Multi Access Ltd v Guangzhou Baiyunshan Pharmaceutical Holdings Co Ltd
[2022] ATMO 204
•15 November 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Multi Access Ltd to registration of trade mark application numbers 1848145, 1848146 and 1848147 (classes 30 and32) - - in the name of Guangzhou Baiyunshan Pharmaceutical Holdings Co Ltd
Delegate: M Cooper Representation: Opponent: David Larish of counsel instructed by Christine Ecob of Johnson Winter & Slattery
Applicant: John O’Mahoney of Collison & CoDecision: [2022] ATMO 204
Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44, 60 and 42(b) grounds pursued – s 44 established for some goods – goods amended - trade marks to proceed to registration.Background
This matter concerns oppositions by Multi Access Ltd (‘Opponent’), under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’), to registration of the trade marks detailed below in the name of Guangzhou Baiyunshan Pharmaceutical Holdings Co Ltd (‘Applicant’):
Application no. 1848145 1848146 1848147 Trade Marks:
(‘Trade Marks’)Filing date: 30 May 2017 Goods 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; herbal juices; herbal beverages (‘Goods’)
Endorsement The applicant has advised that the C HINESE characters appearing in the trade mark may be transliterated as WANG LAO JI which may be translated into English as LUCKY OLD KING 2. The Trade Marks were examined and s44 objections were initially raised, citing several trade marks owned by the Opponent. Except for trade mark registration no. 574111 (‘Opponent’s mark’), the cited marks were removed from the Register following successful non-use removal applications by the Applicant.[1] When assessing the Trade Marks against the Opponent’s mark, , the examiner suggested the Goods be amended to delete ‘tea; tea-based beverages; herbal tea beverages; herbal tea (for food purposes)’ from class 30. The Applicant agreed and following that basis the s44 objection was withdrawn and the Trade Marks were accepted for registration. They were advertised on 9 September 2020 in the Australian Official Journal of Trade Marks.
[1] See Multi Access Limited v Guangzhou Wang Jao Li Great Health Industry Co [2019] ATMO 113
3. On 5 November 2020, the Opponent filed Notices of Intention to Oppose registration of the Trade Marks. On 3 December 2020, Statements of Grounds and Particulars (‘SGPs’) were filed which particularised opposition grounds under sections 44, 60 and 42(b) of the Act. The Applicant filed Notices of Intention to Defend on 3 February 2021. The parties then filed their evidence as detailed further below.
4. On 26 October 2021 the Opponent requested a hearing. I heard the matters by videoconference on 17 August 2022 as a delegate of the Registrar of Trade Marks (‘the Registrar’). David Larish of counsel, instructed by Christine Ecob of Johnson Winter and Slattery, appeared for the Opponent. The Applicant was represented by John O’Mahoney of Collison & Co.
Evidence
5. The Opponent’s Evidence in Support was filed on 5 May 2021. It comprised three declarations of Chan Hung To, the Opponent’s director, in respect of each of the Trade Marks, dated 3 May 2021 with Exhibits CHT-1 to CHT-4 (‘Chan Hung To’); and three declarations of Agnes Wong Kin Yee, a director of Wong Lo Kat (Enterprises) Limited (WLKE), dated 21 April 2021 with Exhibits AW-1 to AW-4 (‘Wong’).[2]
[2] Each declaration, except for the Trade Mark number, has the same content and is made on the same date.
6. Evidence in Answer was filed on 3 August 2021 and comprised the statutory declaration of Li Chuyuan, Chairman of the Applicant’s Board, dated 30 July 2021 with Exhibits AA-1 to AA-23 (‘Li Chuyuan’).
7. The declaration of Blake Hunt, solicitor employed by the Opponent’s representatives, dated 7 October 2021 with Exhibit BDH-1 (‘Hunt’) was filed as Evidence in Reply on 7 October 2021.
8. In accordance with directions, the Opponent and Applicant filed written submissions. These and the evidence are discussed further below
Evidence summary
9. Ms. Wong states that she is a direct descendant of Wong Lo Kat, the creator of a secret formula of famous herbal tea that has been sold under his name since the 1800s. She further states that the Opponent’s mark, which has been licensed to Chan Hung To, has developed a strong Australian reputation. The Opponent’s Mark has been used to sell herbal tea extra in Australia since 1946, herbal tea since 1951 and instant herbal tea since 1995. Australian sales figures are provided as well as exhibits purporting to show use of the Opponent’s mark in Australia.
10. Chan Hung To states that products bearing the Opponent’s mark are often sold in Australia to Cantonese or Mandarin speakers. It is transliterated as ‘Wong Lo Kat’ in Cantonese and ‘Wang Lao Ji’ in Mandarin. Noting that the Trade Marks and the Opponent’s mark comprise the same characters, he claims that, in whatever order they appear, their meaning is not altered. They are spoken the same way and translate the same way in English to ‘LUCKY’ ‘OLD’ ‘KING.’ He claims that the Opponent has extensively used the characters in Australia for its herbal tea branding and has accrued substantial and valuable goodwill. He provides Australian sales figures for the period 2009 to 2020. Exhibits show use of the Opponent’s mark on various documents and displayed on products in Australian stores in 2020.
11. Li Chuyuan, giving evidence for the Applicant, claims his company, as successor in title to the original author, ‘owns the original authorship of the three Chinese characters’ that comprise the Trade Marks. He asserts they transliterate as ‘WANGLAOJI.’ He notes the Applicant also owns Australian registered trade mark 1050249 comprising the same characters, for goods in class 5 and 30 which successfully resisted the Opponent’s non-use removal action in 2014.[3] He states these Trade Marks were filed ‘to protect an alternative stylized version’ of the characters and with the intention to expand the range of products available under them. Noting the Opponent’s evidence in support, he observes that the Opponent’s mark referenced ‘may not be exactly the same’ as these Trade Marks but ‘all representations …are consistent with the three Chinese characters’ included in its existing trade mark 1050249. He describes the exhibits which variously show brochures, invoices, packing lists, advertising and other documents demonstrating the Trade Marks’ use.
[3] Records indicate that the Opponent withdrew the removal application.
12. In Evidence in Reply, Hunt states that the Goods specified in the Trade Marks ‘are in fact the same as they are able to contain and/or are a natural expansion of the goods specified in the Opponent’s trade mark.’ He attaches a table of the results of a Google search he conducted for the Goods in conjunction with variations of the words ‘herbal,’ ‘medicinal,’ ‘organic’ and ‘natural.’
Grounds and Onus
13. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[4]
[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26].
14. In its written and oral submissions, the Opponent pressed its ss 44, 60 and s 42(b) grounds of opposition. The date on which the grounds are to be assessed is the filing date of the opposed applications, 30 May 2017 (‘the relevant date’), also referred to as the ‘priority date’ for ss 44 and 60 purposes.
Consideration and reasons
15. Section 44 of the Act relevantly provides:
44. Identical 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.
…
16. In the circumstances of these applications, in order to establish the s 44 ground of opposition under s 44(1), the Opponent must demonstrate, subject to subsections (3) and (4), that the Trade Marks aresubstantially identicalwith or deceptively similar to another registered (or sought to be registered) mark; are in respect of similar goods or closely related services (s 44(1)(a)); and have a priority date not earlier than that of the other mark (s 44(1)(b)).
17. The Trade Marks post-date the Opponent’s mark.
18. The Opponent particularised this ground in its SGPs as follows:
Substantially identical/deceptively similar trade mark- Section 44\reg 4.15A 1.1
1.1 The priority date of the Opposed Mark is 30 May 2017.
1.2 The Opposed Mark is substantially identical or deceptively similar to the following trade mark (owned by the Opponent) (the Registered Mark):
Trade Mark Goods Status Registration date The Chinese characters appearing in the trade mark may be transliterated as KAT LO WONG (or WONG LO KAT). Class 5: Herbal products for food and medicinal purposes and all other goods in this class Registered/
Protected10 March 1992 1.3 The Opposed Mark is deceptively similar to the Registered Mark.
1.4 Further to 1.3 above, the Opposed Mark is deceptively similar to the Registered Mark because:
(a) the Opposed Mark incorporates the same characters as those set out in the Registered Mark;
(b) the order in which the characters appear in the Opposed Mark and the Registered Mark does not alter their meaning to the reader;
(c) The Opposed Mark and the Registered Mark will be spoken in the same way by an individual reader, and the translation to English is the same in both the Opposed Mark and Registered Mark, being “LUCKY OLD KING”; and
(d) The visual differences in the border around each trade mark are immaterial as a viewer will focus on the characters themselves (not on a surrounding decorative border).
Substantial identity
19. The assessment of substantial identity was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited as follows:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]
[5] [1963] HCA 66; (1963) 109 CLR 407, 415.
20. A side-by-side comparison is shown in the table below.
Trade Marks
Opponent’s mark
21. Relying on the uncontradicted evidence of Chan Hung To, the Opponent submits that the marks are substantially identical because the characters are their essential feature and their meaning is not altered by the transposition of the characters or their vertical or horizontal presentation. They all mean ‘Lucky’ ‘Old’ ‘King’ in English and transliterate as WONG LO KAT in Cantonese and WANG LAO JI in Mandarin. They are read and spoken in the same way by Chinese speakers. The visual differences in the borders are said to be immaterial.
22. The Applicant’s evidence confirms that the transliteration of the characters in its Trade Marks is WANGLAOJI but in submissions it contends that they neither look nor sound (or are pronounced) the same. It is the arrangement of the Chinese characters that is said to be the essential feature of the marks and this different arrangement, along with the endorsement of the Opponent’s mark as WONG LO KAT, is said to make it clear the marks are not substantially identical.
23. Self-evidently, the Trade Mark and the Opponent’s mark contain the same characters[6], differently arranged, that is, the first and third character are swapped in position.[7] To an English speaker, with no knowledge of Cantonese or Mandarin, this difference might be significant. The evidence, however, establishes that the Goods and the Opponent’s goods are marketed and sold to Chinese speakers.[8] It is the uncontradicted evidence of Chan Hung To, that the characters’ meaning is not altered by the order in which they appear and they will be read and understood the same way, and translated to English the same way. As observed by the Opponent, the Applicant’s contrary submissions in this regard are not supported by the evidence. In this context, I attach greater weight to the Opponent’s submissions.
[6] Although the lower half of the first character in the Opponent’s mark appears to be slightly different, i.e., not fully closed, there is no dispute between the parties that the characters are the same. It may be an issue concerned with reproduction of the character.
[7] I note that the Chinese characters in the Opponent’s mark also sometimes appear in the same order as the Trade Marks, reinforcing the Opponent’s claims as to their interchangeability. See Wong exhibit AW-1, labels for 1985, 1994 and 1996, exhibit AW-3, packaging for 1995-2004 and on foil packets of tea in a box for 2004-2016.
[8] Chung Hung To, paragraph 5 and Li Chuyuan paragraph 30. Promotional and advertising material exhibited by Li Chuyuan clearly demonstrates that its promotional and advertising in Australia is directed to Chinese speakers. For example, see exhibits AA-13, AA-14 and AA-17; the last page of exhibit AA-18 (recognition by Chinese consumers); and exhibits AA-20 and AA-21, AA-22 showing the Australian presentation by Australian distributor Ettason which is entirely in Chinese language.
24. With regard to the borders and slightly different text in Trade Mark 1848145, I consider they are embellishments of little significance in the side-by-side comparison. Several decisions have determined that the existence of a border device and/or other non-distinctive features are insufficient to detract from the substantial identity of trade marks.[9]
[9] Re Morny’s Trade Mark (1951) 68 RPC 131 (Evershed M.R and Jenkins and Hodson L.JJ); Wagner Spraytech Australia P/L v Anest Iwata Australia P/L [2009] ATMO 32; See similarly for a more elaborate device Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft [1965] HCA 71; (1965) 120 CLR 285, 293 (Kitto J). See also Courier Luggage Pty Ltd v Wenger SA Inc [2015] ATMO 10, [26]; George Weston Foods Ltd v Peerless Holdings Pty Ltd (1999) 48 IPR 145, 152.
25. Overall, I am not persuaded that the different ordering of one of the characters, the border differences, or the slight stylisation of the characters in 1848145, operate to separately distinguish or substantially affect the identity of the Trade Marks. This is because, according to the evidence, Chinese speaking consumers are likely to identify goods sold under them by reference to the characters, which will appear and be read by them, identically.
26. On this basis I am satisfied that a total impression of resemblance emerges between the Trade Marks and the Opponent’s mark such that they might relevantly be regarded as substantially identical within the meaning of s 44(1).
Similar Goods
27. Section 14 of the Act provides that goods or services are ‘similar’ to other goods or services if they are the same, or of the same description, as the other goods or services.
28. In assessing whether goods are the same or of the same description it is necessary to consider the nature of the goods; their respective uses and the trade channels through which they are bought and sold.[10] Other relevant considerations may include the origin and purpose of the goods, whether they are usually produced by the same manufacturer, how they are distributed and sold, whether to the same customers during the same seasons and whether those engaged in their manufacture and distribution belong to the same trade.[11]
[10] Jellinek's Application 63 RPC 59, Romer J.
[11] Beck, Koller & Company's Application, 64 RPC 76 at page 78; see also Reckitt & Colman Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84 at 94 Dixon J – also cite Southern Cross 1954 91 CLR 592 at 606
29. The Opponent maintains that the Goods ‘are in fact the same as, are able to contain and/or are a natural expansion of the goods specified in the Opponent’s Trade Mark 574111 being: herbal products for food and medicinal purposes and all other goods in class 5’.[12] It is noted that there is no exclusion in any of Goods’ classes that would prevent their normal and fair use with herbal variants. The exhibit to the Hunt declaration is said to demonstrate this is likely. The Opponent also refers in this regard to an earlier opposition in which the Applicant’s and Opponent’s goods were conceded to be similar.[13] The goods however were different in this earlier opposition, and I do not consider the concession in that opposition particularly relevant to my considerations.
[12] Hunt, paragraph 3.
[13] Multi Access Limited v Guanzhou Pharmaceutical Holdings Limited [2018] ATMO 41 [17].
30. The Applicant contends that the Goods in class 30 are not similar to those of the Opponent’s mark because ‘the nature of these goods, respective uses of the goods and the trade channels are fundamentally different.’ In relation to the beverages in class 30 and 32, it is submitted that they ‘are used more for immediate enjoyment and comfort, found in fridges ready for consumption at stores as opposed to ‘herbal products for food and medicinal purposes’ which are brought more for health and wellbeing purposes, taken home to be consumed in a relaxation mode.’ Whey beverages, vegetable juices and concentrated fruit juices are said to be manufactured in specialized factories and then sold through different trade channels’ to those under the Opponent’s mark. It is conceded that the ‘Applicant’s remaining goods are more similar to those of the Opponent’s prior registration.’ Those remaining goods are herbal juices and herbal beverages, discussed further below.
31. The fact that the Goods are in different classes to those of the Opponent’s mark is not conclusive, however, just because they are sold for human consumption, and might be sold in common trade channels, does not necessarily lead to a conclusion that the Goods are the same or of the same description.[14] Although the Opponent claims they will be sold in supermarkets to the average consumer, I consider there are clear differences in character and purpose between ‘herbal products for food and medicinal purposes’ and the Goods. ‘Herbal products for food and medicinal purposes,’ are clearly of a specific nature, generally produced by specialised or dedicated manufacturers and usually found in health food stores or pharmacists. They are commonly purchased with care by consumers with specific health or lifestyle concerns and/or for heath or lifestyle reasons. While some types of herbal or medicinal products may be found in supermarkets, they are generally placed in defined areas such as the pharmaceutical section. Conversely, the class 30 Goods designated are mainly everyday food items, none of which possess any ‘herbal’ or ‘medicinal’ features. They are ordinary consumables generally produced by a wide variety of producers, bought by a wide variety of purchasers, and readily found on supermarket shelves. They are generally not carefully considered purchases. Given these differences, I am not satisfied that the Goods in class 30 are relevantly the same or of the same description as the Opponent’s class 5 goods.
[14] Re J&J Colman Ltd’s Application (1929) 46 RPC 126; G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601; Re Chan Li Chai Medical Factory (HK) Ltd’ Application (1990) 19 IPR 140, 144; General Mills, Inc v Maria & Nikitas Chritofis [2012] ATMO 59 [23]
32. Along with chocolate-based beverages specified in class 30, the Trade Marks’ class 32 Goods, self-evidently, are beverages or drinks, not food. The Macquarie dictionary defines ‘food’ as ‘more or less solid nourishment’ and as ‘opposed to drink.’[15] With two exceptions,[16] the class 32 Goods are neither herbal nor medicinal. Nothing in the evidence indicates they are made by the same manufacturers or sold by the same wholesalers. Overall, I am not persuaded that they are relevantly the same or of the same description.
[15] Macquarie Dictionary (online at 26 October 2022) ‘food’ (def 2).
[16] See below, paragraph 35
33. I have had regard to the Hunt declaration and the Opponent’s submissions that the products identified in the table of search results are a natural extension of Goods and encompassed by the Opponent’s mark. The table includes diverse types of the Goods, most notably ‘natural’ or ‘organic’ versions which do not clearly fall within the class 5 goods of Opponent’s mark. Of those goods in the table that indicate they are ‘herbal,’ for example, Nim Jiom’s Herbal Candy (which appears to be a cough syrup) and Bio-Strath Herbal Yeast supplement (from the herbal remedies page), there is clearly a remedial or medicinal element. In this context I note my previous finding that I do not consider ‘herbal products for food and medicinal purposes,’ are relevantly similar to the Goods.
34. I have also considered whether the Goods might be encompassed by the reference to ‘all other goods in class 5’ as specified in the Opponent’s mark. In this context, I note that ‘class headings provide a brief indication of the total range of goods or services falling in each of the classes.’[17] At the time the Opponent’s mark was registered,[18] class 5 was described as pertaining to ‘[p]harmaceutical, veterinary and sanitary substances adapted for medical use, food for babies; dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.’ This heading serves only to underscore the dissimilarity between the Goods and those of the Opponent’s mark. Given this, and absent persuasive evidence indicating the Goods relevantly encompass or are encompassed by ‘all other goods’ in the class 5, I am not satisfied that they can be relevantly characterised as the same or of the same description as those of the Opponent’s mark.
[17] Trade Marks Office Manual of Practice and Procedure (‘the Manual’). Part 14.2, The classification system, paragraph 2.1.3. See also General Mills v Maria & Nikitas Chritofis [2012] ATMO 59 [23]
[18] The Manual, op cit, paragraphs 2.3.2-2.3.3 ‘Since changes in NICE classification are always introduced from a specific date, applications made before that date are subject to the relevant previous edition of the classification. This is confirmed in both Australian Wine Importers Trade Mark (1889)6 RPC 311 and “Cal U Test” (1967) FSR 39. The Manual (at Part 14.1) indicates that the 6th edition of NICE was in force at the time.
35. The exceptions to these findings are ‘herbal juices’ or ‘herbal beverages’ in class 32. Notwithstanding their nature as beverages, the ‘herbal’ qualification, when considering their nature, uses and trade channels, and applying same reasoning as above, it is difficult to escape the conclusion that they may be regarded as of the same nature, have similar uses, would likely be sought by the same people and travel through the same trade channels as those designated by the Opponent’s mark. It follows that I am satisfied that the Trade Marks’ class 32 ‘herbal juices; herbal beverages’ are relevantly the same or of the same description as the goods designated by the Opponent’s mark. It follows that the Opponent has established the s 44 ground of opposition in respect of them.
36. The ground has not been established in respect of the remaining Goods. Accordingly, I proceed to consider the other opposition grounds in relation to them.
Section 60
37. Section 60 provides as follows:
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.
38. Therefore, to establish the s 60 ground of opposition, an opponent must demonstrate that, at the relevant date, there was another trade mark that had acquired a reputation in Australia and because of that reputation, use of the trade mark sought to be registered would be likely to deceive or cause confusion.
39. In McCormick & Co Inc v McCormick Kenny J considered the meaning of reputation in s 60 as ‘the recognition of the [trade mark] by the public generally’[19] and observed, in relation to the measurement of reputation as follows:
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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[20]
[19] [2000] FCA 1335 [81].
[20] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 [86].
40. In addition, the reputation required to be demonstrated must be one of which a considerable number of people in the relevant market would be aware.[21]
[21] Renaud Cointreau v Cordon Bleu International Ltd [2001] FCA 1170 [75].
The Opponent claims extensive use of the Opponent’s mark in Australia, mainly on its packaging for its herbal tea products, before the relevant date. The Applicant notes that the Opponent’s evidence in this regard is ‘almost entirely as it was presented in the 6 non [use] removal actions discussed in Multi Access Limited v Guangzhou Wang Lao Ji Great Health Industry Co., Ltd [2019] ATMO 113’ and it relies heavily on the delegate’s observations in that decision of the lack of evidence of Australian use of the Opponent’s marks.[22]
[22] [14]-[26].
Having regard to the evidence, the Wong exhibits, while showing use of the Opponent’s mark, either post-date the relevant date or pertain to transactions between two Hong Kong companies (Wong Lo Kat (Enterprises) Ltd and Kwai Hong (HK) Ltd) with Hong Kong addresses. Although some Australian company names and addresses have been stamped on the sale invoices, it is not clear when stamps were attached or if the goods were ever sent or received in Australia. Chan Hung To exhibits several invoices and booking confirmations for the transport of herbal tea to Australia in 2009-2012 however they are largely in the Chinese language and there is no clear use of the Opponent’s mark. Other exhibits post-date the relevant date. Both Wong and Chan Hung To provide sales figures but they do not appear to reconcile.[23]
[23] For example, Wong cites sales of herbal tea products of $54,140 HKD in 2010 (paragraph 11), while Chan Hung To claims Australian canned herbal tea sales to the value of $US410,00 (paragraph 14) for the same year.
Overall, the evidence does not establish any significant Australian presence or sales under the Opponent’s mark prior to the relevant date. It follows that I am not satisfied that the Opponent’s evidence has established any relevant reputation in the Opponent’s mark, or a trade mark with additions or alterations that do not substantially affect its identity, such that s 60(a) is enlivened.
Accordingly, I am not satisfied that the s 60 ground has been established
Section 42
45. Section 42 of the Act provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
46. The onus is on the Opponent to establish on the balance of probabilities that use of the Trade Mark would be, rather than could be, contrary to law.[24]
[24] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [411].
47. In relation to s 42(b), the Opponent maintains that, before the Trade Marks’ priority date, it had acquired a substantial and valuable reputation in the Opponent’s mark in Australia in relation to beverage products such that the use of the Trade Marks in relation to food and beverages would contravene section 18 and section 29(g) and (h) of the Australian Consumer Law.
48. The Opponent has failed to establish its s 60 opposition ground and, as the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is stricter than that for deception or confusion under s 60,[25] it follows that the Opponent has also failed to establish that the use of the Trade Marks would be contrary to s 18 of the ACL.[26] Where trade mark use does not contravene 18 of the ACL, it will not contravene s 29.[27]
[25] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
[26] The submissions also alleged a contravention of s 29(1)(g) of the ACL
[27] In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered, in connection with the superseded Trade Practices Act1974 (Cth), that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’, the equivalent provisions to s 29 of the ACL.
49. Consequently, I am not satisfied that use of the Trade Marks would be contrary to law. It follows that the Opponent has failed to establish this ground of opposition.
Conclusion
In Apple Inc. v Registrar of Trade Marks Yates J stated that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[28]
[28] [2014] FCA 1304, [232].
That is, in circumstances where an opposition has been established in respect of some, but not all, of an applicant’s goods or services, the Registrar may proceed to reject the entire application however a discretion exists to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.
On 28 October 2022 I informed the Applicant’s representative that it was my intention to reject the Trade Marks unless the Goods were amended to remove ‘herbal juices; herbal beverages’ from class 32 in each of the Trade Marks (‘Amended Goods’).
53. On 4 November 2022 the Applicant’s representative informed IP Australia of the Applicant’s agreement to the amendment set out above for Trade Mark 1848145 and that it had deleted the relevant goods. There was some confusion regarding the amendment for the additional Trade Marks. On 11 November I wrote to the Applicant clarifying that my correspondence had included all the Trade Marks. On 15 November 2022 the Applicant advised that it agreed to the removal of ‘herbal juices; herbal beverages’ in respect of Trade Marks 1848146 and 1848147.
54. Accordingly, I accept the Trade Marks 1848145, 1848146 and 1848147 for registration in respect of the Amended Goods. That is, with the removal of ‘herbal juices’ and ‘herbal beverages’ from Class 32.
Decision
55. Section 55 of the Act relevantly provides:
Decision
(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.
Subsection (3) does not apply to these proceedings. Trade mark application nos. 1848145, 1848146 and 1848147 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.
Costs
57. Both parties sought an award of costs in their favour. Costs generally follow the event. As both parties have had a measure of success, I decline to award costs.
Mary-Ann Cooper
Hearing Officer
Delegate of the Registrar of Trade Marks
15 November 2022.
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