Ningbo Linhua Plastic Co Ltd v Pro-Pac Packaging (Aust) Pty Ltd
[2023] ATMO 215
•21 December 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Ningbo Linhua Plastic Co Ltd to registration of trade mark application number 2065209 (classes 8, 16, 20, 21) – ECO FOOD-PAK (figurative) – in the name of Pro-Pac Packaging (Aust) Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: David Larish of counsel instructed by MJF Law Pty Ltd Applicant: Rob Clark of counsel instructed by Allens Patent & Trade Mark Attorneys |
| Decision: | 2023 ATMO 215 Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 58, 60 and 62A pursued – none established – trade mark may proceed to registration |
Background
This decision concerns an opposition brought by Ningbo Linhua Plastic Co Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade mark: (‘Trade Mark’)
Application number: 2065209
Owner: Pro-Pac Packaging (Aust) Pty Ltd (‘Applicant’)
Filing date: 29 January 2020
Specification: Class 8: plastic cutlery; plastic tableware (cutlery)
Class 16: packaging materials made from paper, cardboard, plastic, cellulose or starches; films made of plastic for use as packaging materials
Class 20: plastic trays (containers) used in food packaging; transparent food containers for commercial packaging use
Class 21: cups of paper, plastic or cardboard; foil food containers; tableware made from paper or plastic (other than knives, forks and spoons), including plates, cups and bowls; plastic bottles; containers for food
(‘Goods’)
The acceptance of the Trade Mark for possible registration was advertised on 15 September 2021. The Opponent filed a notice of intention to oppose on 12 November 2021, followed by a Statement of Grounds and Particulars (‘SGP’), later rectified, on 10 December 2021. The Applicant filed a notice of intention to defend on 15 March 2022.
Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). No evidence in reply was filed and an oral hearing was requested. Submissions were filed by the Opponent on 8 September 2023 (‘Opponent’s Submissions’) and by the Applicant on 15 September 2023 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 22 September 2023. David Larish of counsel, accompanied by Sophie Yates of counsel and instructed by Dajana Crnkovic of MJF Law Pty Ltd, presented submissions on the Opponent’s behalf. Rob Clark of counsel, instructed by Kimberley Evans of Allens Patent & Trade Mark Attorneys, presented submissions on behalf of the Applicant.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42(b), 58, 60 and 62A of the Act. However, the Opponent’s Submissions clarified that only ss 58, 60 and 62A were pressed.[1] As such, I treat the ground of opposition under s 42(b) as abandoned.
[1] Opponent’s Submissions, [5].
The Opponent bears the onus of establishing at least one of the above grounds.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 29 January 2020 (‘Relevant Date’), being both the filing and priority date of the Trade Mark.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ) (‘Food Channel’).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
Evidence
The following declarations were filed:
| EIS |
|
| EIA |
|
[4] The affidavits by Ms Yang simply confirm that she translated Huang 1 and 2 to Mr Huang to ensure that he understood the meaning of what was said in his affidavits.
EIS
According to the Fester Declaration, the Applicant and the Opponent’s Australian distributor, Linhua Packaging Pty Ltd (‘Linhua’), were involved in a proceeding before the Federal Court of Australia (‘Court Proceeding’).[5] Mr Fester acted for Linhua in the Court Proceeding and states that it was discontinued by consent orders of the Court made on 14 September 2021. Exhibit MF-1 to the Fester Declaration contains nine affidavits filed by Linhua in the Court Proceeding and Confidential Exhibit MF-2 is ‘a collection of documents’ that were filed on a confidential basis in the Court Proceeding.[6]
[5] See File Number NSD127/2020.
[6] Fester Declaration, [4].
Huang 1 states that the Opponent is based in China and ‘manufactures and sells a range of plastic food packaging products’ including bowls, cutlery and Modified Atmosphere Packaging trays (‘MAP trays’).[7] The Opponent ‘began planning to manufacture and sell MAP trays internationally’ in around 2008.[8] At this time, Mr Huang was introduced to a consultant named Gary Robinson who offered to assist the Opponent. Mr Robinson recommended to Mr Huang that the Opponent ‘use a trade mark for its products that would be suited to English-speaking countries’.[9] He suggested and designed the following trade mark for the Opponent:
(‘Opponent’s Mark’)
[7] Huang 1, [11].
[8] Ibid [14].
[9] Ibid [16].
10. In 2009, Mr Huang formed a company in Hong Kong named Eco Food-Pak Pty Limited
[10] Ibid [17].
[11] Ibid.
11. Pursuant to a discussion between Mr Huang and Mr Robinson, the latter filed an application in Australia for the Opponent’s Mark on 2 October 2009 (‘Earlier Registration’).[12] The Earlier Registration was filed in the name of ‘GCR Consultants Pty Ltd TA Eco Food – Pak’ (‘GCR’), which is an Australian company that Mr Robinson was a director of until 12 October 2010.[13] It is declared that GCR ‘did not trade under the [Opponent’s Mark] and it did not trade as “Eco Food-Pak”, nor was it a distributor of [the Opponent’s] products’.[14] Mr Huang opines that the ‘only connection that [GCR] had with the business of distributing MAP trays in Australia was the advice that Mr Robinson gave’ and ‘Mr Robinson's involvement in [EFP HK]’.[15]
[12] See Australian trade mark number 1322312 which is no longer registered because the renewal fee was not paid.
[13] Huang 1, Tab 3 of Exhibit WCH-1 contains an extract from the Australian Securities and Investments Commission for GCR which shows that Carolyn Anne Robinson was also listed as a director and GCR was deregistered on 19 October 2011.
[14] Ibid [20].
[15] Ibid.
12. In 2011, Mr Huang incorporated an Australian company named ‘Eco Food-Pak Australia Pty Ltd’ (‘EFP AU’) for the purpose of distributing the Opponent’s products in Australia. It is declared that the directors of EFP AU were Mr Beecham, Mr Le and Mr Huang and ‘[e]ach director owned one-third of the shares’ of this company.[16] Huang 1 notes that Mr Robinson passed away in about 2011.
[16] Ibid [21].
13. Huang 1 states that the Opponent ‘has manufactured and sold MAP trays since around 2010’ and it has supplied MAP trays to Australian customers since that time.[17] Mr Huang claims that the Opponent’s Mark and the Opponent’s name are embossed on its MAP trays unless the customer instructs otherwise. The Opponent’s Mark also appears ‘on the boxes in which the MAP trays are shipped to Australia’.[18] Between 2010 and 2013, Australian customers of the Opponent’s MAP trays included Inghams, Baiada and Primo. The Opponent’s MAP trays were distributed in Australia by EFP HK between 2010 and 2011. At some time in 2011, EFP AU replaced EFP HK as the Opponent’s Australian distributor.
[17] Ibid [23].
[18] Ibid [29].
14. Mr Huang declares that EFP AU ‘sold its business’ to the Applicant in 2013.[19] He states that the Opponent and the Applicant entered into agreement in around June 2013 which appointed the Applicant as the exclusive distributor in Australia of the Opponent’s MAP trays (‘2013 Agreement’). The Opponent and the Applicant subsequently ‘entered into a commercial trading agreement in place of the [2013 Agreement]’ in 2018 (‘2018 Agreement’). Under the 2018 Agreement, the Applicant became a non-exclusive distributor of the Opponent’s MAP trays. This change occurred because Mr Huang was dissatisfied with the volume of MAP trays being sold through the Applicant.[20] As part of the transition, Mr Huang claims there was no understanding between the parties that the Opponent ‘would not use the [Opponent’s Mark] on MAP trays that it supplied to other distributors in Australia’.[21]
[19] Ibid [33].
[20] Ibid [34]–[35].
[21] Ibid [36].
15. In November 2019, the Opponent terminated the 2018 Agreement due to an alleged breach by the Applicant. Since December 2019, Linhua has distributed the Opponent’s MAP trays in Australia. Mr Huang is not ‘aware of any company other than [the Opponent] that has made MAP trays (or any other products) anywhere in the world bearing the [Opponent’s Mark]’.[22] In Mr Huang’s opinion, ‘it would not be appropriate for [the Applicant]’ to sell MAP trays bearing the Trade Mark because the Opponent ‘has developed a valuable reputation in Australia’ in respect of the Opponent’s Mark.[23]
[22] Ibid [49].
[23] Ibid [53].
16. The remainder of Huang 1 outlines the Opponent’s custom manufacturing process. Mr Huang explains that custom manufacturing requests typically involve the drafting of technical drawings to create a production mould. He states that the Opponent bore all the costs of creating production moulds when it first started supplying the Applicant. However, the return on investment for some moulds was not financially tenable so the Opponent began seeking contributions from the Applicant towards the creation of new moulds when appropriate.
17. Huang 2 clarifies that during the period in which the Applicant was the Opponent’s distributor, some Australian customers who had been supplied with the Opponent’s MAP trays visited the Opponent’s factory in China. Mr Huang recalls providing a factory tour to a quality manager from Baiada in 2017 as well as a procurement manager from Inghams in 2018. Huang 2 states that the Opponent ‘provides customers with certificates of origin for its MAP trays’ and annexes an example that was provided to the Applicant in November 2019.[24]
[24] Huang 2, [6].
According to the Penn Affidavit, Ms Penn was the Managing Director of the Industrial Packaging Division of the Applicant between 2008 and 2014. Ms Penn confirms that the Applicant became the Australian distributor of the Opponent’s MAP trays in 2013 and that she became aware of a financial dispute between the parties in around September 2019. To ensure distribution continuity, Ms Penn incorporated Linhua in October 2019 in case the Applicant ceased being the Opponent’s distributor. At around this time, following a conversation with Mr Huang regarding the expiry of the Earlier Registration and Mr Robinson’s death, Ms Penn instructed an Australian firm to file a new trade mark application for the Opponent’s Mark.[25]
[25] See Australian trade mark application number 2047237. This application was opposed by the Applicant and was subsequently withdrawn by Linhua in September 2021.
19. Since November 2019, Linhua has approached Australian customers in relation to supplying the Opponent’s MAP trays.[26] Ms Penn believes the Opponent owns the Opponent’s Mark and claims that it has used same prior to the Applicant’s appointment as a distributor in 2013. In her view, the Applicant ‘had done little to associate the [Opponent’s Mark] with itself’.[27]
[26] Penn Affidavit, [29].
[27] Ibid [34(f)].
20. According to the Milinkovic Affidavit, Mr Milinkovic was employed by the Applicant in various roles between 2011 and 2019. Relevantly, Mr Milinkovic was the Applicant’s Customer Supply Chain Manager from early 2014 until his resignation in 2019. Mr Milinkovic declares that the MAP trays distributed by the Applicant until late 2019 (being the time of his resignation) were manufactured by the Opponent and bore the Opponent’s Mark.[28] He claims that the Applicant also distributed the MAP trays in the original boxes packaged by the Opponent. Mr Milinkovic does not recall any of the Applicant’s customers ‘saying anything to the effect that [the Applicant] was the manufacturer of the MAP trays’[29] and explains that he regularly referred to the Opponent as ‘the manufacturer’ or ‘the factory’ in customer communications made whilst in the Applicant’s employ.[30]
[28] Milinkovic Affidavit, [35].
[29] Ibid [36].
[30] Ibid [37(a)].
21. In the Piddington Affidavit, Mr Piddington states that he previously worked for Baida and Inghams in procurement management roles. He confirms that both companies purchased the Opponent’s MAP trays from EFP AU and subsequently from the Applicant between 2010 and 2019.[31] Mr Piddington’s understanding has always been that MAP trays bearing the Opponent’s Mark indicated the tray had been manufactured by the Opponent and was not associated with the Applicant.
[31] Piddington Affidavit, [16]–[20].
22. According to the Dance Affidavit, Mr Dance was employed in various roles by the Applicant as well as the ‘Pro-Pac Group’ from 2010 to 2018. Mr Dance confirms the Applicant purchased EFP AU in 2013 and states that he was ‘heavily involved in managing the supply of [the Opponent’s] MAP trays in Australia’.[32] In his experience, customers were aware that the MAP trays distributed by the Applicant had been manufactured by the Opponent and Mr Dance ‘never considered that the [Opponent’s Mark] was a brand of [the Applicant] or indicated [the Applicant]’.[33]
[32] Dance Affidavit, [26].
[33] Ibid [33].
23. In the Stevenson Affidavit, Mr Stevenson states that he was a consultant to EFP HK and EFP AU between 2010 and 2013. He was subsequently employed by the Applicant from 2013 to 2017 in the role of Technical Sales Manager. In Mr Stevenson’s experience, the Applicant’s customers were aware that the MAP trays it distributed were manufactured by the Opponent and that the Opponent’s Mark was ‘indicative’ of the Opponent.[34] Mr Stevenson declares that it has always been his understanding that ‘[the Applicant] was simply a distributor of [the Opponent’s] Eco Food-Pak MAP trays’.[35]
EIA
[34] Stevenson Affidavit, [15], [19].
[35] Ibid [21].
24. Ms Forbes declares that she is the General Counsel and Company Secretary of the Applicant and another company named ‘Pro-Pac Packaging Limited’. Forbes 1 and 2 make no distinction between these companies and are drafted in a manner whereby both entities are referred to as ‘PPG’. For the purposes of summarising the EIA, the same approach will be adopted.
25. Ms Forbes claims that PPG has used the Trade Mark since 2013 and has a continuing intention to do so.[36] Forbes 1 exhibits a copy of the 2018 ‘PPG Branding Guidelines’ which, in Ms Forbes’ opinion, illustrate that PPG considers the Trade Mark to be part of its ‘brand architecture’.[37] Forbes 1 responds to statements made within the EIS. Relevantly, Ms Forbes highlights that the Opponent has not filed a trade mark application to register the Opponent’s Mark as at 20 September 2022 despite asserting ownership of same in Australia.[38] She believes that the Applicant is the owner of the Trade Mark and claims that ‘consumers in the Australian packaging market’ recognise the Trade Mark as indicating ‘PPG as the commercial source of origin of the goods’.[39]
[36] Forbes 1, [9].
[37] Ibid Confidential Exhibit KF-4.
[38] Forbes 1, [12].
[39] Ibid [15].
According to Forbes 2, PPG provides product and service solutions for primary, secondary and tertiary packaging. Ms Forbes declares that ‘PPG purchased the business of [EFP AU]’ and refers to a document entitled ‘Business Sale and Purchase Agreement’ dated 19 June 2013 (‘Purchase Agreement’).[40] Confidentiality has been claimed over the Purchase Agreement, however, Ms Forbes points out that the Opponent, EFP HK, Mr Le, Mr Beecham and Mr Huang were parties to the Purchase Agreement and listed as EFP AU’s guarantors. Ms Forbes asserts that under the Purchase Agreement, the ‘ownership of then current Australian trade mark registration number 1322312’ was ‘transferred from [GCR] to [the Applicant]’.[41]
[40] Forbes 2, Tab 2 of Confidential Exhibit KF-2.
[41] Ibid [12].
27. After completion of the Purchase Agreement, it is declared that ‘PPG has been selling packaging products’ under the Trade Mark in Australia and, specifically, the Trade Mark has been used in relation to MAP trays.[42] Forbes 2 states that ‘PPG supplies millions and millions of MAP trays to its Australian consumers’ bearing the Trade Mark and that annual revenue generated is significant.[43] Ms Forbes explains that ‘[b]etween 2013 and November 2019, the MAP trays were manufactured in China for PPG by [the Opponent]’ and all these trays bore the Trade Mark.[44]
[42] Ibid [15].
[43] Ibid [17]–[18].
[44] Ibid [19].
28. According to Forbes 2, ‘the relationship between PPG and [the Opponent] broke down’ in November 2019 and the Opponent ‘ceased to take any further orders from PPG’.[45] Since 2020, it is declared that PPG has used a different manufacturer but continues to use the Trade Mark ‘in the same manner in connection with its goods that it has since 2013’.[46] Forbes 2 also addresses Ms Penn’s employment with the Applicant noting that her position meant that Ms Penn would be familiar with the Purchase Agreement.[47] Forbes 2 reiterates that PPG is the owner of the Trade Mark as a result of the Purchase Agreement.[48]
Discussion
[45] Ibid [20].
[46] Ibid.
[47] Forbes 2, [23].
[48] Ibid [27].
Section 58
29. Section 58 of the Act relevantly provides:
Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
30. The concept of trade mark ownership was considered in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Federal Court said:
[O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[49]
[49] [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ).
31. The default position under the Act is that the Applicant is prima facie considered to be the owner of the Trade Mark. Consequently, it is the Opponent who bears the evidential onus of establishing otherwise. To succeed under this ground, the Opponent must establish:
the trade mark relied upon by the Opponent is at least substantially identical to the Trade Mark;[50]
the Goods are the ‘same kind of thing’ as the goods for which the trade mark relied upon by the Opponent has been used;[51] and
a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade mark relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register the Trade Mark or (b) any use of the Trade Mark in Australia by the Applicant.[52]
[50] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[51] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[52] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
32. This ground was particularised in the SGP as follows:
The trade mark first used was the opposed mark and, further or in the alternative, “Eco Food-Pak” (in word form). The first use was before the priority date of the opposed application. The goods in respect of which the trade mark was used were the opposed goods, and further or in the alternative, goods of the same kind.
33. As a preliminary observation, it is clear that the Opponent’s Mark and the Trade Mark are at least substantially identical. For clarity, each of these trade marks will be referred to as the ‘EFP Logo’ for the following discussion in relation to the s 58 ground of opposition. Likewise,
‘Eco Food-Pak’ will be referred to as the ‘Word Mark’.
34. Both parties proceeded on the basis that the evidence established the Opponent’s MAP trays bearing the EFP Logo had been supplied to Australia prior to the Relevant Date. Detailed submissions were made in relation to the nature of the commercial relationship between the parties as well as the effect of the Purchase Agreement. In essence, the Opponent claims to have used the EFP Logo in Australia ‘since about 2010’ when it supplied to Australian consumers MAP trays which had the EFP Logo embossed on them.[53] The Opponent contends that its prior use is bolstered by its shipping of MAP trays to Australia in boxes which bore the EFP Logo from 2011 onwards.[54] It characterised the Purchase Agreement as being the sale of EFP AU’s distribution rights and thus submitted it did not impact the Opponent’s common law rights. Conversely, the Applicant contended that, pursuant to the Purchase Agreement, it has been the owner of the EFP Logo since 2013. The Applicant asserts that it ‘has continued to use [the EFP Logo] from that time to the present day’.[55] In its view, the Purchase Agreement ‘is a complete answer to the Opponent’s case’ because it proves the Applicant is the owner of the EFP Logo.[56]
[53] Huang 1, [27]–[28].
[54] Ibid [29].
[55] Applicant’s Submissions, [40].
[56] Ibid [19].
35. In my assessment, it is not necessary to undertake a detailed analysis of the commercial relationship between the parties or the purported effect of the Purchase Agreement. At the outset, the evidence fails to establish on the balance of probabilities that the EFP Logo or the Word Mark was used in Australia before the Relevant Date by a person other than the Applicant. To this end, I accept that MAP trays have been distributed within Australia before the Relevant Date. However, the pertinent question here is whether the evidence establishes that the EFP Logo and/or the Word Mark were applied on or in relation to the products that were distributed.
36. The Opponent’s position is that it used the EFP Logo and the Word Mark in Australia before the Relevant Date. This primarily rests on statements made by Mr Huang together with the material exhibited to Huang 1 and 2. However, the evidence contains screenshots of the Opponent’s website accessible at which are dated after the Relevant Date and only show white label products available for manufacture.[57] The screenshots do not reveal use of the EFP Logo or the Word Mark. Other documents have been provided including email correspondence between representatives of the Opponent and EFP HK in 2011, a certificate of origin dated in November 2019 and an undated technical drawing.[58] None of these documents mention or show use of the EFP Logo or the Word Mark and hence does not assist in establishing use of same in Australia before the Relevant Date. The same is true of the 2013 Agreement and the 2018 Agreement[59] insofar as neither document addresses the ownership and/or use of the EFP Logo or the Word Mark.
[57] Huang 1, Tabs 1, 2, 12 of Exhibit WCH-1.
[58] Huang 2, Annexure WCH-3; Huang 1, Tabs 9, 11 of Exhibit WCH-1.
[59] Fester Declaration, Confidential Exhibit MF-2.
37. Meanwhile, photographs of a MAP tray, a plastic cup, plastic cutlery and a cardboard box all displaying the EFP Logo are exhibited to Huang 1.[60] However, the probative value of this evidence is undermined by the fact that each photograph is undated and devoid of any contextual setting. This material does not establish that the EFP Logo was used in Australia before the Relevant Date. Huang 1 also exhibits a ‘Certificate of Registration’ issued to ‘Ningbo Linhua Plastic Co. Ltd – Eco Food Pak’ on 19 July 2019 which states that the recipient achieved hazard analysis and critical control point certification.[61] This document does not constitute cogent evidence that the EFP Logo or, for that matter, the Word Mark was used as a trade mark in relation to products which are the same kind of thing as the Goods. Rather, it simply shows use of the words ‘Eco Food Pak’ as a corporate or business name.[62]
[60] Huang 1, Tabs 7, 8, 10 of Exhibit WCH-1.
[61] Ibid Tab 14 of Exhibit WCH-1.
[62] See, eg, Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278, [73] (Lander J).
38. It follows that Mr Huang’s statements regarding the Opponent’s alleged use of the EFP Logo and the Word Mark in Australia before the Relevant Date are unsupported by cogent documentary evidence. Whether considered individually or together, I am not satisfied that Huang 1 and 2 establish that the Opponent used the EFP Logo or the Word Mark in Australia before the Relevant Date.
39. The Opponent’s position is not improved by what remains of the EIS. The affidavit evidence simply states that the Opponent’s MAP trays distributed by the Applicant displayed the EFP Logo or that the Opponent is the owner of the EFP Logo.[63] Tellingly, no affidavit provides material to corroborate use of the EFP Logo in Australia before the Relevant Date. Instead, where material has been exhibited, it only contains undated photographs of boxes which display the EFP Logo.[64] I accept these affidavits establish that Linhua issued sales orders to Australian customers for MAP trays before the Relevant Date.[65] However, aside from bare assertions made by each deponent, there is no evidence to support the proposition that the EFP Logo and/or the Word Mark was used on or in relation to these MAP trays distributed by Linhua.
[63] See, eg, Penn Affidavit, [24], [34]; Milinkovic Affidavit, [35], [95]; Piddington Affidavit, [14], [21]; Dance Affidavit, [19], [32]; Stevenson Affidavit, [12], [20].
[64] See, eg, Milinkovic Affidavit, Tab 3 of Exhibit NM-1.
[65] Fester Declaration, Confidential Exhibit MF-2.
40. Turning to the EIA, even if I were to accept an interpretation of the Purchase Agreement which results in the Applicant’s use of the EFP Logo inuring to the Opponent’s benefit, this ultimately does not assist the Opponent. The EIA contains a technical drawing of a tray marked with the EFP Logo as well as photographs of the underside of MAP trays and boxes bearing the EFP Logo.[66] These documents are not dated and do not assist in establishing use before the Relevant Date. Meanwhile, Forbes 2 exhibits an email exchange between representatives of the Opponent and the Applicant in 2017 concerning a potential prototype tray.[67] Despite being referenced in the correspondence, the prototype drawing has not been disclosed. Thus, it is not clear what the visual features of the prototype tray were or whether the discussion progressed beyond this preliminary stage.
[66] Forbes 2, Tabs 6, 7, 11 of Exhibit KF-1.
[67] Ibid Tab 8 of Exhibit KF-1.
41. Additionally, the EIA contains several purchase orders made by the Applicant with the Opponent in 2019.[68] Numerous tax invoices issued by the Applicant to Australian customers between October 2013 and January 2020 are also exhibited.[69] This material does not assist in establishing prior use of the EFP Logo because, as the following example demonstrates, multiple trade marks are consistently displayed on each of these business records:
| [68] Ibid Tab 9 of Exhibit KF-1. [69] Ibid Tab 10 of Exhibit KF-1. |
42. The presence and shared emphasis of other trade marks, which Ms Forbes notes are brands of the Applicant, means that the purchase orders and invoices supplied do not demonstrate conclusive use of the EFP Logo. That is, the above invoice could equally be construed as use of ‘Nelson Joyce & Co’ or ‘Medirite Australia’ in relation the items listed within the document. The inherent ambiguity of these business records mean they cannot establish prior use of the EFP Logo in relation to the Goods before the Relevant Date.
43. Finally, I turn to the Purchase Agreement and the fact that confidentiality has been claimed over this document. Broadly speaking, there is some force in the interpretation advanced by the Applicant given the nature of the guarantees and undertakings made by the Opponent, Mr Huang, EFP HK, Mr Beecham and Mr Le in their capacity as EFP AU’s guarantors. However, I find that the effect of the Purchase Agreement is not clear and that the competing interpretations advanced by the parties are equally plausible.
44. In these circumstances, the observations of the Full Court in Food Channel Network Pty Ltd v Television Food Network GP are apposite:
[A] finding that there was considerable confusion over who owned the mark means that this ground of opposition must fail given the onus on [the Opponent] to establish any ground of opposition.[70]
[70] Food Channel (n 2) [66].
45. Based on the evidence filed, I am not satisfied on the balance of probabilities that the Applicant is not the owner of the Trade Mark.
46. Accordingly, the s 58 ground of opposition has not been established.
Section 60
47. Section 60 of the Act relevantly provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
48. To establish this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
This ground of opposition was articulated in the SGP as follows:
The trade marks which have acquired a reputation in Australia are the opposed mark and, further or in the alternative, “Eco Food-Pak” (in word form). The goods in which those trade marks have acquired a reputation are the opposed goods. The first use was before the priority date of the application.
50. Reliance is placed on the Opponent’s Mark and the Word Mark as supporting this ground of opposition. As a preliminary observation, each trade mark must be considered and assessed separately for the purposes of s 60 of the Act.[71] Consequently, even if the evidence establishes that a reputation exists for a trade mark comprised of a word and a device, it does not follow that a reputation also exists for the word or device independently.
[71] See, eg, Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [89] (O’Bryan J); Qantas Airways Ltd v Edwards [2016] FCA 729, [160] (Yates J).
Reputation
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[72] Her Honour quoted with approval the following statement of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ... .[73]
[72] [2000] FCA 1335, [81] (‘McCormick’).
[73] [1992] FCA 159, [118] (‘ConAgra’).
52. Further, Kenny J stated in McCormick that:
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 … 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.[74]
[74] McCormick (n 72) [86].
53. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[75] Meanwhile, the existence and extent of the asserted reputation must be established as a matter of fact by the Opponent.[76]
[75] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[76] ConAgra (n 73) [77].
54. The Opponent’s evidence does not establish as a matter of fact that the Opponent’s Mark or the Word Mark had acquired a reputation in Australia as at the Relevant Date. For the reasons discussed in relation to the s 58 ground of opposition, the evidence fails to establish that the Opponent’s Mark or the Word Mark was used in Australia prior to the Relevant Date. The glaring absence of any evidence of use of either mark is fatal to the Opponent’s prospects of establishing this ground. This remains so notwithstanding the affidavit evidence attesting to the apparent consumer recognition of the Opponent’s Mark in Australia. To this end, I note the Opponent’s evidence fails to disclose any revenue or marketing figures pertaining to the alleged provision of goods bearing the Opponent’s Mark and/or the Word Mark.
55. For completeness, to the extent that the Opponent submits that the use of the Trade Mark demonstrated in the EIA should inure to its benefit, this evidence would not remedy the above deficiencies given the limitations of the EIA outlined at [40] to [42] of this decision. Unlike the EIS, the EIA discloses revenue figures pertaining to sales of MAP trays for the financial years preceding the Relevant Date. While the confidential figures disclosed are considerable, the underlying difficulty remains that there is a dearth of evidence demonstrating how the Trade Mark was used before the Relevant Date. As such, the mere existence of these figures does not sufficiently offset the above discussed evidential deficiencies.
56. Accordingly, I am not satisfied that the Opponent’s Mark or the Word Mark had acquired a reputation in Australia as at the Relevant Date amongst a significant or substantial number of Australian consumers. Given s 60(a) of the Act has not been satisfied, consideration of s 60(b) is not required.
57. The s 60 ground of opposition has not been established.
Section 62A
58. Section 62A of the Act provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
59. A finding of bad faith will not be established easily given the ‘very serious’ nature of the allegation.[77] The concept of bad faith was considered by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2):
Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone.
…
The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[78]
[77] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].
[78] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164]–[167] (emphasis added).
60. This ground was particularised in the SGP as follows:
The application was made with the purpose of preventing the Opponent, which coined the opposed mark and has used it in Australia since around 2010, from continuing to use the mark in Australia (including by way of exporting goods bearing the mark).
61. Evidently, the parties’ understanding of the Purchase Agreement is pivotal to establishing this ground of opposition. Broadly speaking, the Opponent characterises the Purchase Agreement as being exclusively concerned with the sale of EFP AU’s distribution rights. In its opinion, the fact that the Opponent was a party to the Purchase Agreement in the capacity of a guarantor has no bearing on the Opponent’s alleged common law rights. Against this background, the Opponent submits that the application was filed in bad faith because the Applicant, a former distributor, essentially sought to register the Opponent’s Mark some 2 months after the 2018 Agreement was terminated. For its part, the Applicant rejects that the parties were in a mere manufacturer/distributor relationship. In its view, the Purchase Agreement granted it ownership of the Trade Mark and it is entitled to file the application. At the hearing, counsel for the Applicant commented that the application for the Trade Mark was filed because the Earlier Registration expired in 2019.
62. The interpretation of the Purchase Agreement and its intended effect is clearly in dispute. This much is plain given Linhua applied for trade mark registration of the Opponent’s Mark in 2019 but subsequently withdrew the application after the Applicant opposed it. Based on the evidence filed, it is apparent that each party believes they are entitled to the exclusive use of the Trade Mark and objectively sound reasons exist for the belief held by each party. The Opponent’s position has merit insofar as the existence of a manufacturer/distributor relationship between the parties typically weighs in favour of the ground being established. However, the circumstances here are distinguishable because the Purchase Agreement and apparent transfer of ownership of the Trade Mark provides an entirely plausible explanation for the Applicant’s conduct in filing the present application. In my assessment, the Opponent has failed to establish on the balance of probabilities that the application was made in bad faith.
63. The s 62A ground of opposition has not been established.
Decision
64. 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.
65. The Opponent has not established a ground of opposition. Trade mark application 2065209 may proceed to registration 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 the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
66. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
21 December 2023
and Edelman JJ).
Key Legal Topics
Areas of Law
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Intellectual Property
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Commercial Law
Legal Concepts
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Statutory Construction
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Remedies
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Appeal
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