Opposition by Chengbo Wang to registration of trade mark application number 2452159 (class 20) - Vmaisi - in the name of Xiang Chen

[2025] ATMO 191

TRADE MARKS ACT 1995

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

Re:Opposition by Chengbo Wang to registration of trade mark application number 2452159 (class 20) - Vmaisi - in the name of Xiang Chen

Delegate:

Tracey Berger

Representation:

Opponent: Not represented

Applicant: Not represented

Decision:

2025 ATMO 191

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 58 considered and established – trade mark registration refused

Background

1. This is a decision on the opposition by Chengbo Wang (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below filed in the name of Xiang Chen (‘Applicant’):

TM Number:              2452159         (‘Application’)

Trade Mark:               Vmaisi (‘Trade Mark’)

Filing Date:                21 May 2024   (‘Relevant Date’)

Specification:            Class 20:  numberplates not of metal; shelving, not of metal; numberplates, not of metal; non-metallic door furniture; non-metallic door bells, non-electric; non-metallic door hardware; non-metal lock boxes; non-metallic door fasteners; locks, not of metal, other than electric; locks, not of metal, for vehicles; locks, not of metal, for doors; non-metallic door and window hardware being keys, guards and clasps; locks, other than electric, not of metal; non-electric locks, not of metal; non-metal latches; seats adapted for babies; latch bars, not of metal; non-metal latch bars; latches, not of metal; door latches, not of metal; non-metal door latches

(‘Applicant’s Goods’)

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2.     Following the advertisement of acceptance of the Application for possible registration, the Opponent filed a Notice of Intention to Oppose on 10 December 2024, followed by a Statement of Grounds and Particulars (‘SGP’) on 16 December 2024.  The Applicant filed a Notice of Intention to Defend on 30 December 2024.

3. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed evidence in support (‘EIS’) on 3 April 2025 consisting of a Declaration of Chengbo Wang, founder and CEO of Ningbo Vmaisi Import & Export Co Ltd (‘Ningbo Vmaisi’), made on 2 April 2025 with Exhibit-01 to Exhibit-16 (’Wang’). No other evidence was filed.

4.     Once the time for filing evidence had ended, the parties had an opportunity to request a hearing.  The Opponent requested a decision without hearing.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks.  I do so based on the aforementioned materials.

Grounds and onus

5.     In its SGP, the Opponent nominated grounds of opposition under ss 58, 59 and 62A. 

6.     The onus of proof in an opposition rests upon the Opponent.[2]  The standard of proof is the ordinary civil standard on the balance of probabilities.[3]   The rights of the parties are to be determined at the Relevant Date being the filing date of the Application.[4]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

Evidence

7.     Wang declares that he is the owner of the Trade Mark, which mark is derived from the name of his Chinese company Ningbo Vmaisi Import & Export Co Ltd (‘Ningbo Vmaisi’).  Wang provides evidence of his registrations for the Trade Mark in the United States of America (‘USA’), European Union and the United Kingdom in classes 20 and 21 which cover a number of items that overlap with, or are similar goods to, the Applicant’s Goods.

8.     Wang attests that he has authorised Ningbo Vmaisi to use the Trade Mark and exhibits a copy of the agreement dated 1 September 2019.  Wang has outsourced the manufacturing of products sold under the Trade Mark to Chi Hexin Electric Co Ltd and also exhibits a copy of that agreement dated 28 January 2020.

9.     According to Wang, he first used the Trade Mark in the USA on 1 January 2019 and has continuously used the mark throughout Australia online and offline since at least 7 August 2019.  A screenshot from the Shopify admin page showing this Australian order is exhibited to Wang.

10.     Wang declares that the Trade Mark has been used in Australia for ‘bumper guards for furniture; cribs for babies; door fasteners not of metal; non-metal door fittings; non-metal latches; pillows; baby changing tables; non-metal cabinet door catches; non-electric locks, not of metal (‘Opponent’s Goods’).  Exhibited to Wang are undated photographs of products bearing the Trade Mark, printouts of the Opponent’s websites, printouts of Amazon listings for the Opponent’s Goods, evidence of Amazon sales orders of the Opponent’s Goods by Australian consumers and sample Shopify orders.

11.     Wang provides the annual global sales figures for the Opponent’s Goods for 2021 to 2025 (to date, including forecast) which are in the millions of dollars and show significant growth year on year.  The Opponent’s Goods are promoted on the Opponent’s website and social media accounts.  Examples are provided with annual advertising expenditure for promoting the Opponent’s Goods under the Trade Mark in Australia and globally.  I note that the advertising expenditure in Australia is low but the global figures are more significant.

12.     Wang claims that the Opponent’s Goods have a 5% market share in Australia and 30% share globally but provides no basis for these claims.

13.     Wang declares that he has never authorised the Applicant to use or apply for registration of the Trade Mark.  Further, he alleges that the Applicant has engaged in a pattern of filing applications for third party trade marks.  According to Wang, the Applicant has filed 27 different trade marks in Australia across a wide range of goods and services in classes 3, 9, 11, 16, 18, 20, 21, 27 and 28 without conducting any commercial activities.  Wang states that a number of these applications were opposed and lapsed when the Applicant did not file a Notice of Intention to Defend and others are under opposition.  Wang provides examples of two applications filed by the Applicant and declares that the marks which are the subject of those applications are owned by other parties overseas.  Accordingly, Wang declares that the present application was made in bad faith.

Discussion

Section 58

14.     Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

15. The term ‘owner’ is not defined in the Act. However, it is well established that the owner of a trade mark is the person who first uses it in Australia, or first files an application for it in Australia, whichever is the earlier.

16.     Therefore, to establish this ground of opposition, the Opponent must show that:

·    the Trade Mark is identical or substantially identical to the mark relied on by the Opponent;[5]

·    the Applicant’s Goods  are the same as the goods for which the Opponent claims to have used its mark;[6] and

·    a person other than the Applicant has an earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to either (a) the application to register the Trade Mark or (b) any use of the Trade Mark by the Applicant in Australia, whichever is the earlier.[7]

[5] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

[6] Re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

[7] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

17.     In its SGP, the Opponent claims:

Since at least August 2018 in Australia, which is earlier than the priority date of the Opposed Application, the Opponent has been extensively using the Vmaisi trade mark in connection with a range of non-metallic hardware products that are the same as or closely related to the goods claimed under the Opposed Application. As a result, the Opponent was the first user of the Vmaisi trade mark in Australia for various nonmetallic hardware products in Class 20. Accordingly, the Applicant was not (and has never been) the owner of the Vmaisi trade mark (or any trade mark substantially identical to it) in Australia in respect of the goods claimed under the Opposed Application.

18.     In Wang, the Opponent claims that he has used, or authorised use, of the Trade Mark in Australia since August 2019.  Exhibit-04 to Wang is a screenshot of a Shopify admin page of an order placed on 7 August 2019 by an Australian individual for ‘Magnetic Drawer Cabinet Locks- 20 Pack Children Proof Baby Latches’ which appears to have been fulfilled on 6 March 2020.  Although the Trade Mark is not listed in the product description, the Shopify extract is headed ‘vmaisi1022-F1’ and the description is consistent with products illustrated elsewhere in the evidence as shown below.  Also, it appears from other Shopify extracts that the information after the Trade Mark (ie. 1022-F1) relates to the order number from vmaisi as the extracts in Exhibit-09 for orders from Australia are headed ‘vmaisi1291-F1’ fulfilled on 27 September 2024 and ‘vmaisi1289-F1’ fulfilled on 14 September 2024.

19.     Further, Wang includes a schedule of sales to Australian consumers, most of which occurred before the Relevant Date, of various non-metallic door and drawer locks, latches and guards which include the Trade Mark in the product description.  Whilst the full ‘product-name’ is not visible, they appear to match products illustrated in the extracts from Amazon and the Opponent’s website. The description under the heading ‘sku’ also provides an indication of the goods sold.  Wang also includes evidence of use of the Trade Mark for a selection of the Opponent’s goods on social media by the Opponent before the Relevant Date.

20.     The mark used by the Opponent is identical to the Trade Mark and a number of the goods sold are the same as or fall within the broad descriptions ‘non-metallic door furniture; non-metallic door hardware; non-metallic door fasteners; locks, not of metal, other than electric; locks, not of metal, for doors; non-metallic door and window hardware being keys, clasps; locks, other than electric, not of metal; non-metal latches; latches, not of metal; door latches, not of metal; non-metal door latches’ (‘Opponent’s Used Goods’).  Accordingly, I am satisfied on the evidence that the Applicant is not the owner of the Trade mark for the Opponent’s Used Goods.

21.     However, the Application also covers ‘numberplates not of metal; shelving, not of metal; numberplates, not of metal;  non-metallic door bells, non-electric; non-metal lock boxes; locks, not of metal, for vehicles; non-metallic door and window hardware being guards; seats adapted for babies; latch bars, not of metal; non-metal latch bars’ (‘Applicant’s Other Goods’).  Therefore, I must consider whether these items are the ‘same kind of thing’ as the Opponent’s Used Goods.

22.     In relation to whether the goods are the ‘same kind of thing’, the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews[8] stated:

The “same kind of thing” in respect of the goods or services of the parties does not equate to goods or services which may be “of the same description” (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership.[9]

[8] Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14] (Hearing Officer N. Worth).

[9] Colorado Group Limited v Strandbags Group Pty Ltd (‘Colorado’) [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) [1996] ATMO 16; (1996) 34 IPR 340.

23.     To be the ‘same kind of thing’, the goods in relation to which the Trade Mark has been used must be ‘essentially the same’ as the Applicant’s Other Goods, though they may differ in size, shape and name.[10]  

[10] Colorado (n 9), [14] (Kenny J).

24.     In my view, ‘numberplates not of metal; shelving, not of metal; numberplates, not of metal; non-metallic doorbells, non-electric; seats adapted for babies’ are clearly not the ‘same kind of thing as the Opponent’s Used Goods.  Each of these items is different in its nature and purpose to the non-metallic locks, latches and fasteners of the Opponent.

25.     Similarly, I do not regard ‘non-metallic door bells, non-electric’ or ‘non-metal lock boxes’ as the same kind of thing as the Opponent’s Used Goods.  Although these items have a connection to gaining entry to a door, these products are not the same as a lock or latch. 

26.     The remaining items are ‘non-metallic door and window hardware being guards, ‘locks, not of metal, for vehicles, latch bars, not of metal; non-metal latch bars’.  I consider that ‘latch bars, not of metal; non-metal latch bars’ are a type of latch or at least the same kind of thing as latches.  Similarly, non-metal locks for vehicles are a type of lock and as far as I am aware are essentially the same kind of thing as other locks.  However, whilst ‘non-metallic door and window hardware being guards’ may be a reference to security guards, this is not clear and in the absence of any evidence as to whether these are the same kind of thing as the Opponent’s Used Goods, I find that they are not.

27.     The fact that the Opponent has demonstrated that it used the Trade Mark for goods which are the same or same kind of thing as many of the Application’s Goods before the filing of the Application (in the absence of any use of the Trade Mark before the Relevant Date) is sufficient to establish the s 58 ground of opposition for the following goods:

non-metallic door furniture; non-metallic door hardware; non-metallic door fasteners; locks, not of metal, other than electric; locks, not of metal, for vehicles; locks, not of metal, for doors; non-metallic door and window hardware being keys, clasps; locks, other than electric, not of metal; non-electric locks, not of metal; non-metal latches; latch bars, not of metal; non-metal latch bars; latches, not of metal; door latches, not of metal; non-metal door latches.

Decision

28. I have found that the Opponent has established a ground of opposition in relation to the aforementioned goods at [27].

29.     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.[11]

[11] [2014] FCA 1034, [232].

30.     Under the principles outlined above, the Registrar may proceed to reject an application in its entirety where an opposition has been established for some but not all of an applicant’s goods or services, but also has a discretion to offer an amendment to an applicant, allowing it to remove the goods and services for which a ground of opposition has been established.  I note that in in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited, Murphy J stated:

I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.[12]

[12] [2014] FCA 373, [231].

31.     The Applicant has not participated in the proceedings beyond filing a Notice of Intention to Defend and the Opponent has not filed submissions.  Neither party has raised the possibility of an amendment nor identified a principled basis to allow an amendment of the Trade Mark to limit it to a particular subset of the Applicant’s Goods. In these circumstances, I find there is nothing to compel me to offer the Applicant the opportunity to limit the Applicant’s Goods. As such, I do not consider it appropriate to exercise my discretion and offer an amendment in respect of the Trade Mark.  Therefore, I reject the Application for possible registration in its entirety and refuse to register the Trade Mark which is the subject of application 2452159.

32.     If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the Application be in accordance with the court’s direction or order.

33. The Opponent requested an award of costs in its SGP enlivening this issue. As costs generally follow the event, I award costs against the Applicant under s 221 in accordance with Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

15 September 2025