LoLo Group Co Ltd v Runan (Aust) Pty Ltd

[2008] ATMO 7

TRADE MARKS ACT 1995

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

Re:Opposition by Lolo Group Co., Ltd to registration of 1093445(32) Chinese Characters & Stylised words Lo Lo (Logo) proceeding in the name of Runan (Aust) Holding Pty Ltd.

Delegate:

Iain Thompson

Representation:

Applicant.  Did not appear or file written submissions.

Opponent:  Trevor Stevens of Davies Collison Cave

Decision:

2008 ATMO 7

1.          Section 52 proceedings – section 58 – importation of goods before priority date of opposed application  – opposition established.

2.          Costs awarded against applicant.

Background

1. Hong Jiang of Roseberry, Sydney, filed an application to register a trade mark, current details of which appear below:

   App No:  1093445

   Owner:  Runan (Aust) Pty Ltd

   Filing Date:  5 January 2006

   Goods:Class: 32 Non-alcoholic fruit juice beverages; beverages of almonds; fruit juice; mineral water; beer; vegetable juices; aerated water; cola and nectar juices; all included in class 32

   Trade Mark:  

   Endorsements:   The applicant has advised that the Chinese characters appearing in the trade mark may be transliterated as LO LO which may be translated into English as LO LO.

2. As an aside, I note that the Chinese character LO, above, means ‘dew, juice, exposed to view’ and that this, in view of the applicant’s advice noted in the above endorsement, might have left the application susceptible to refusal on the basis of section 62 of the Act had it been pursued as a ground of opposition or (if registered) subsequently open to a rectification action under section 88 of the Act.

3. The application was advertised as accepted for possible registration on 27 July 2006 and, on 25 October 2006, Lolo Group Co., Ltd of XX ChengDe City [sic], China, (‘the opponent’), filed Notice of Opposition to the registration of the trade mark.  The Notice cites several grounds of which section 58 (ownership) was primarily argued at the hearing and is the ground under which this opposition is most conveniently decided.

4. I heard this matter in Sydney on 13 November 2007 as a delegate of the Registrar of Trade Marks.  Mr Trevor Stevens of Davies Collison Cave appeared for the opponent.  The applicant did not appear or file written submissions.

   Evidence

5. The evidence comprises a statutory declaration by Wang Baolin who is President of the opponent and who has been associated with the opponent for twenty two years.

6. The declarant attests to the registration of an international registration designating 49 countries of a trade mark identical to that which is here opposed for goods which are, in essence, the same goods.  The international registration does not include Australia.

7. More pertinent to these proceedings, the declarant attests that in November 2005 the opponent entered into a sales agreement with Remote Trading International Pty Ltd of Ashfield, Sydney (‘Remote’).  Under the agreement, the opponent’s goods – 2600 cartons of almond juice bearing a trade mark identical to that which is here opposed – were imported into Australia prior to Tuesday, 20 December 2005.  Documents which objectively corroborate the declarant’s statements are appended to the declaration.  I accept that prima facie the opponent used its trade mark on goods in Australia on or by Tuesday 20 December 2005.

8. There is no evidence served and filed by the applicant and no obvious defect in the evidence of the opponent.

   Section 58

9. Section 58 of the Act provides:

   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.

10. The principles concerning the establishment of ownership of trade marks are well settled.[1]  Absent evidence of use of the trade mark by the applicant, to establish this ground the opponent must demonstrate to my satisfaction that, before the priority date of the opposed application it has used a trade mark which is at least substantially identical[2] to the trade mark on or in relation to goods or services which are the same kind of thing.[3]

    [1] Shell Co of Australia Ltd v Rohm And Haas Co (1949) 78 CLR 601

    [2] Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) AIPC 91-049; (1994) 120 ALR 495

    [3] Re Hicks' Trade Mark (1897) 22 VLR 636

11. There is no evidence from the applicant as to the date of its first use (if any) of the trade mark; thus the relevant date is the date that the opposed application was filed – 5 January 2006.

12. The first use of the trade mark in Australia was on or before 20 December 2005 when the opponent’s goods bearing the trade mark were imported into Australia by Remote.  This is before the relevant date noted above.

13. The trade mark which is here opposed is identical to that under which the opposed goods were imported into Australia by the opponent and Remote.

14. The specification of goods in respect of which registration is sought explicitly contains ‘almond beverages’ which are the same as the opponent’s ‘almond juices’ which were previously imported bearing the trade mark. 

15. The three legs that the opponent must establish in terms of section 58 are thus all present: the use by the opponent is use of the trade mark before the priority date of the opposed application; the trade marks share an identity and are in fact identical; and, the goods are the same kind of thing.

16. Accordingly, the opponent has established its opposition in terms of section 58 of the Act to my satisfaction in relation to almond juices and other goods which are the ‘same kind of thing’.

17. Obviously the specification of the opposed trade mark contains goods other than almond juices or beverages – however many of these goods are, or may be, the ‘same kind of thing’ in terms of Hicks’ Trade Mark, footnote 3, and make the framing of a suitable restriction to the opposed specification a matter of some difficulty[4].  For instance, a restriction to ‘beer’ may be complicated by the fact that almond flavoured beers are not unknown.  Prima facie, these goods are not the same kind of thing as ‘almond juices,’ but may be the same kind of thing as the more general description ‘almond beverages’.  While determining what constitutes goods of the same kind is not a matter of finding some general description which conveniently fits both set of goods, to my mind this does introduce a complication.  In the absence of evidence, or detailed submissions, it is difficult to assess which of the goods other than ‘almond juices’ in the opposed specification are ‘the same kind of thing’ as the opponent’s goods.  In other circumstances these reservations might not apply; however, here, in the absence of evidence, submissions or representations from both the applicant and opponent concerning a suitable restriction, I will not advocate for either party and suggest one.

    [4] See, for example the discussion in Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184

    Decision

18. Section 55 of the Act provides:

    55  Decision

    Unless the proceedings are discontinued or dismissed, 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.

    Note:For limitations see section 6.

19. Having regard to the establishment by the opponent of its ground under section 58 of the Act, I refuse to register application 1093445.

    Costs

20. As the opponent has been successful in these proceedings, I award costs against the applicant at the scale set out in the regulations.

    Iain Thompson

    Hearing Officer

    Trade Marks Hearings

    16 January 2008