Multi Access Limited v Guangzhou Baiyunshan Pharmaceutical Holdings Co Ltd
[2024] ATMO 35
•27 February 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by Multi Access Limited to registration of the trade mark the subject of application 1848144 (30, 32) – WangLaoJi (fancy) – in the name of Guangzhou Baiyunshan Pharmaceutical Holdings Co Ltdg
Delegate: Robert Wilson
Representation: Opponent: Sophie Yates of Counsel, instructed by Johnson Winter Slattery
Applicant: John O’Mahoney of Collison & Co
Decision: 2024 ATMO 35
Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44, 42(b) and 60 considered – no grounds established – trade mark may proceed to registration
Background
1. This decision concerns an opposition to registration of the trade mark which is the subject of the application for registration detailed below. The application is in the name of Guangzhou Baiyunshan Pharmaceutical Holdings Co Ltd (‘Applicant’). The opposition was brought by Multi Access Limited (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth).
Trade Mark:
(‘Opposed Trade Mark’)
Application Number:
1848144
Filing Date:
30 May 2017
Specification:
Class 30: Chocolate-based beverages; tea; tea-based beverages; sugar; candy; pastries; moon cakes; cereal preparations; rice crackers; soya flour; ice cream; condiments; yeast; meat tenderizers for household purposes; herbal tea beverages; herbal tea (for food purposes)
Class 32: Beer; whey beverages; waters (beverages); non-alcoholic beverages; aerated water; plant beverages; powders used in the preparation of fruit-based beverages; fruit juice beverages; fruit juices; vegetable juices (beverages); soya-based beverages, other than milk substitutes; bottled water; cola; cola drinks; concentrated fruit juice; drinking water; drinking water with vitamins; energy drinks; fruit concentrates and purees used as ingredients of beverages; fruit drinks; herbal juices; herbal beverages
(‘Applicant’s Goods’)
2. Unless otherwise indicated, any references to sections or regulations below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.
3. Following publication of the application’s acceptance, the Opponent filed a Notice of Intention to Oppose registration of the Opposed Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’). The SGP nominated grounds of opposition under ss 42(b), 44 and 60. The Applicant subsequently filed a Notice of Intention to Defend.
Evidence
4. The Opponent filed Evidence in Support of its opposition, being:
Declaration made on 6 September 2022 by Chan Hung To, the director of the Opponent, with Exhibits CHT-1 to CHT-4 (‘Chan declaration’); and
Declaration made on 6 September 2022 by Agnes Wong Kin Yee, a director of Wong Lo Kat Enterprises, with Exhibits AW-1 to AW-5 (‘Wong declaration’).
5. The Applicant filed Evidence in Answer, being:
Declaration made on 19 December 2022 by Mr Li Chuyuan, the Chairman of the board of the Applicant, with Exhibits AA-1 to AA-23.
6. The Opponent filed Evidence in Reply, being:
Declaration made on 21 February 2023 by Benjamin O’Mara, a lawyer employed at Johnson Winter Slattery, the Australian law firm authorised to represent the Opponent, with Exhibit BEO-1.
7. Once the time allowed for filing evidence had ended the parties requested to be heard.
8. I am a delegate of the Registrar of Trade Marks, and in this capacity, I heard the matter on 7 February 2024. Sophie Yates of Counsel, instructed by Johnson Winter Slattery, appeared on behalf of the Opponent. John O’Mahoney from Collison & Co, appeared on behalf of the Applicant. The representatives’ oral submissions were supplemented by a written summary of submissions filed prior to the hearing.
The Opponent
9. The Opponent is the owner of the registered trade mark detailed below:
Trade Mark:
(‘Opponent’s Trade Mark’)
Trade Mark Number:
574111
Priority Date:
30 May 2017
Specification:
Class 5: Herbal products for food and medicinal purposes and all other goods in this class
(‘Opponent’s Goods’)
Endorsements:
The applicant has advised that the transliteration of the Chinese characters appearing in the mark is KAT LO WONG which may be translated in to English as LUCKY OLD KING.
According to the Chan declaration the Opponent’s Trade Mark can be transliterated as WONG LO KAT in Cantonese and WANG LAO JI in Mandarin. It is also declared:
There has been extensive use of the (Wang Lao Ji Characters), including in the form of [the Opponent’s Trade Mark] in Australian in respect of [herbal tea, herbal extract, instant herbal tea, and canned herbal tea]
According to the Wong declaration:
I am a fifth generation descendant of Mr Wong Lo Kat, the creator of the secret formula of a famous herbal tea sold under his name since the 1800s in the Guangdong Province of China (and elsewhere). I have been assisting with the family herbal tea business since 1971.
Ms Wong also declared that a company of which she was a former director—Wong Lo Kat (Enterprises) Limited (‘WLKE’)—registered the Opponent’s Trade Mark in Australia in 1992. Ms Wong says she was responsible for instructing the lawyers to handle the trade mark application. Ms Wong indicated she is also a former director of Wong Lo Kat (International) Ltd (‘WLKI’). It was also declared:
On June 28 1993, I granted a licence to Mr Chan Hung To and to Hung To (Holdings) Company Limited (‘HTHC’) to use the secret formula of ‘Wong Lo Kat’ herbal tea (the ‘Licence’). In 1996, WLKI granted a license to HTHC for use of various Wong Lo Kat marks, including [the Opponent’s Trade Mark]. The trade marks featuring the brand ‘Wong Lo Kat’ registered in Australia at the time, and the goodwill in the brand in Australia, were assigned to Wong Lo Kat Limited in 2004. …
Prior to, and after the creation of the Licence, Won Lo Kat branded tea products were sold in Australia, and accordingly, there has been extensive use of Chinese characters transliterated as ‘Wong Lo Kat’ in Cantonese and ‘Wang Lao Ji’ in Mandarin (‘Wong Lo Kat Characters’), in the form of [the Opponent’s Trade Mark] in Australia in respect of [herbal teas] …
From 1951, WONG LO KAT herbal tea has been sold in Australia. The Wong Lo Kat Characters, including [the Opponent’s Trade Mark], have been used on the packaging for these products. …
From 1946, WONG LO KAT herbal tea extract has been sold in Australia. Wong Lo Kat Characters, including [the Opponent’s Trade Mark], have been used on the packaging for these products. …
From 1995, WONG LO KAT instant mixes for making herbal tea drinks have been sold in Australia. The Wong Lo Kat Characters, including [the Opponent’s Trade Mark], have been used on the packaging for these products.
The Applicant
There is insufficient information in the material before from which I might provide a background of the Applicant. However, the Applicant is the owner of the following trade mark registrations (‘Applicant’s Registrations’). Each of the Applicant’s registrations has the same filing date as the Opposed Trade Mark:
| 1848145 | 1848146 | 1848147 |
Each of the Applicant’s Registrations bears the same endorsement which reads:
The applicant has advised that the CHINESE characters appearing in the trade mark may be transliterated as WANG LAO JI which may be translated into English as LUCKY OLD KING.
Each of the Applicant’s registrations has the same specification of goods being:
Class 30: Chocolate-based beverages; sugar; candy; pastries; moon cakes; cereal preparations; rice crackers; soya flour; ice cream; condiments; yeast; meat tenderizers for household purposes
Class 32: Beer; whey beverages; waters (beverages); non-alcoholic beverages; aerated water; plant beverages; powders used in the preparation of fruit-based beverages; fruit juice beverages; fruit juices; vegetable juices (beverages); soya-based beverages, other than milk substitutes; bottled water; cola; cola drinks; concentrated fruit juice; drinking water; drinking water with vitamins; energy drinks; fruit concentrates and purees used as ingredients of beverages; fruit drinks
I note that when the applications for the Applicant’s Registrations were originally filed the specification of goods for each was the same as the Applicant’s Goods. The Opponent’s Trade Mark was cited in respect of a s 44 ground for rejection during examination of those applications. The ground for rejection was overcome by the Applicant’s request to delete tea; tea based beverages; herbal tea beverages; and herbal tea (for food purposes) from the Class 30 specification of each of the trade marks. Following notification of acceptance of the applications, the Opponent opposed registration of each of the trade marks. The opposition decision resulted in the deletion of herbal juices and herbal beverages from the Class 32 specification of each of the trade marks following a request by the Applicant that this occur.[1]
[1] Multi Access Ltd v Guangzhou Baiyunshan Pharmaceutical Holdings Co Ltd [2022] ATMO 204 (Cooper).
I note that the Opponent’s Trade Mark was cited in respect of a s 44 ground for rejection during examination of the present application; however, following an ex parte hearing on the examination the Hearing Officer withdrew the ground for rejection. There was no formal decision published following the ex parte hearing—the Hearing Officer elected to accept the application with a short form decision saved to IP Australia’s file.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44 and 60—all grounds were pressed at the hearing. There is a general presumption of registrability in favour of the applicant.[2] The onus of proof in an opposition rests upon the Opponent.[3] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is 30 May 2017, being the filing date of the application (‘Relevant Date’).[5] The Relevant Date is also the priority date for the purposes of ss 44 and 60.
Discussion
[2] Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519, [26]-[27] (Kenny J) and the authorities cited therein.
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[4] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).
The Transliterations and Translations
Central to the present dispute are the transliterations and translations of the various Chinese character trade marks listed above, and the translation of the Opposed Trade Mark. In particular, the Opponent submitted that the Opponent’s Trade Mark could be transliterated as WANG LAO JI and translated as LUCKY OLD KING; the Applicant disputed both of these assertions.
The Opponent’s Trade Mark and the Applicant’s Registrations include the same three characters, albeit in reversed in order. The Applicant’s 1848147 trade mark and the Opponent’s Trade Mark are provided below for ease of comparison. The Opponent submitted that the reversed order of the characters does not change the meaning or transliteration of the respective trade marks; the Applicant submitted the contrary.
As indicated above, the endorsements on the Applicant’s Registrations state that the transliteration of its registered trade marks is WANG LAO JI. The endorsement on the Opponent’s Trade Mark states that it is transliterated as KAT LO WONG. Nevertheless, the Opponent submitted that its trade mark can also be transliterated as WANG LAO JI and WONG LO KAT, depending on whether it is read as Mandarin or Cantonese, respectively.
In its submissions the Applicant referred to trade mark number 1397876, shown below. The trade mark has the status of ‘Removed: Non-use’ and the Opponent is shown as the owner.
| ‘Opponent’s Removed Mark’ | ||
Endorsements: | The applicant has advised that the Mandarin characters appearing in the trade mark may be transliterated as WONG LO KAT and that the words LO KAT may be translated into English as OLD LUCKY. | |
At the hearing, the Opponent submitted that the Opponent’s Removed Mark ought not be considered in this matter because it was not included in the Applicant’s evidence: as a consequence of which the Opponent did not have an opportunity to file evidence in reply to it. It was submitted that were the mark to be considered the Opponent would not be afforded procedural fairness. I am not persuaded by the Opponent’s submissions on this point. It is my view that references to trade marks on the Register, regardless of their status, is not evidence in the usual sense. In trade mark opposition proceedings, such references are akin to references to case law: neither requires an opportunity to file evidence in response to the reference. One of the reasons for requiring written summaries of submissions prior to the hearing is to give the parties an opportunity to consider such references prior to the hearing. The Applicant referred to the Opponent’s Removed Mark in its written summary of submissions filed a week prior to the hearing: this is ample opportunity to prepare submissions in respect of it. It is my intention to consider the trade mark.
The Applicant’s purpose in referring to the Opponent’s Removed Mark was to draw attention to the endorsement on that trade mark and the manner in which the Opponent had transliterated and translated its trade mark there. The characters which appear in the Opponent’s Removed Mark are the same as in the other Chinese character marks so far mentioned. The order of the characters is reversed when compared to the Opponent’s Trade Mark and in the same order as the Applicant’s Registrations. The endorsement on the Register in respect of the Opponent’s Removed Mark states that ‘the trade mark may be transliterated as WONG LO KAT and that the words LO KAT may be translated into English as OLD LUCKY’.
Transliterations and translations of Chinese characters contained in trade marks are provided by applicants when registration is applied for; this is required by regs 4.3(6) and 4.3(5) respectively. Regulation 4.3(5) requires that:
If the representation of a trade mark in an application for registration of the trade mark includes words of a language other than English, the applicant must file in support of the application a translation of the words into English, if required to do so by the Registrar at the time of application or later.
Transliterations and translations provided by applicants are, generally, taken on face value during examination and included in endorsements.
The translations provided in respect of the Applicant’s Registrations and the Opponent’s Trade Mark is LUCKY OLD KING in each case. The endorsement on the Opponent’s Removed Mark states that ‘the words LO KAT may be translated in to English as OLD LUCKY’. The Opposed Trade Mark does not bear an endorsement. It is not clear why the Registrar did not require a translation of the Opposed Trade Mark during examination, as provided for in reg 4.3(5).
In applying for registration of its trade marks, the Opponent provided differing transliterations and translations for the Opponent’s Trade Mark and the Opponents Removed Mark: being, KAT LO WONG vs WONG LO KAT and LUCKY OLD KING vs OLD LUCKY, respectively. The Applicant submitted that this is telling, and contradicts the Opponent’s submissions that the order of characters does not affect the meaning and does not prevent the characters transliteration in the manner asserted by the Opponent. I am faced, therefore, with contradictory submissions in respect of the translation and transliteration of Chinese characters, and of the relevance of the order of Chinese characters as to their translation and transliteration.
This is a dispute concerning registration of a trade mark in Australia. English is the language used in legislation in Australia, including the Trade Marks Act 1995 (Cth); this is reflected in the regulations concerning transliterations and translations referred to above. In proceedings before the Registrar of Trade Marks which concern trade marks which include or are comprised of non-Roman characters or non-English words, parties should assume that the Registrar has no particular knowledge of languages other than English. Where the translation and/or transliteration of non-English language trade marks is central to the dispute, and the parties’ views conflict on those matters, the parties ought to provide evidence from an independent expert in the relevant language. As indicated above, during examination transliterations and translations provided by Applicants are taken at face value. However, where such are in dispute the Registrar will not take the endorsement as evidencing any particular translation and/or transliteration. In the absence of evidence from an expert in the relevant language the Registrar is unlikely to be able to reach an informed view and the presumption in favour of registrability becomes a significant determining factor of the outcome.
As is usual, the onus in this dispute is on the Opponent to establish its opposition. In the absence of expert evidence, in the light of the contradictions mentioned above, and contrary submissions by the Applicant, I am not satisfied that the Opponent’s Trade Mark may be transliterated as WANG LAO JI. I am prepared to proceed on the basis that the Opponent’s Trade Mark may be transliterated as JI LAO WANG as this appears to be consistent with the transliteration provided by the Applicant for the Applicant’s Registrations. As to the translation of any of the trade marks before me, I am unable to reach an informed view and, therefore, proceed on the basis that the meanings conveyed by the Opposed Trade Mark and the Opponent’s Trade Mark differ.
Consideration of deceptive similarity
For each of its grounds of opposition the Opponent sought to rely on the deceptive similarity of the Opposed Trade Mark and the Opponent’s Trade Mark. It is useful to tabulate the comparison I am to consider in the light of the above discussion, and I have done so below.
| Opposed Trade Mark | Opponent’s Trade Mark | |
| Visual Comparison | ||
| Aural Comparison | WANG LAO JI | JI LAO WANG |
| Conceptual Comparison | Different to Opponent’s Trade Mark | Different to Opposed Trade Mark |
Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[6]
[6] Ibid [13].
Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.[7]
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.[8]
Third, allowance must be made for imperfect recollection.[9]
Fourth, the effect of the spoken description must be considered.[10]
Fifth, it is necessary to show a real tangible danger of deception or confusion.[11]
Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source.[12] …
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.[13]
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.[14]
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[15] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[16] [17]
[7] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).
[8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73] (Moore, Sackville and Emmett JJ); Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Dixon CJ, McTiernan, Kitto, Taylor and Owen JJ).
[9] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74] (Moore, Sackville and Emmett JJ).
[10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75] (Moore, Sackville and Emmett JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).
[11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).
[12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).
[13] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).
[14] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (Mason J).
[15] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville and Emmett JJ).
[16] Ibid [100].
[17] [2012] FCA 1022, [37]–[46].
It is clear from the comparison table, above, there are clear and significant differences between the trade marks in each of the areas of comparison. The visual differences are stark. Aurally, the reversed order of the sounds is significant. The marks are taken to be conceptually different. Overall, I am not satisfied that the trade marks are deceptively similar. The implications of this finding will be discussed further, below, in respect of each of the grounds of opposition.
Section 44
Provisions relevant to the consideration of s 44 in this matter are reproduced below:
Section 44 - Identical etc. trade marks
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.
…
If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.Section 10 - Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
Section 14 – Definition of similar goods and similar services
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services.
In the SGP the Opponent nominated the Opponent’s Trade Mark in respect of s 44. The particulars indicated that the Opponent considered that the Opposed Trade Mark was both substantially identical and deceptively similar to its trade mark; however, at the hearing only deceptive similarity was pressed. Accordingly, to successfully oppose registration pursuant to s 44 the Opponent must establish that the Opponent’s Trade Mark:
· has a priority date which is earlier than the Relevant Date (‘the first requirement’);
· is in respect of at least some goods which are similar to the goods, or closely related to the services, claimed by the Applicant (‘the second requirement’); and
· is deceptively similar to the Opposed Trade Mark (‘the third requirement’).
I have found, above, that the respective trade marks are not deceptively similar. The third requirement is therefore not established. Consequently, the Opponent has failed to establish this ground of opposition.
Section 60
Section 60 is reproduced below:
Section 60 - 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.
To establish a ground of opposition under s 60 an opponent must demonstrate that at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Opposed Trade Mark would be likely to deceive or cause confusion. The Opponent relied on the Opponent’s Trade Mark to support this ground of opposition.
The evidence provided by the Opponent to establish acquired reputation has significant shortcomings, for example:
undated or dated after the Relevant Date;
many invoices to company with addresses not in Australia;
invoices to Australian addressed companies refer to ‘Wong Lo Kat Canned Herbal Tea’. Such an invoice does not constitute use of the Opponent’s Trade Mark—although to a certain extent supports a view that tea was imported to Australia;
Bills of Lading and shipping booking confirmations which might evidence that ‘herbal tea’ was transported to Australia do not constitute use of the Opponent’s Trade Mark;
sales figures are provided in both the Chan declaration and the Wong declaration. These
are conflicting and neither are in Australian dollars. The sales figures provided in the Chan declaration are significant for the years 2009 to 2012, but the figure for 2013 is modest. There are no figures provided for the years 2014 to 2016, consequently it is assumed that no sales occurred during that period.
At its highest and when viewed in the most favourable light, the Opponent’s evidence establishes that the Opponent’s Trade Mark had potentially acquired a modest reputation prior to the Relevant Date; however, because of the differences between the Opponent’s Trade Mark and the Opposed Trade Mark discussed above, I am not satisfied that because of that reputation, use of the Opposed Trade Mark would be likely to deceive or cause confusion. Consequently, the Opponent has failed to establish this ground of opposition.
Section 42(b)
The relevant provisions of s 42 are reproduced below:
42 - Trade 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 onus is on the Opponent to establish that use of the Opposed Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[18] The relevant time for assessing whether the use of the Opposed Trade Mark would be contrary to law is at the Relevant Date but ‘looking forward to prospective conduct after registration’.[19]
[18] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[19] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502 [42] (Wilcox J).
The ground of opposition pursuant to s 42 was particularised in the SGP as follows:
The Opponent has, before the priority date of the [Opposed Trade Mark], acquired a substantial and valuable reputation in the [Opponent’s Trade Mark] in Australia in relation to beverage products similar to products in [Applicant’s Goods].
As a result consumers are likely to be misled or deceived as to the origin of Class 32 goods, and also Class 30 goods, provided by the Applicant under the Opposed Mark. …
The use of the Opposed Mark by the Applicant in relation to food and beverages would contravene section 18 and section 29(g) and (h) of the Australian Consumer Law (forming Schedule 2 to the Competition and Consumer Act 2010 (Cth)).
In the present matter the Opponent has failed to establish a ground of opposition under s 60. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60,[20] I am satisfied that the Opponent has also failed to establish that the use of the Opposed Trade Mark would be contrary to s 18 of the ACL.
[20] See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36] (Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (Cth) (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[21] Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) of the ACL. For these reasons, I am not satisfied that use of the Opposed Trade Mark would be contrary to law. Therefore, the Opponent has failed to establish this ground of opposition.
[21] [2003] FCA 104, [107].
Decision
Section 55 relevantly provides:
(1)Unless subsection (3) applies to the proceedings, 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.
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, trade mark 1848144 may proceed to registration after one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.
Costs
The Applicant sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
27 February 2024
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