Man Ag v Beiqi Foton Motor Co, Ltd
[2015] ATMO 90
•24 September 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by MAN AG to extension of protection to Australia of IRDA 1430063 (IR No. 1077054) (12) - AUMAN - filed in the name of Beiqi Foton Motor Co, Ltd.
Delegate: | Heath Wilson |
Representation: | Opponent: Chris Burgess of Counsel instructed by Spruson & Ferguson. Holder: Ben Fitzpatrick of Counsel instructed by Davies Collison Cave. |
Decision: | 2015 ATMO 90 Opposition under Regulation 17A.29 – grounds of opposition pursued under sections 42(b), 44, 60 and 62A of the Trade Marks Act 1995 – opposition not established – IRDA protection extended. |
Background
Beiqi Foton Motor Co., Ltd (‘the Holder’), a company based in China, requested on 27 April 2011 for extension of protection to Australia of its international registration no. 1077054. The details of the International Registration Designating Australia (‘IRDA’) appearing on the Register of trade marks are:
Trade Mark No: 1430063
International Registration: 1077054
Trade Mark:
(‘the Trade Mark’)
Filing Date: 27 April 2011
Specification of Goods:
Class 12: Automobiles; vehicles for locomotion by land, air, water or rail; tyres; motorcycles; bicycles; funiculars; trolleys; sleighs (vehicles); trucks; tilting cars
The IRDA was accepted and advertised for possible extension of protection in the Australian Official Journal of Trade Marks on 22 September 2011.
A notice of opposition to the extension of protection of the IRDA was filed on 22 December 2011 by Man AG (‘the Opponent’). The notice nominated grounds of opposition by virtue of Regulation 17A.31 of the Trade Marks Regulations 1995[1] (‘the Regulations’). The grounds were those under sections 41, 42(b), 43, 44, 58, 58A, 59, 60, 62A of the Trade Marks Act 1995 (‘the Act’) and also regulations 17A.31 (4)(a) & (b).
[1] Prior to amendments introduced by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1)
Evidence
The evidence stages commenced and comprised the following declarations:
Evidence in Support
Declaration of Eric Coste (Vice President of MAN Truck and Bus Asia Pacific) made 19 October 2012 with exhibits EC-1 to EC-2 (Confidential) (‘the Coste declaration’)
Evidence in Answer
Declaration of Qian Haifeng (Manager of Legal Department of the Holder) made 19 September 2013 with exhibits 1 to 16 (‘Haifeng declaration’).
Declaration of Lena Balakrishnan (Solicitor for the Holder) made 11 October 2013 with annexures LJB-1 and LJB-2.
Evidence in Reply
Declaration of Khajaque Kortian (Solicitor for the Opponent) made 6 May 2014 with exhibits KK-1 to KK-7.
Holder’s Further Evidence
Declaration of Lena Balakrishnan made 9 September 2014 with exhibits LJB-1 to LJB-3.
Opponent’s Further Evidence
Declaration of Francesca Colubriale (Solicitor for the Opponent) made 13 August 2015 with exhibit FGC-2.
The second declaration of Lena Balakrishnan was filed in support of a further evidence application exhibiting the appeal documentation from relevant decisions of the Taiwanese Intellectual Property Office and the Riyadh Administrative Court of Appeal of the Kingdom of Saudi Arabia. The application for permission to file further evidence was granted by this office.
After the date for the hearing of the opposition had been scheduled, an application for permission to file further evidence was filed by the Opponent on 11 August 2015 attaching a declaration of Francesca Colubriale. The Opponent was seeking permission to file as evidence the English translation of the decision of the Supreme Administrative Court in Taiwan.
I addressed the latter application for further evidence at the hearing. The Holder did not object to its inclusion and did not wish to serve anything in response. I am satisfied that this information could not have been obtained earlier as is evident from the date of the decisions. The fact that an English translation was required would also have further delayed the production of this evidence. The Taiwanese decision provides the entire picture of the opposition proceedings in that forum and I am satisfied that it is credible and relevant. The Holder, having been granted permission to serve its own further evidence in a similar vein, would not be unduly disadvantaged by its inclusion. As such my decision was to allow the Holder’s further evidence into proceedings.
Both parties had supplied a written summary of their respective arguments for the substantive opposition. In its submissions the Opponent indicated that it would be pursuing the grounds of opposition under sections 44, 60, 62A and 42(b) of the Act. For completeness, I find that the remaining grounds nominated in the notice of opposition have been abandoned.
As a delegate of the Registrar of Trade Marks, I conducted the hearing of the opposition in Sydney on 21 August 2015. The Opponent was represented by Chris Burgess of Counsel instructed by Spruson & Ferguson. The Holder was represented by Ben Fitzpatrick of Counsel instructed by Davies Collison Cave. The instructing attorneys were also present.
Onus
The Opponent bears the onus of establishing a ground[2] and the standard of proof is on the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 at [32].
[3] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].
Section 44
The first ground of opposition argued by the Opponent was that under section 44 of the Act. That section relevantly provides:
44Identical etc. trade marks
(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.
Note 1:For deceptively similar see section 10.
Note 2:For similar goods see subsection 14(1).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
In order to establish the ground of opposition under section 44 of the Act, the Opponent relied on the following earlier filed trade mark registrations (‘the Opponent’s trade marks’):
| TM No. | Trade Mark | Filing Date | Class / Statement of Goods |
| 516623 | 9 Aug 1989 | Class 12: Land vehicles; trucks, lorries, buses, municipal vehicles; parts and fittings in this class for all the aforesaid goods This mark was registered under the Trade Marks Act 1955 in Part A | |
| 1390329 | MAN | 25 Oct 2010 (Div: 7 Apr 2009 | Class 7: Engines (except those for land-based vehicles), internal combustion engines, clutches and devices for transmitting power (except those for land-based vehicles) and their parts and spare parts; engines for ships, for on-board power generation and for stationary power plants, in particular two-cycle and four-cycle diesel engines, four-cycle diesel-gas and gas otto engines and their parts, in particular mixed-fuel devices (machines), shafts, gear mechanisms, clutches (hand-operated) for the maintenance of engines; exhaust turbochargers and turbines (except those of land-based vehicles) and their parts; transmissions for vehicles (except for land-based vehicles); land-based and floating power plants comprising diesel and diesel-gas engines; compressors and turbines, included in this class, in particular axial compressors, radial compressors, process-gas turbines, radial expanders; machine sets assembled from the aforementioned turbines and compressors; process-gas screw compressors, included in this class, screw expanders, included in this class, industrial steam turbines, industrial gas turbines, except turbines for land-based vehicles; power production machines, assembled from the aforementioned compressors and turbines; ship's gear mechanisms with diesel engine and/or turbine drive; drive machines (except those for land-based vehicles)
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The initial question of whether the goods listed in the IRDA and those in class 12 of the specification of the Opponent’s trade marks are similar[4] was not contended. It was accepted by the Holder, and I find, that that the goods in the respective class 12 specifications are similar. The priority dates for the Opponent’s trade marks were also earlier than the IRDA. However, the parties disagreed on the issue of whether the Trade Mark was deceptively similar to the Opponent’s trade marks. For completeness, the Opponent did not argue that they were substantially identical.
[4] See section 14 of the Act.
With regard to deceptive similarity, in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[5] (‘Australian Woollen Mills’) the court found:
[T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.
[5] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 per Dixon and McTiernan JJ (at 658).
Lord Radcliffe in de Cordova v Vick Chemical Co[6] made the following comments which are relevant to this case:
The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him ... It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.
[6] De Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106; 1B IPR 496 (at 499).
Mr Burgess pointed out that the Opponent’s trade mark is wholly contained within the Trade Mark. While this is an accurate observation, that fact by itself does not necessarily mean that the two trade marks are deceptively similar.
The visual difference between the parties’ trade marks is the letters ‘AU’ appearing at the prefix of the Trade Mark. Mr Burgess argued that the prefix has little material effect in the overall comparison and does not alter the impression of the memorable part (being the word “MAN”). However, to dissect the Trade Mark in this fashion is at odds with established legal principles indicating it is the whole of the trade marks that must be considered and the general impression that would be retained by a prospective consumer.
The justification for the Opponent’s arguments was founded on the proposition that the prefix ‘AU’ is an abbreviation meaning either “Auto” or ‘Australian’. However, I find that neither of these meanings is apparent on the evidence or the context in which those letters appear in the Trade Mark.
In the Coste declaration Mr Coste expresses the view that (in light of the Opponent’s trade mark reputation) the use of ‘AU’ at the beginning of the Trade Mark would be seen as a country level code designating Australia as the origin of the goods.[7] However, there is nothing to corroborate the belief that consumers would interpret the Trade Mark in this way or that traders in this industry are in the practice of placing a country level code as the prefix of their brands.
[7] Coste Declaration at paragraph 18.
Mr Burgess made submissions on the similarity between the font of the Trade Mark and the font of the Opponent’s trade mark no. 516623. However, I find that nothing turns on this issue, because I do not find anything memorable or out of the ordinary about either font. While both trade marks are identified as “Fancy” on the Australian Trade Marks Online Search System (‘ATMOSS’), the font is not so significant that the trade marks would not covered in other legible forms of lettering.[8]
[8] See the reasoning in Morny Ltd’s Trade Marks (1951) 68 RPC 55; (1951) 68 RPC 131 (CA UK) (at 149-150).
The letters ‘AU’, being the prefix of the Trade Mark, are the most important for the purposes of aural comparison.[9] While there is a syllable break between ‘AU’ and ‘MAN’ there is no spacing and the Trade Mark is not likely to be pronounced as two clearly separate words. The aural difference between the trade marks remain, regardless of whether the first two letters in the Trade Mark are pronounced as “ow” or “aw”.
[9] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 at 279.
Furthermore, I find that there is no contextual confusion likely between the trade marks. Neither trade mark has any particular meaning for trucks, buses, cars or automobiles. One is a recognizable English word which is quite distinctive for those goods. Conversely, the Trade Mark has no meaning in English but may present as a foreign surname.
Finally, the goods listed in the IRDA are generally high priced items including trucks, buses and various other land vehicles. The products are therefore likely to be purchased a great deal more carefully and the prospective customer is unlikely to be confused as to the trade origin of the goods. I find that, if there were any danger of deception or confusion between the respective trade marks, it is not real or tangible.
Decisions from Foreign Jurisdictions
By way of evidence in reply and further evidence, the Opponent supplied me with a number of decisions from International offices where one (or more) of the Opponent’s trade marks was found to be similar to another trade mark incorporating the letters MAN. For completeness, I have summarized that evidence here.
| Forum | Trade Marks | Decision No. |
| Taiwan IP Office | AUMAN v MAN | 102-Xing-Shang-Su-Zi-No. 141 |
| Supreme Administrative Court in Taiwan | AUMAN v MAN | 104-Pan-Zi- No. 262 |
| Saudi Arabia (Riyadh Administrative Court of Appeal) | AUMAN v MAN | 3/D/E/6 of 1435H |
| OHIM[10] (First Board of Appeal) | MAN v KLIKMAN | R2591/2011-1 |
| OHIM (Opposition Division) | MAN v TOPMAN | B 2 070 038 |
| IP Institute of Bosnia & Herzegovina | MAXMAN & Device v MAN | BAZ0812891 |
| The Metropolitan Tribunal (Hungary) | SHACMAN v MAN | 1.Pk.21907/2013/4 |
| French Patent and Trade Mark Office (INPI) | LOC MAN v MAN | Opp 13-4243 |
[10] Office for Harmonization in the Internal Market
Apart from differences in trade mark legislation and practice concerning the comparison of trade marks in other jurisdictions, the differences in culture and industries of other countries should also be acknowledged. In addition, I note that an English word (such as ‘man’) may have no meaning in non-English speaking jurisdictions which will affect the weight placed upon it in a comparison. In terms of the relevance of the foreign decisions, comments made by the Taiwanese Intellectual Property Office are particularly apposite:
As to the precedents cited by the Trademark Owner, such as “HIMAN design”, “MAN YI and device”, “MANSORY and device”, “MANY”, “COUNTRYMAN” and “HEADMANN and device”, and the co-registration status of both parties’ marks with the WIPO, in view that the trademark designs and the goods designation of said precedents are different from those of this opposition case, based on a case-by-case basis, said precedents should not be taken into consideration in the instant case; besides, as the custom, culture, rules and laws differ from country to country, the co-registration of the trademarks in dispute outside of Taiwan cannot support the arguments that the opposed mark should be allowed to be registered in Taiwan.
In relation to analogous decisions within this jurisdiction, Windeyer J commented in Re Bali Brassiere Co Inc's Registered Trade Mark and Berlei Limited's Application[11]:
Cases were cited to me from passages in judgments dealing with marks held to be, or held not to be, by reason of similarities, deceptive or confusing. I have read these cases, and others. I do not think I need discuss them. The governing principles are not in dispute; and little is to be gained by the quotation of enunciations and elaborations of them in other cases. The difficulty is always in their application to the facts of the case in hand.
[11] Re Bali Brassiere Co Inc's Registered Trade Mark and Berlei Limited's Application [1968] HCA 72; (1968) 118 CLR 128 (at 139).
After taking into account the governing principles in Australia and all relevant information before me, I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s trade marks. Therefore, the ground of opposition under section 44 of the Act has not been established.
Section 60
Section 60 of the Act provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
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.
Note:For priority date see section 12.
To establish the ground of opposition under section 60, the Opponent must demonstrate the existence of a reputation extant in another trade mark in Australia as at 27 April 2011. The Opponent must then establish that the use of the Trade Mark would be likely to deceive or cause confusion as a result of the aforesaid reputation.
In terms of the level of requisite reputation, it must be amongst a significant or substantial amount of Australian consumers. That requirement must be sensibly applied with reference to the relevant goods/services[12]. The legal precedent on this issue also makes it clear that reputation in a trade mark cannot be assumed, but rather must be established as a matter of fact[13] by the Opponent.
[12] Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1; [2000] FCA 1587 (at 20).
[13] Conagra Inc. v McCain Foods (Australia) Pty Ltd (1992) 33 FCR 302; 23 IPR 193 (at 77).
Concerning the likelihood of deception or confusion, it is not a requirement that the trade marks are deceptively similar, but there should be some nexus of similarity between them.[14] In addition, the goods need not be similar, but if they are, there may be a greater likelihood of deception or confusion.[15]
[14] Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [2010] ATMO 5; (2010) 85 IPR 647.
[15] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 at [40].
The Coste declaration sets out the background of the Opponent and the use of its MAN trade marks both overseas and in Australia. The evidence demonstrates that the Opponent has also used the logo seen below:
In addition, the above MAN Logo occasionally appears on top of a stylised representation of a lion. The Opponent’s trade marks appear prominently on all of its products.
The Opponent’s trade marks have been used in relation to motor vehicles, trucks, bus chassis and parts since about 1960 in Australia.[16] Confidential exhibit EC-2 to the Coste declaration sets out the sales of those products from June 2008 to June 2012 and also the advertising expenditure over a similar period. The Coste declaration indicates that articles for MAN trucks have been published in a number of Australian magazine publications since 2002. Examples from trucking and transport publications have been provided some of which are dated before the priority date. An advertising campaign called the “MAN TGA Tour” was launched in May 2003[17] and included exhibitions in major Australian cities.
[16] Coste Declaration at paragraph 7.
[17] Exhibit EC-1 at Tab 7.
In McCormick & Co Inc v McCormick[18], Kenny J said:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.
[18] McCormick & Co Inc v McCormick (2000) 51 IPR 102 (at 127).
In its written submissions, the Applicant accepted that the Opponent had established a reputation in its MAN trade mark both in Australia and internationally, but argued that there was no likelihood of confusion between the trade marks. This was due to the dissimilarity of the trade marks, the nature of the relevant consumers and industry combined with the fact that the evidence shows the Opponent has largely used the word ‘MAN’ as a separate and distinct trade mark (rather than with variants that may make it more similar to the Trade Mark).
Some of the printouts from the Opponent’s Australian websites ( and are dated from around June 2012. This evidence is after the priority date and Mr Coste does not indicate when the websites were actually created and how long they have been accessible to Australians. I note that billboard advertising of the Opponent’s trucks has occurred in Sydney and Melbourne since 16 July 2012. Once again, this evidence is after the priority date of the IRDA and does not serve to demonstrate the acquired reputation as at that date.
There is some use of the trade mark MAN followed by the truck model TG-A (‘Technology Generation – A’). This is an exception to the general rule that the Opponent’s MAN and device trade marks operate solely as its badges of origin (i.e. without model variants). The balance of the evidence provides an indication of the substantial reputation of the Opponent’s trade marks in foreign jurisdictions.
I accept that the Opponent’s MAN trade mark had a reputation in Australia in April 2011. I am not satisfied that the reputation is such that the use of the Trade Mark will be likely to deceive or cause confusion. Firstly, I have found that the trade marks are dissimilar. Secondly, there are no demonstrated instances of actual confusion in the industry, whether in Australia or overseas. Thirdly, the bus and trucking industry and the consumers that purchase these vehicles are unlikely, even if aware of the Opponent’s brands, to confuse the products. Taken together, these factors weigh against finding a likelihood of deception or confusion.
I am not satisfied that the reputation established in the Opponent’s trade marks is of the nature and extent that the use of the Trade Mark would be likely to deceive or cause confusion in the relevant Australian marketplace.
The ground of opposition under section 60 of the Act has not been established.
Section 62A
Section 62A of the Act provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
Under this ground of opposition, Dodds-Streeton J in the case of Fry Consulting Pty Ltd v Sports Warehouse Inc.(No 2)[19], has said:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.
The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.
[19] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 (at 165-167).
With reference to the particular facts in DC Comics v Cheqout Pty Ltd[20] Mr Burgess argued that the IRDA was made in bad faith. He also referred to the findings in the decision of the Taiwanese Office where the Holder’s application to file the AUMAN trade mark was not in good faith. On appeal, the Taiwan Supreme Administrative Court found, at paragraph 6:
In addition, Appellant [Beiqi Foton Motor Co., Ltd] had known the existence of Intervenor’s [MAN Truck and Bus Ag] trademarks prior to the application for registration of the Trademark at issue, and the naming of the Trademark at issue was inspired by Intervenor’s cited Trademarks. Appellant intentionally employed the concept of “high-end and mid-level heavy truck originating from Europe” and “the brand of MAN which is renowned in Europe” so as to make consumers confused or associate the Trademark at issue with others, and thus was not in good faith. [21]
[20] DC Comics v Cheqout Pty Ltd (2013) FCR 194 at [73].
[21] My addition in bold.
In contrast, within the Haifeng declaration the following was asserted regarding the adoption of the Trade Mark[22]:
The AUMAN trade mark was adopted by my Company because “AUMAN” means “AUTO MAN”, and shows the characters of quality, technology, smart, comfort.
[22] The Haifeng declaration at paragraph 9.
I cannot infer (on the basis of a judgment made elsewhere) that the intent of the Holder in filing the IRDA was to appropriate the reputation of the Opponent’s business. Bad faith is a serious allegation and a positive finding should not be lightly made.[23] In Australian Woollen Mills[24], Dixon and McTiernan JJ reinforced the view that the intent of a trader has evidential value. Their Honours said:
The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public. But the practical application of the principle may sometimes be attended with difficulty.
[23] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26 at [12].
[24] Supra, (at 657).
If the decision of the Taiwanese Court and the circumstances and intention surrounding the adoption of a trade mark ‘AUMAN’ in a foreign marketplace is relevant to the situation in Australia, Australian Woollen Mills also makes it clear that it is in the end a question of fact for the court to decide.
Mr Burgess further argued that at least an inference may be drawn from the finding that the trade mark in Taiwan had not been made in good faith combined with fact that the Holder had been put on notice regarding the section 62A ground (it was nominated in the notice of opposition). It was argued that the Holder’s failure to respond to one aspect of the findings of the Taiwanese Court appearing in an exhibit in the Opponent’s evidence in reply meant that an adverse inference[25] may be drawn in this case.
[25] See Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298 (at 312).
I cannot agree with the above arguments The Opponent nominated almost every ground of opposition and it was not until the Opponent produced its written submissions on 31 July 2015 that the Holder would have been aware that section 62A was a live issue. The submissions identify the particular paragraph of the Taiwanese Court judgment which refers to the Holder’s marketing documents, stating that the Opponent relies upon the Court’s findings. The marketing documents referred to in the decision are not in the evidence before me.
On the one hand, the Applicant had already provided direct evidence regarding its adoption of the Trade Mark. On the other, I have reference to the contents of marketing documents in a finding of a court of foreign jurisdiction. I am not bound by that finding and I am not privy to all the facts before the decision maker in that matter. The particular marketing documents referred to have not been placed before me so that I can determine their relevance and probative value. Neither can it be said that the Holder is somehow obligated to respond or rebut the contents of documents which are not in evidence.
On the balance of probabilities, I find that the ground of opposition under section 62A of the Act has not been established.
Section 42(b)
Section 42(b) of the Act provides:
42Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a)…
(b)its use would be contrary to law.
The Opponent argued that the use of the Trade Mark would be contrary to law, specifically in contravention of section 18 and/or subsections 29(g) and (h) of Schedule 2 to the Australian Consumer Law. The reasons provided for this ground were similar to the section 60 ground of opposition except that it was alleged the use of the Trade Mark would mislead or deceive consumers into thinking there is a form of business affiliation, association, or sponsorship existing between the Opponent and the Holder.
As section 60 has not been established it follows that there are not a reasonably significant number of potential purchasers that are likely to be aware of the Opponent’s product and then deceived or misled (rather than deceived or confused), by the Holder’s use of the Trade Mark. In addition, there is nothing in the evidence to satisfy me that there are false or misleading representations that would enliven subsections 29(g) or 29(h) of the Australian Consumer Law.
I am not satisfied that the use of the Trade Mark would be contrary to law and I find that the ground of opposition under section 42(b) of the Act has not been established.
Decision
At the time the notice of opposition was filed, regulation 17A.34 provided:
17A.34Decision on opposition
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.
(2)The Registrar must tell the International Bureau of his or her decision.
A ground of opposition under the Act has not been established. I extend protection to Australia in respect of all the goods listed in the IRDA one month from the date of this decision.
If the Registrar is served with a notice of appeal before protection is extended, I direct that protection shall not occur until the appeal is withdrawn or discontinued. Otherwise I direct that extension of protection of the IRDA be subject to any orders of the court.
The International Bureau will be notified of the Registrar’s decision.
Costs
The Holder has been successful in its opposition. I therefore exercise the discretion of the Registrar of Trade Marks inherent within section 221 of the Act and award costs against the Opponent in the relevant amounts set out in Schedule 8 of the Regulations.
Heath Wilson
Hearing Officer
Trade Marks Hearings & Oppositions
24 September 2015
Key Legal Topics
Areas of Law
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Civil Procedure
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Commercial Law
Legal Concepts
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Abuse of Process
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Jurisdiction
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Res Judicata
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Stay of Proceedings
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