Multi Access Limited v Guangzhou Wang Lao Ji Great Health Industry Co Ltd
[2019] ATMO 113
•30 July 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Multi Access Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by Guangzhou Wang Lao Ji Great Health Industry Co., Ltd. to remove trade mark numbers 574112 (class 32), 1397869, 1397871, 1397875, 1397876 and 1495595 (classes 5, 30, 32 and 33) - in the name of Multi Access Limited
Delegate: | Adrian Richards |
Representation: | Opponent: Dan Winfield of Duncan Cotterill Lawyers Applicant: John O’Mahoney of Collison and Co |
Decision: | 2019 ATMO 113 Trade Marks Act 1995 (Cth) – applications under section 92(4)(b) – no use of the trade marks shown – discretion not exercised – trade marks to be removed. |
Background
This decision concerns six applications (‘Applications’) made by Guangzhou Wang Lao Ji Great Health Industry Co., Ltd. (‘Applicant’) under s 92 of the Trade Marks Act 1995 (Cth) (‘Act’)[1] in relation to the following six registered trade marks (‘Trade Marks’):
Registration number: 574112
[1] Trade Marks Act 1995 (Cth) (‘Act’).
Trade Mark:
Specification of goods: Class 32: Non-dairy based beverages and all other goods in this class
Endorsement: 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.
Registration number: 1397869
Trade Mark: WONG LO KAT
Specification of goods: Class 5: Chinese medicine and herbs
Class 30: Tea- or herbal tea-based food and beverages, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery; ices; honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice
Class 32: Beverages; preparations for making beverages
Class 33: Alcoholic beverages (except beers)
Endorsement: The applicant has advised that a translation of the Mandarin words LO KAT appearing in the trade mark is OLD LUCKY.
Registration number: 1397871
Trade Mark: WANG LAO JI
Specification of goods: (same as 1397869)
Endorsement: The applicant has advised that a translation of the Cantonese words LOA [sic] JI appearing in the trade mark is OLD LUCKY.
Registration number: 1397875
Trade Mark:
Specification of goods: (same as 1397869)
Endorsement: 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.
Registration number: 1397876
Trade Mark:
Specification of goods: (same as 1397869)
Endorsement: 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.
Registration number: 1495595
Trade Mark:
Specification of goods: Class 5: Chinese medicine and herbs; pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides
Class 30: Tea or herbal tea related products; coffee, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder, salt, mustard; vinegar, sauces (condiments); spices; ice
Class 32: Beverages; preparations for making beverages; beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices, syrups and other preparations for making beverages
Class 33: Alcoholic beverages (except beers)
Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
The applicant has advised that the CHINESE 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.
The Applications seek removal of the Trade Marks in respect of all goods. The applications against 574112, 1397869, 1397871, 1397875 and 1397876 were filed on 2 May 2017 and advertised for opposition purposes on 11 May 2017. The application against 1495595 was filed on 14 June 2017 and advertised on 22 June 2017.
On 23 June 2017 the registered owner of the Trade Marks, Multi Access Limited (‘Opponent’), filed notices of intention to oppose the Applications. This brought the timing of the Applications into alignment. The Opponent’s statements of grounds and particulars followed on 24 July 2017.
The Applicant indicated that it would continue with the Applications by filing notices of intention to defend them on 28 August 2017.
The Opponent filed evidence in support of its oppositions to the Applications in one document on 1 December 2017. The Applicant’s evidence in answer arrived on 5 March 2018. Though it provided six unique declarations, one for each of the Applications, their content is similar. The Opponent’s evidence in reply arrived in the same manner as its earlier evidence, all in one, on 14 May 2018.
The Applications being ready for determination at this point, on 21 June 2018 the Applicant asked for an oral hearing. The Opponent opted to attend the hearing for the applications against 1397875, 1397876 and 1397869, and relied on written submissions for 574122, 1397871 and 1495595. The hearing took place on 18 April 2019 before me in my capacity as a delegate of the Registrar of Trade Marks. In attendance for the Applicant was John O’Mahoney of Collison and Co, and Dan Winfield of Duncan Cotterill Lawyers attended for the Opponent.
Evidence
The evidence filed in relation to the Applications consists of the following declarations:
Evidence in support
Katharine Mary Carston Stove, Solicitor at Duncan Cotterill Lawyers, made 1 December 2017 with exhibits KS-01 to KS-07, including confidential exhibits KS-03 to KS-05
Evidence in answer
Wenliu Xu, Chairman of the Applicant, made 1 March 2018 (six individual declarations, one against each of the Applications)
Evidence in reply
Katharine Mary Carston Stove, Solicitor at Duncan Cotterill Lawyers, made 14 May 2018 with exhibits KS-01 and KS-02
The Opponent’s evidence in support and reply provide potential examples of use of the Trade Marks, which I discuss further below. The Applicant’s ‘evidence in answer’ is, as is often the case in applications for removal, not evidence as such. Instead, it is critique of the Opponent’s evidence in support.
In written submissions the Applicant objected to the evidence in reply as not being in reply to the evidence in answer. This objection was formally withdrawn during oral submissions. On my reading of it, the evidence in reply is indeed in reply to the evidence in answer.
Grounds, relevant periods, onus and standard
The two grounds for removal of a trade mark are found in s 92(4) of the Act. The Applications initially invoked both grounds. A week before the hearing the Applicant stated it would not pursue the ground in para (a). At any rate, in the present circumstances that ground would have had no work left to do.[2] The relevant aspects of the remaining ground for removal are set out below:
[2] Live Entertainment Investments III Pty Ltd v The Education Group Pty Ltd (2018) 132 IPR 131, 136-7 [22].
92Application for removal of trade mark from Register etc.
(4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(a)…
(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i)used the trade mark in Australia; or
(ii)used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Note 1:For file and month see section 6.
Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
Since not all the Applications were filed on the same day, the three-year period mentioned in the excerpt above either runs from the three years before 14 May 2017 (for 1495595) or 2 April 2017 (for the remainder). The slight difference in timing is of no consequence in my discussion below, so for simplicity I refer to those periods as the ‘Relevant Period’.
The ground in s 92(4)(b) of the Act stands as an allegation that an opponent must rebut.[3] The Opponent has not alleged that there was use of any of the Trade Marks by an unregistered assignee or that there were obstacles to their use, so the only remaining rebuttal is:
the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during [the Relevant Period][4]
[3] Act (n 1) s 100(1)(c).
[4] Act (n 1) s 100(3)(a).
In general, my findings below are based on the ordinary civil standard of the balance of probabilities. The sole exception is a central question in these proceedings—the level of proof required for use of the Trade Marks within the Relevant Period. This standard of proof is subject to change depending on the volume of evidence of use:
[W]here one single act is relied on it does seem to me that that single act ought to be established by, if not conclusive proof, at any rate overwhelmingly convincing proof. It seems to me that the fewer the acts relied on the more solidly ought they to be established…[5]
[5] “Nodoz” Trade Mark [1962] RPC 1, 7.
Discussion
The Opponent has only alleged that there has ever been use of any of the Trade Marks in relation to various forms of herbal/medicinal tea (such as in tea bags, loose leaf, instant and ready to drink), cane juice and carrot juice. Further, the Opponent has not led any evidence of use of any of the Trade Marks in relation to cane juice and carrot juice. The grounds for removal have therefore not been rebutted for most of the goods currently claimed by the Trade Marks.
The Opponent’s rebuttal in relation to tea rests on two overlapping aspects of its evidence. Firstly, it says that its evidence shows use of the Trade Marks on canned herbal tea drinks using the Wayback Machine,[6] supported by copies of invoices. Secondly, it says that it is open to me to find that there was use of the Trade Marks from the invoices alone. Given their relevance to both approaches, it is helpful to begin by looking closely at these invoices. I note that, while the Opponent has marked the invoices as confidential, I take the confidentiality to relate to the amounts and possibly the customers disclosed. As such I have left out such as much detail as possible from my discussion of the invoices.
[6] The Internet Archive, Wayback Machine (Search Engine) <>
I begin with a single invoice dated within the Relevant Period included in the evidence in support. It records the sale by Hong Kong company JDB Hangzhou Limited to an Australian company of a modest amount of ‘WONG LO KAT HERBAL PRODUCTS’ described as ‘HERBAL TEA (HERBS)’ and ‘HERBAL TEA (INSTANT)’. There is no evidence that this order shipped to Australia, though it might be assumed that it did. This is what at first blush appears to be the sole example of potential use of any of the Trade Marks (in this case trade mark 1397869) in relation to some of its claimed goods within the Relevant Period. However the relationship of JDB Hangzhou Limited to the owner of this trade mark is not explained, leaving me unable to conclude that this was authorised use.[7] Presenting this invoice without supporting information is not enough to establish on the balance of probabilities that it is authorised use of any of the Trade Marks. As I have mentioned, this was the only indication that any of the Trade Marks have been used in the Relevant Period—the remainder of the Opponent’s evidence provides none at all, for reasons I turn to now.
[7] See, Act (n 1) s 8.
The evidence in reply contains a pair of invoices that the Opponent submits were issued to the same Australian company. The fields on these forms are titled in English, but they are completed in Chinese script. No translation of the Chinese has been provided. Atop both invoices are the Chinese characters 王老吉(企業)有限公司 and at their foot appears a company seal of Wong Lo Kat (Enterprises) Limited. This part of the seal is written in English. The seal also contains the exact series of aforementioned Chinese characters in a manner that suggests the English and Chinese therein are translations of each other. The Opponent’s evidence states that Wong Lo Kat (Enterprises) Limited is a licensee of the Trade Marks. The ‘Bill To’ and ‘Customer ID’ sections of the invoices are completed in Chinese, and the document is stamped in English with the name and address of a private company in Australia. There is nothing in this document that suggests that the entity in the ‘Bill To’ and ‘Customer ID’ sections is the same as the Australian company that has been stamped on the document later (indeed it is not for reasons I set out below). As such, I am unable to determine whether this even has the potential to show use of any of the Trade Marks in Australia.
A second fundamental deficiency with these invoices is that they are plainly for a significant quantity of something, but that something is written in Chinese. The Opponent submits that, since the description of the goods begins with the characters 王老吉, I should infer that this is use of three of the trade marks (1397875, 1397876 and 1495595). I am unable to make that inference since I do not know with enough certainty what goods are described along with those three characters. Mr O’Mahoney, who was apparently fluent in the language, indicated during the hearing that this consignment was for tea bags. Mr Winfield was not prepared to endorse Mr O’Mahoney’s translation. I told the parties’ representatives at the hearing that I would not accept this new translation evidence (particularly since it purported to be an unverified translation of the Opponent’s evidence by the Applicant’s representative). Instead I interpret the Opponent’s evidence as it has been filed. These invoices do not comply with reg 21.2 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’),[8] which requires that non-English documents be accompanied with an English translation and a certificate of verification. As such they cannot be read by me now as though they were accompanied with the requisite translation documents. I remain, therefore, in ignorance of what goods are mentioned on these invoices. Since it is neither clear that the company billed was in Australia, nor that the invoices record the supply of any relevant goods, this pair of invoices are unhelpful to the Opponent’s rebuttal.
[8] Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The Opponent has offered a large number of other invoices that look very similar to the pair discussed immediately above, and for which my above analysis equally applies. The material difference for present purposes is that a number of different Australian companies are stamped on these invoices. Curiously, the ‘Bill To’ and ‘Customer ID’ fields on all of the invoices are filled in with the same Chinese characters, despite these assorted invoices being stamped elsewhere with a variety of Australian company names and addresses. Another document executed in a different format provides the explanation. It is a fax headed in English and Chinese script, revealing that this singular customer billed to in all of the invoices is Kwai Hong (HK) Ltd, a company located in Hong Kong’s New Territories. The Opponent submits that that this entity is the exclusive sub-distributor of products made by the Opponent’s licensee Wong Lo Kat (Enterprises) Limited. The Opponent further submits that, while each invoice apparently shows that goods were shipped within Hong Kong, the fact that these documents were later altered with Australian company names shows that these were the final traders of (unspecified) goods in Australia. As I have already noted, there is nothing on the face of any of the invoices that would support this assertion. Each plainly looks as though the Australian entity and address have been added to the document. Some of these invoices have been altered to include two or more Australian entities and addresses, and often these crowd out the details of what was in the shipment to the Hong Kong entity. Despite the Opponent’s submissions on this point, I do not think it is open to me to infer from these invoices that there was trade mark use in Australia in relation to any relevant goods within the Relevant Period. These invoices are evidence of sales from one Hong Kong company to another Hong Kong company. If the latter Hong Kong company on-sold to an Australian company, as the Opponent suggests, no actual evidence for those subsequent sales or resulting shipments have been tendered.
As for shipments, the Opponent’s evidence in support also includes several bills of lading. These are paired with invoices, both written in English clearly indicating that ‘Wong Lo Kat canned herbal tea’ was shipped from Hong Kong to the same Australian company, Kaisi Australia (Kaisi Shipping Evidence). These show that significant quantities of ready to drink tea was shipped into Australia and suggest that the tea bore the phrase WONG LO KAT. But the Kaisi Shipping Evidence only covers dates between 2011 and 2013, well before the Relevant Period. The Opponent casts this as evidence of significant earlier use, and submits it is open to me to infer that this continued into the Relevant Period. Having considered all of the evidence, the opposite seems the more likely. That this quite convincing proof of use of at least some of the trade marks in relation to some of the goods stops around a year before the Relevant Period indicates that the shipments to Kaisi Australia in fact stopped at around that time.
Having found that the invoices alone are not sufficient to establish use of any of the Trade Marks in the Relevant Period, I move on to the Opponent’s Wayback Machine evidence. Four near identical copies of the following web page are in evidence:
Three images relate to three ‘captures’ of kaisi-aus.com made by the Wayback Machine on 17 May 2014, 1 August 2015 and 3 October 2016. The fourth image is a live screenshot of the same page taken on 1 December 2017 at the time the evidence in support was being compiled.
As detailed earlier, the purported owner of this website, Kaisi Australia, was the recipient of significant quantities of what was described in the Kaisi Shipping Evidence as ‘Wong Lo Kat canned herbal tea’. Reading the endorsements of Trade Marks, the three large Chinese characters arranged vertically on the can are transliterated into Roman characters as WONG LO KAT. From that and the description on the Kaisi Shipping Evidence, it appears that those shipments between 2011 and 2013 concerned the canned beverage pictured above.
The text in the footer of the webpage suggests it was built or last updated in September 2008. The four copies of the website included in evidence indicate that the website content has not changed. Given this, I am not convinced that its continued existence provides enough certainty that there was use of any of the Trade Marks within the Relevant Period. The Kaisi Invoices in combination with this website provide fairly convincing proof of use of trade mark 1397869 (on the invoices) and trade mark 1495595 (on the cans) between 2011 and 2013, and the footer of the website itself suggests that this use may have stretched back to September 2008. The fact that the website was still in existence during the Relevant Period and beyond does not, in my view, demonstrate ongoing use of either of those trade marks. The Kaisi Shipping Evidence stops abruptly in 2013, and none of the invoices from within the Relevant Period mention an entity called ‘Kaisi’. All of this indicates that the fact that Kaisi Australia’s website was still live throughout the Relevant Period simply means it stands as a relic of that company’s earlier trade in cans of herbal tea. It is the online equivalent of a sign for a business left standing after that business has ceased trading.[9] At that point, the old sign is no longer ‘in relation to’ any goods or services, and as such ceases to provide an example of trade mark use.[10]
[9] See, eg, Tom Lowrey, ‘Starlight drive-in sign restored in Canberra after being blown down in storm’ ABC News (News Article, 20 October 2015) < Act (n 1) s 7.
The Opponent has also provided images of ‘tea packs’ for sale in a small shop in suburban Sydney on 1 December 2017. The packs are adorned with trade mark 574112 while the shop’s shelf labelling refers to the product as WANG LAO GI. Also in the Opponent’s evidence is the design of a can label bearing a date of 20 July 2017 (that is, after the Relevant Period), as well as a box blank for a six can pack of WONG LO KAT and an advertisement apparently showing the can that Kaisi Australia used to sell and what appears to be the ‘tea pack’ mentioned in the paragraph above. None of this evidence is relevant here, since it is either undated or from after the Relevant Period.
The Opponent has not managed to rebut the allegation made by the Applicant under s 92(4)(b) in relation to the Trade Marks.
Discretion
The Opponent also asked that I exercise the discretion under s 101(3) of the Act to allow the Trade Marks to remain on the register. The provision is below, along with sub-s (4):
101Determination of opposed application—general
(3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a)similar goods or closely related services; or
(b)similar services or closely related goods;
to those to which the application relates.
Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2:For registered owner see section 6.
As can be seen in the above excerpt, the discretion is broad. That said, the discretion must be exercised in a way that is consistent with ‘the subject matter, scope and purpose of the Act and Pt 9 in particular.’[11]
The purpose of Pt 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion.[12]
[11] Dick Smith Investments Pty Ltd v Ramsey (2016) 120 IPR 270, 297 [180].
[12] Austin Nicholls & Co Inc v Lodestar Anstalt (No 1) (2012) 202 FCR 490, 498 [38].
The situation right now, at the point of considering the discretion, is when matters must be weighed.[13] This means that circumstances existing outside of the Relevant Period, and even outside Australia, can be considered. The burden of persuasion rests squarely with the Opponent.[14]
[13] UCP Gen Pharma AG v Mesoblast Inc (2012) 95 IPR 562, 571 [33].
[14] Optical 88 Limited v Optical 88 Pty Limited (No. 2) (2010) 275 ALR 526, 580 [273].
The Opponent submits that the following support an exercise of the discretion:
- Its long running international business trading under the WONG LO KAT trade mark.
- Its intention to use the Trade Marks in Australia into the future, evidenced by the invoices from after the Relevant Period.
- The abovementioned 2017 use of trade mark 574112 on tea packets in Sydney.
- Trade mark 574111, also in the name of the Opponent, is not subject to any application for removal. It is identical to trade mark 574112 and it claims all goods in class 5, including an explicit claim of ‘herbal products for food’.
- There is no evidence from the Applicant that allowing the Trade Marks to remain registered has the prospect to confuse or cause public mischief.
The fact of the Opponent’s long running overseas business does little to address the policy aims of the Act. It is possible that people familiar with the Trade Marks’ use overseas might be caused to wonder if another trader used them in Australia, but this has not been shown.
The Opponent’s invoices from after the Relevant Period are, as already detailed, records of sales from one Hong Kong company to another. These do not show an intention to use the Trade Marks in Australia.
That there was likely some use of trade mark 574112 on tea in late 2017 could only support the exercise of the discretion for that mark in relation to those goods. To be comfortable exercising my discretion that narrowly it would have been important to see some evidence this use was ‘in good faith and not colourable’.[15] That is, since this is a retail offering of an apparently small quantity of tea, seven months after an application for removal of trade mark 574112 was filed, this evidence does not satisfy me that this ‘use’ could not have been in response to the Applications.
[15] Austin Nicholls & Co Inc v Lodestar Anstalt (No 1) (2012) 202 FCR 490, 499 [41].
In weighing the discretion, I have been able to draw very little from the Applicant’s submission in relation to the continued registration of its trade mark 574111 in class 5. While it is true most of the Trade Marks include claims to class 5 goods, I have been presented with no use anywhere, ever, of any of the Trade Marks in relation to anything in class 5.
The Applicant has mentioned that the Trade Marks stand in the way of its own application 1771629 for WONGLO. The Opponent correctly points out that the Applicant’s trade mark application was rejected on 27 March 2018. That matter now being resolved, this is at most a neutral factor for the Opponent.
I do not consider that the factors highlighted by the Opponent individually or together warrant an exercise of the discretion to leave any of the Trade Marks on the register.
Decision and costs
Since the Applicant has not shown that there was use of any of the Trade Marks within the Relevant Period, the ground for removal under s 92(4)(b) of the Act has been established for each. I have decided not to exercise the discretion under s 101(3) of the Act. As such, the Trade Marks shall be removed from the register one month from the date of this decision. If the Registrar is served with a notice of appeal before then the Trade Marks shall not be removed until the appeal has either been discontinued or, in the event of a decision from the Court, that the Applications be dealt with as the Court sees fit.
Both parties sought an award of costs. The general rule is that costs follow the event, and I have no reason to make an exception here. Accordingly, in respect of the application against trade mark 574112 I award costs against the Opponent under s 221 of the Act in accordance with the amounts specified in sch 8 of the Regulations. For trade marks 1397869, 1397871, 1397875, 1397876 and 1495595 I award reduced costs against the Opponent under s 221 of the Act in the same manner as Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[16]
[16] [2001] ATMO 78.
Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
30 July 2019
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