and was able to obtain the statement at Exhibit LCH-7 from JTC Tools’ Australian customer.[8] LCH Declaration, Annexure LC-2.[9] Ibid Annexure LC-3. The Full Court found in Trident Seafoods Corporation v Trident Foods Pty Ltd that control could be established in circumstances where the two companies, one being the registered owner and the other being the user of the trade mark, shared the same directors:It must be inferred from the evidence that the two companies operated with a unity of purpose. ... As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand. ... it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand.[10][10] [2019] FCAFC 100, [45] (Reeves, Jagot and Rangiah JJ).