Nova Entertainment Pty Ltd v Huawei Technologies Co., Ltd

[2019] ATMO 46

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Nova Entertainment Pty Ltd to registration of trade mark application 1785134 (9) – NOVA - filed in the name of Huawei Technologies Co., Ltd.

Delegate:	Nicholas Smith
Representation:	Opponent: Sonia Stewart of Counsel instructed by Brett Doyle of Clayton Utz Applicant: Sebastian Aymeric of James & Wells
Decision:	2019 ATMO 46 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 59 considered – ground established – registration refused

Background

1. This is an opposition brought by Nova Entertainment Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the trade mark subject of the application detailed below in the name of Huawei Technologies Co., Ltd. (‘Applicant’): 

Application Number:	1785134
Filing Date:	22 July 2016
Goods:	Class 9: Smart watches; protective films adapted for computer screens; wearable activity trackers; covers for smartphones; cases for smartphones; protective films adapted for mobile phones; selfie sticks (hand-held monopods); video telephones; digital photo frames; microphones; couplers (data processing equipment); integrated circuit cards; transponders; cabinets for loudspeakers; audio- and video-receivers; video screens; network communication equipment; modems; sleeves for laptops; smartphones; batteries, electric; battery chargers; portable power source (rechargeable battery); bags adapted for laptops; headphones; earphones; loudspeaker; portable media players; sound transmitting apparatus; camcorders; cell phone straps; computer keyboards; mouse (computer peripheral); telephone set sheath; encoded identification bracelets, magnetic; pedometers; electric monitoring apparatus for personal use for monitoring global positioning, distance travelled, calories burned, heart rate, blood pressure, activity levels and hours slept; connected bracelets (measuring instruments); computer programmes, recorded; computer operating programs, recorded; computer programs (downloadable software); computer software applications, downloadable; none of the foregoing relating to science education or the generation of audible speech for communication by persons with disabilities, or software that has application to intellectual property rights. (‘Applicant’s Goods’)
Trade Mark:	NOVA	(‘Trade Mark’)

1. Following the advertisement on 7 September 2017 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 7 November 2017.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 7 December 2017. The SGP raised grounds of opposition under ss 41, 42(b), 43, 44, 58, 59 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 18 January 2018.

   Evidence, Notice to Produce and Submissions

2. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 23 April 2018.  This evidence consists of a declaration made on 23 April 2018 by Benjamin Charles Willis, head of legal for the Opponent, with Annexures BCW-1 to BCW-12 (‘Willis Declaration’). The Applicant did not file any Evidence in Answer.

3. On 30 May 2018, the Registrar issued a Notice to Produce pursuant to s 202 of the Act seeking the production of the following documents

   1.   Any documents that indicate the Applicant’s plans to use the trade mark NOVA in Australia in respect of goods covered by the Trade Mark Application 1785134 other than smartphones. Such documents would include:

   ·    Samples of advertising;

   ·    Samples of packaging;

   ·    Internal memos;

   ·    Details of advertising campaigns in Australia;

   ·    Production and launch schedules for Australia;

   ·    Sales figures;

   ·    Photos of goods bearing the trade mark NOVA; and

   ·    email

   All of the aforementioned will be in relation to the Australian market and the following goods, apart from smart phones, as listed in Trade Mark Application 1785134 being:

   Smart watches; protective films adapted for computer screens; wearable activity trackers; covers for smartphones; cases for smartphones; protective films adapted for mobile phones; selfie sticks (hand-held monopods); video telephones; digital photo frames; microphones; couplers (data processing equipment); integrated circuit cards; transponders; cabinets for loudspeakers; audio- and video-receivers; video screens; network communication equipment; modems; sleeves for laptops; batteries, electric; battery chargers; portable power source (rechargeable battery); bags adapted for laptops; headphones; earphones; loudspeaker; portable media players; sound transmitting apparatus; camcorders; cell phone straps; computer keyboards; mouse (computer peripheral); telephone set sheath; encoded identification bracelets, magnetic; pedometers; electric monitoring apparatus for personal use for monitoring global positioning, distance travelled, calories burned, heart rate, blood pressure, activity levels and hours slept; connected bracelets (measuring instruments); computer programs, recorded; computer operating programs, recorded; computer programs (downloadable software); computer software applications, downloadable; none of the foregoing relating to science education or the generation of audible speech for communication by persons with disabilities, or software that has application to intellectual property rights.

4. The Applicant did not produce any material in response to the Notice to Produce.  By letter dated 3 August 2018, the Applicant’s representatives indicated that their client was unable to locate and produce ‘any documents showing an intention to use the NOVA trade mark in relation to all the goods covered by Application No. 1785134’, nor were they able to file a declaration by an officer attesting to the circumstances regarding the intention to use the Trade Mark in Australia at the time of filing.  By letter dated 17 October 2018 the Applicant’s representatives made similar statements.  As the Applicant did not have any documents sought by the Notice to Produce, the Registrar was satisfied that the Applicant had a reasonable excuse for not complying and the failure to comply has not been referred to the Director of Public Prosecutions.

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 2 October 2018 the Opponent requested an oral hearing.  The matter was set down for a hearing in Canberra on 19 March 2019 and the matter was allocated to me.  In line with usual practice, letter was sent to the parties on 18 January 2019 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 5 March 2019 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 12 March 2019 (‘Applicant’s Submissions’). 

6. On the day of the hearing the Opponent provided by e-mail two additional documents, being extracts from the Macquarie Dictionary and Shorter Oxford dictionary. Following an indication that the Applicant did not oppose me having regard to this additional information, I have decided to have regard to this additional material pursuant to the requirements of reg 21.19 of the Trade Marks Regulations 1995.  At the hearing Sonia Stewart of Counsel instructed by Brett Doyle of Clayton Utz represented the Opponent, appearing by video conference and Sebastian Aymeric of James & Wells represented the Applicant, also appearing by video conference.

7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

8. The Opponent is an Australian entertainment company.  The Opponent is the registered owner of 27 registered trade marks that feature or contain the word NOVA (‘Opponent’s Trade Marks’). While for the purposes of the grounds of opposition I have had regard to all the relevant marks in the SGP, in the interests of brevity I will list below the marks (and closely corresponding goods and services) that the Opponent, in paragraph 75 of its submissions, identified as the most relevant for my comparison under s 44 of the Act. The goods for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods’ and the services are referred to as the ‘Opponent’s Services’. 

Mark	Priority Date	Classes	Similar goods or closely related services (extracts only) with those covered by the Opposed Mark
882621 NOVANET	16-JUL- 2001	9, 16, 25, 38, 41	Class 9: digital music (downloadable) provided from the internet; digital music (downloadable) provided from MP3 Internet web sites Class 38: communication of information (including but not limited to music, sounds, images, and audio-visual items) via the Internet Class 41: publication of information in electronic form
902089 NOVA 93.7	01-FEB-2002	38, 41	Class 38: Communication of information (including but not limited to music, sounds, images, and audio-visual items) via a global computer network
905577 NOVA 100	08-NOV-2001	38	Class 38: Communication of information (including but not limited to music, sounds, images and audio-visual items via a global computer network
907075 NOVA 91.9	20-MAR-2002	38, 41	Class 38: Communication of information (including but not limited to music, sounds, images and audio-visual items via a global computer network
933727 NOVA 106.9	11-NOV-2002	38, 41	Class 38: communication of information (including but not limited to music, sounds, images and audio-visual items via a global computer network
1017276 NOVA UNSIGNED	24-AUG-2004	38, 41	Class 38: communication of information (including but not limited to music, sounds, images and audio-visual items via a global computer network
117438 TAKE OVA NOVA	05-JUN-2006	38, 41	Class 38: Communications services, including radio and television broadcasting services (whether free to air or subscription) and podcasting; communication of information (including music, sounds, images, and audio-visual items) via a global computer network or via any wireless medium Class 38: Entertainment services including radio entertainment, television entertainment, and entertainment services provide provided online or via any wireless medium; interactive entertainment services
1283401 NovaNation	04-FEB-2009	35, 38, 41	Class 38: Communications services Podcasting; communication of information (including music, sounds, images, and audio-visual items) via a global computer network or via any wireless medium Class 41:  Entertainment provided via a global computer network, Entertainment services provided online
1403235 LIVE LIFE NOVA	10-JAN-2011	35, 38, 41	Class 38: Communications services Online communication services, including podcasting; communication of information (including music, sounds, images or audio-visual items) via the internet or a global computer network or via any wireless medium Class 41: Entertainment services provided via the internet or a global computer network; Entertainment services provided online, including through wireless media
1506636 SHOPPERNOVA	06-AUG-2012	9, 35	Class 9: Software; application software; software which uses location based technology to identify and send to the user information on sales promotions, discounts, deals and specials which may be of interest; apparatus for recording, transmission or reproduction of sound, images or data
1559809 NOVA’S RED ROOM	29-MAY-2013	9, 35, 38, 41	Class 38: Communication services; Online communication services, including podcasting; communication of information (including music, sounds, images or audio-visual items) via the internet or a global computer network or via any wireless medium Class 41: Entertainment services provided via the internet or a global computer network ; Entertainment services provided online, including through wireless media; Provision of entertainment services via an online forum; electronic publication of information on a wide range of topics, including online and over a global computer network

1. The Willis Declaration contains the following claims/statements:

   ·    The Opponent was formed in 1996 and has used the Trade Mark since 2001 in respect of various commercial radio stations, identified as NOVA [frequency].  The Opponent’s stations, comprising of the Opponent’s radio stations in Sydney, Melbourne, Perth, Adelaide and Brisbane, were launched between 2001 and 2005.   The Opponent now operates from new formats and platforms, such as its websites, its TV music channel Smooth and its new mobile-only digital platform GOAT.

   ·    The Opponent has registered over 25 trade marks in Australia that contain the word NOVA, mostly in class 41 for radio related services, but also for other goods and services across classes 9, 16, 25 and 38.

   ·    The Opponent has extensively promoted its services under the Trade Mark including through advertising, the NOVA mobile app, various promotional collateral, social media accounts, live events and sponsorship.

   ·    The Opponent maintains several websites featuring the Trade Mark that receive exceptionally high numbers of visitors and user interactions.

   The Applicant

2. The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register, the Evidence in Support and in the Applicant’s letters summarised in paragraph 5 above. 

3. The Willis Declaration contains the following claims/statements in respect of the Applicant:

   ·    At the date of the declaration, the Applicant’s only use of NOVA is in respect of its smartphone products, the HUAWEI NOVA, which is available for sale at various Australian retailers.  The Declarant has conducted extensive searches and has been unable to identify any use of the Trade Mark by the Applicant other than on smartphones.

   Grounds of Opposition, Onus and Standard of Proof

4. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 41, 42(b), 43, 44, 58, 59 and 60. To successfully oppose the application the Opponent needs to establish at least one of those grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 59. Consequently, it is unnecessary that I consider the remaining grounds of opposition. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

5. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 22 July 2016, being the filing date of the application (‘the relevant date’).[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [ 2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

   Discussion

   Section 59

6. Section 59 of the Act is reproduced below:

   59 - Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)    to use, or authorise the use of, the trade mark in Australia, or

   (b)    to assign the trade mark to a body corporate for use by the body Corporate in Australia;

   in relation to the goods and/or services specified in the application.

7. The relevant date for assessing the Applicant’s intention to use the Trade Mark is the filing date being 22 July 2016.[4]

   [4] See the discussion of the authorities in Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29, [31]. The relevant authorities are Suyen Corporation v Americana International Limited [2010] FCA 638; (2010) 87 IPR 262 (‘Suyen’) and Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437 (‘Food Channel’).

8. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The Applicant did not at the date of application use, intend to use or intend to authorise the use of the Trade Mark in Australia on all of the Designated Goods. Neither did the Applicant intend to assign the Application to a body corporate about to be constituted for use by that body corporate in Australia in respect of the Designated Goods & Services.

   The Designated Goods are very broad. An intention to use the Trade Mark on such a range of goods is not supported by the Applicant's website or enquiries made in relation to the Applicant's business. Enquiries indicate that the trade mark that is being used is HUAWEI NOVA (Accepted Application 1785133) in configurations such as, HUAWEI nova2i and HUAWEI nova plus.

9. The nature of the intention in s 59 was considered by Jacobsen J in Health World Ltd v Shin-Sun Australia Pty Ltd (‘Health World’) where he stated:

   In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[5]

   [5] [2008] 75 IPR 478, [160].

10. There is a presumption that where an application has been filed the applicant, has the requisite intention. However:

    There is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made.

    The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.[6]

    [6] Ibid [162]-[163] (citations omitted).

11. Jacobsen J also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:

    The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[7]

    [7] Ibid [161] (citations omitted).

12. In view of the authorities discussed above, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the relevant date the Applicant lacked the requisite intention.  If the Opponent establishes a prima facie case the onus then shifts to the Applicant for rebuttal.

13. Having considered the decisions of Dodds-Streeton J in Suyen, the Full Court in Food Channel, and Jacobson J in Health World the Delegate in Foxtel Management Pty Ltd v 111Pix.com Ltd stated:

    I note that [the authorities] all appear to agree that lack of intention might be inferred ‘where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence’. It is nevertheless clear from all three judgments that such an inference will not be drawn lightly. Jacobson J, for example, cited two such cases, being Phillip Morris Products SA v Sean Ngu (‘Phillip Morris’) and Tommy Hilfiger Licensing Inc v Tan (‘Phillip Morris’), both involving somewhat particular circumstances. In Phillip Morris the opponent had sought production of documentation substantiating various claims regarding its proposed use made by the applicant in a letter to the opponent’s attorneys, but the applicant neither responded to the Notice to Produce … nor did it file any written submissions or appear at the hearing. Tommy Hilfiger, for its part, was decided by the Hearing Officer concerned on the basis that the applicant’s intention had to persist beyond the filing date and thus that the investigations attested to in the opponent’s evidence suggesting that there had been no actual use in the 20 or so months since the opposed application was filed required some formal ‘rebuttal, denial or answer’ from the applicant. As already noted, however, it is now clear that the relevant date for assessing the applicant’s intention is the date of application. Moreover, Dodds-Streeton J stressed in Suyen at [207] that:

    There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.

    In Suyen at [212] to [214] her Honour provided some further examples of cases where lack of the requisite intention had been inferred, all of which again involve quite particular circumstances going beyond mere non‑use:

    Because the intention concerns the applicant’s state of mind, it is, as the authorities make clear, difficult for an opponent to discharge the onus it bears under s 59 of the Act. Opposition has nevertheless succeeded in a number of cases. The intention has been held to be contra-indicated where the applicant company was not operating and failed to provide evidence, had no capacity to trade in the relevant goods or services or was subject to a relevant contractual restraint: see Daimaru Pty Ltd v Kabushiki Kaisha Daimaru (1990) 19 IPR 129. In other cases, opposition has succeeded because the evidence established the existence of only illegitimate purposes, including the use of registration defensively, speculatively, to gain competitive advantage or to sell the trade mark: see also John Batt at 439-40.

    In Food Channel, the Full Court observed that ‘only a low threshold has been set with regard to intention to use’: at [67]. Their Honours referred to Michael Sharwood & Partners Pty Ltd v Fuddruckers Inc (1989) 15 IPR 188 (in which the applicant companies appeared not to carry on business, their location was illegal for a restaurant for which service the trade mark was to be registered and they adduced no evidence in answer to the opponent’s material) and to Danjaq LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18; (2004) 61 IPR 651 (in which the applicant had made a large number of applications that were subsequently permitted to lapse, had a history of ‘cybersquatting’ and advanced the evidence of an unreliable sole witness. It was therefore inferred that the applicant was trading in registrations and had neither the capacity nor means to use the trade mark.).

    Opposition has also succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark.

    In Health World, Jacobson J at first instance concluded that there was no intention to use the mark where the applicant’s principal witness did not make the final decisions on such matters, and did not distinguish between the applicant company and another company in relation to steps said to evidence an intention to use the mark. The person who did constitute ‘the controlling mind’ of the applicant company gave limited evidence which disclosed no positive intention to use the trade mark on goods of the relevant class. Rather, he testified that ‘we wanted to widen our business’ to use the mark on any goods or products the company might make.

    In Food Channel, the Full Court upheld the appeal on grounds, inter alia, that the primary judge erred in finding that the applicant had no intention to use the trade mark where its sole director (and ‘controlling mind’) gave unchallenged (and not inherently improbable) evidence of intention to use the mark, and there was ‘some evidence not found to be unreliable’ that the assignor company (controlled by the same person) had used the mark in respect of the relevant class of goods: at [82]. The Full Court concluded that ‘in this state of the evidence, the judge could not reasonably conclude that [the opponent] had discharged its onus on the s 59 issue’: at [83].

    Suyen itself concerned opposition based on s 59 to a trade mark with a 2003 priority date. The opponent in that case submitted that, in addition to there having been no significant use prior to the opposition proceedings commencing, two further circumstances shifted the evidentiary onus to the applicant. Firstly, the applicant had apparently only made scant reference to Australia in a notice of opposition it had filed in the USA in 2006 in which it had purported to set out its sales, marketing, advertising and other activities and other activities under a closely related trade mark. Secondly, as at three specific dates in 2008, being dates when the opponent’s attorneys had checked the applicant’s website, the ‘website did not evidence any intention to use [the trade mark] in Australia’ and, inter alia, did not appear to ‘target, and was not accessed by, Australian-based purchasers’. Dodds-Streeton J however considered that these matters were not sufficient to shift the opponent’s evidentiary onus … [8]

    [8] [2012] ATMO 29, [36]-[39].

1. On 30 May 2018 the Registrar issued a Notice to Produce to the Applicant seeking any documents that indicate the Applicant’s plans to use the Trade Mark in Australia in respect of goods covered by the Trade Mark Application 1785134 other than smartphones.  The Applicant did not provide any documents in response to this Notice and as such I draw the inference that no such documents exist.

2. Furthermore the Applicant’s representatives, in communication with the Registrar, by letters dated 3 August 2018 and 17 October 2018 made the following statements [paraphrased]:

   -The Applicant has been unable to locate and produce any documents showing an intention to use the Trade Mark in relation to all the Applicant’s Goods;

   -The Applicant’s representatives are unable to file a declaration by an officer of the Applicant who can attest to circumstances regarding an intention to use the Trade Mark in Australia at the relevant date; and

   -The Applicant’s representatives are advised by attorneys acting for the Applicant that at the time of filing the Applicant intended to have available a range of goods in Australia under the Trade Mark.  I note that as such a statement is at least second- (and possibly third or fourth) hand hearsay without identifying the individual who made the representation and as such I give it no weight.

3. By any measure, these statements are quite extraordinary.  The Applicant is a large and well-resourced organisation that is legally represented and has clearly been put on notice, (by the provision of the SGP, the Opponent’s EIS, and the Notice to Produce) that lack of intention to use is an issue in these proceedings.  Furthermore I find it exceedingly unlikely that, had the Applicant held an intention to use the Trade Mark in respect of all the Applicant’s Goods, there would be a complete absence of documents documenting that intention. 

4. I find that the failure of the Applicant to provide any documents in response to the Notice to Produce, as well as the statements made by the letters dated 3 August 2018 and 17 October 2018 are sufficient to establish a prima facie case that on the relevant date the Applicant lacked the requisite intention to use the Trade Mark in respect of all the Applicant’s Goods other than smartphones. In circumstances where it would have been a relatively simple task for the Applicant to provide evidence about itself and its intentions it was incumbent on the Applicant to provide evidence of an intention to use the Trade Mark. This it has not done. I accordingly find the opposition ground based on s 59 of the Act established in respect of all the Applicant’s Goods other than smartphones.

5. The issue of an intention to use the Trade Mark in respect of smartphones requires separate consideration.  It is not disputed that the Applicant sells smartphones in Australia.  The evidence before me, being the EIS, is that the Applicant uses the words ‘huawei nova’ in connection with its smartphone products.  The Opponent submits that, from this evidence, and the decision of the Applicant to apply to register, as a trade mark in Australia, the word mark HUAWEI NOVA (no. 1785133), I should infer that the Applicant does not intend to use NOVA for smartphones, only HUAWEI NOVA.  The Applicant submits that this evidence shows use of two separate trade marks, HUAWEI being the house mark and NOVA being the brand mark, and from this evidence of use of the NOVA mark I should infer that at the relevant date the Applicant intended to use the NOVA Mark on smartphones.

6. In Sports Warehouse, Inc v Fry Consulting Pty Ltd, Kenny J said[9]:

   I accept, as Sports Warehouse contended, that a sign may be registrable as a trade mark even though it is used together with another trade mark, and that there can still be use of a mark where it is a component of a larger composite mark: see Chocolaterie Guylian at 93 [97]; also E & J Gallo Winery at 662 [68]-[69]; also E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934; (2008) 77 IPR 69 at 108 [186] (Flick J). Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 74 IPR 246 (‘Colorado’) is not authority for the contrary proposition. Each case turns on its own facts and the trade mark in question viewed in the context of those facts.

   [9] [2010] FCA 664 [133].

7. In the present case I am satisfied that the use by the Applicant of ‘HUAWEI NOVA’ amounts to use of two separate marks, being the house mark HUAWEI and the brand mark NOVA; similar to the use of INTEL PENTIUM or MICROSOFT OFFICE 365 on advertising and products. Huawei is the name of the Applicant and a well-known trade mark used across the Applicant’s portfolio of consumer goods. The manner in which the words ‘huawei nova’ are displayed, often in separate fonts, and with ‘huawei’ used elsewhere on the product and advertising (as a house mark) further suggest that the Trade Mark is used by the Applicant on smartphones as its own separate mark. In circumstances where the Applicant has used the Trade Mark on smartphones shortly after the relevant date, I find that the opposition ground based on s 59 of the Act is not established in respect of smartphones.

8. The ground under s 59 of the Act has been established in respect of all the Applicant’s Goods other than smartphones. 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.[10]

   [10] [2014] FCA 1304, [232].

9. 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 application in its entirety, under the principles outlined above, but also has a discretion 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.

10. In the present case, at the hearing, the Applicant suggested that I allow the application to proceed for (in essence offer an amendment to allow the applicant to restrict the Applicant’s Goods to) ‘smartphones’.  The difficulty with that approach is that the specification of the Applicant’s Goods contains the exclusion ‘none of the foregoing relating to science education or the generation of audible speech for communication by persons with disabilities, or software that has application to intellectual property rights’.  By the Applicant’s use of the term ‘none of the forgoing’ the exclusion applies to all of the Applicant’s Goods. 

11. Therefore, were the Registrar to offer an amendment to restrict the Applicant’s Goods to ‘smartphones’ without the exclusion, it would have the effect of extending the rights the Applicant would have in respect of that part of the specification (which, absent advertisement, would be in breach of s 65(7) of the Act). Were the Registrar to offer an amendment to restrict the Applicant’s Goods to ‘smartphones none of the foregoing relating to science education or the generation of audible speech for communication by persons with disabilities, or software that has application to intellectual property rights’, such an amendment would render the specification almost nonsensical, since regardless of whether it is used by persons with disabilities, the one of the purposes of a telephone (and an important purpose of a smartphone) is to generate audible speech for communication. In circumstances where any amendment offered would either have the effect of extending the Applicant’s rights or render the specification essentially invalid, I decline to exercise the discretion to offer the Applicant an opportunity to amend the Applicant’s Goods. I therefore find that the Opponent has established the ground of opposition it raised pursuant to s 59 of the Act.

    Decision

12. I have found the Opponent has established the ground of opposition it raised pursuant to s 59 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

    Costs

13. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

    Nicholas Smith
    Hearing Officer
    Oppositions and Hearings
    2 April 2019