Opposition by Gong Cha Australia Pty Ltd to registration of trade mark application number 1882415 (30) - Ben Gong's Tea Origin Tea Taste with house device and Chinese characters - in the name of Bengong's Tea...

[2019] ATMO 154

TRADE MARKS ACT 1995

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

Re:Opposition by Gong Cha Australia Pty Ltd to registration of trade mark application number 1882415 (30) - BEN GONG'S TEA ORIGIN TEA TASTE with house device and Chinese characters - in the name of Bengong's Tea Australia Pty Ltd

DELEGATE:

Nicholas Barbey

REPRESENTATION:

Opponent: Written submissions by Coleman Greig Lawyers Pty Ltd

Applicant: Written submissions by Heath Adams, Adams & Partners Lawyers

DECISION:

2019 ATMO 154

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44 and 60 considered – none established – trade mark may proceed to registration

Background

1. This matter concerns an opposition brought by Gong Cha Australia Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Bengong's Tea Australia Pty Ltd (‘the Applicant’):

Trade Mark:

(‘the Trade Mark’)

Application Number:               1882415

Filing Date:  25 October 2017

Goods:  See Annexure 1 (‘the Applicant’s Goods’)

Endorsement:  The applicant has advised that the CHINESE characters appearing in the trade mark may be transliterated as BENGONG DE CHA which may be translated into English as BENGONG'S TEA.

1. The application to register the Trade Mark was examined as required by s 31 of the Act and its acceptance was advertised in the Australian Official Journal of Trade Marks on 15 March 2018.

1. The Opponent filed a Notice of Intention to Oppose registration on 15 May 2018 and a Statement of Grounds and Particulars (‘SGP’) on 15 June 2018.

1. The Applicant filed a Notice of Intention to Defend the Trade Mark on 18 July 2018.

1. On 25 October 2018, the Opponent filed Evidence in Support (‘EIS’) and this was followed by the Applicant filing Evidence in Answer (‘EIA’) on 31 January 2019. The Opponent filed Evidence in Reply (‘EIR’) on 18 April 2019.

1. Both parties were advised of their right to request a hearing or to make written submissions. Each party elected to rely solely on written submissions. The Opponent filed written submissions (‘Opponent’s Submissions’) prepared by Coleman Greig Lawyers Pty Ltd and the Applicant filed written submissions (‘Applicant’s Submissions’) prepared by Heath Adams of Adams & Partners Lawyers.

1. 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. In doing so I take account of the material comprised of the written record. This record consists of the material outlined above.

Grounds of opposition, onus and standard of proof

1. The SGP nominated grounds of opposition under ss 42(b), 44, and 60 of the Act. To be successful in this opposition, the Opponent needs to establish at least one of these grounds.

1. The Opponent bears the onus of establishing the ground of opposition.1 The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.2 The date at which

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

2 Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

the rights of the parties are to be determined is 25 October 2017, being the filing date of the application3 which here is the same as the ‘priority date’ stipulated in ss 44 and 60.

Evidence

1. The parties filed the following declarations as evidence in this matter:

EIS

•    Declaration of Lili Shi dated 23 October 2018 with Exhibit LS-1 and Confidential Exhibit LS- 2 (‘Shi 1’).

EIA

•    Declaration of Alice Li dated 30 January 2019 with Annexure AL1 (‘Li Declaration’).

•    Declaration of JiaJie Wan dated 31 January 2019 with Exhibits LW 1 to LW 15 (‘Wan Declaration’).

EIR

•    Declaration of Lili Shi dated 10 April 2019 with Exhibits LS-3 to LS-5 (‘Shi 2’).

The Opponent’s evidence

1. Shi 1 explains that the trade mark ‘gong cha’ was first used in 2006 in relation to a tea-based beverage outlet in Taiwan. Royal Tea Taiwan Co., Ltd (‘RTT’) has since expanded use of the trade mark ‘gong cha’ to several countries throughout the Asia-Pacific and North American regions. The declarant states that there are over 1500 outlets across 16 countries operating under the trade mark ‘gong cha’.4

1. Pursuant to a master franchising agreement with RTT dated 1 October 2015, the Opponent is the master franchisee and authorised user of the following registered Australian trade marks (collectively ‘GC Device Marks’):

Trade Mark:

Number:  1364307

Priority Date:  31 May 2010

3 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4].

4 Shi 1, [24].

Owner:  Royal Tea Taiwan Co., Ltd

Services:Class 43: cafes; canteens; cafeterias; restaurants; tea room services; bar services; preparation of take-away and fast food; providing food and drink; takeaway food and drink services

Endorsement:  The applicant has advised that the English translation of the

Chinese words GONG CHA appearing in the trade mark is "CONTRIBUTED TEA".

Trade Mark:

Number:  1592767

Priority Date:  21 November 2013

Owner:Royal Tea Taiwan Co., Ltd. a corporation incorporated under the laws of Taiwan R.O.C.

Goods:Class 30: tea-based beverages; cocoa based beverages; coffee-based beverages; chocolate-based beverages; honeys; ices; ice creams; sugars; fructose; biscuits; cookies; cakes; candies

Endorsements: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

The applicant has advised that the CHINESE characters appearing in the trade mark may be transliterated as YANG, YANG, HONG, GONG, CHA which may be translated into English as SHAPE, FORM, PATTERN, STYLE, SHAPE, FORM, PATTERN, STYLE, RED, VERMILLION, BLUSH, FLISH, OFFER TRIBUTE, TRIBUTE, GIFTS, TEA.

1. The Opponent is also the authorised user of the following Australian trade mark application which, during the course of this matter, achieved registration (‘GC Word Mark’):

   Trade Mark:   Number:    1845177

   Priority Date:  16 May 2017

   Owner:Royal Tea Taiwan Co., Ltd. a corporation incorporated under the laws of Taiwan, R.O.C.

   Goods & Services:                 See Annexure 2

   Endorsement:  The applicant has advised that the CHINESE characters appearing in the trade mark may be transliterated as GONG & CHA which may be translated into English as OFFER TRIBUTE; TRIBUTE; GIFTS & TEA.

1. For the discussion that follows, I will refer to the trade marks set out at [12] and [13] collectively as the ‘Gong Cha Marks’.

1. According to the declarant, the first Australian outlet to sell beverages under the Gong Cha Marks was opened in New South Wales in September 2012. The number of Australian outlets has subsequently increased to 52, with outlets located in every state of Australia. The range of beverages offered at these outlets include tea-based and yoghurt-based beverages.

1. The quantity of sales and total revenue derived from beverages sold under the Gong Cha Marks within Australia has been considerable. The figures disclosed indicate that both metrics have consistently increased in significant increments annually since 2012. Shi 1 also details the various mediums through which the Gong Cha Marks have been promoted within Australia. Promotional mediums include store signage, social media platforms, product packaging and via the sponsorship of entertainment events within Australia.

1. Shi 1 outlines the declarant’s opinion regarding the similarity of the Gong Cha Marks and the Trade Mark. Evidence was tendered to confirm that the word ‘cha’ may be translated from Chinese into English as ‘tea’5 and the pinyin ‘gong’ constituent in each trade mark was analysed.

   In the Gong Cha Marks, the Chinese character           transliterates to ‘gong’ and means ‘to offer tribute’ to a higher authority such as royalty. In the Trade Mark, the Chinese character transliterates to ‘gong’ and means ‘palace’. The declarant states that the addition of ‘ben’, represented by the Chinese character  , alters the translation of the Trade Mark. This is

   because the combination of      results in a first-person pronoun used to denote the queen or princess. On this basis, the declarant considers the respective marks are conceptually identical.6

1. Shi 2 primarily disputes statements made by the Wan declaration. The declarant contends that both beverages and food, as opposed to beverages only, are provided under the Gong Cha Marks. Trade mark details extracted from searches of the Australian Trade Marks Register (‘the

5 See Shi 1, Exhibit LS-1.

Register’) for the word combinations ‘gong’ and ‘tea’ as well as ‘gong’ and ‘cha’ were also exhibited in Shi 2.

The Applicant’s evidence

1. The Li Declaration is made by a qualified translator and interpreter who holds a Master of Translation and Interpreting Studies. The declarant discusses the translation of the words and Chinese characters that appear in the Trade Mark and the Opponent’s registered trade mark number 1364307.7

1. The declarant explains that Hanyu Pinyin is the official system used to transcribe Mandarin Chinese sounds into Roman script. The declarant’s translation of the Chinese character

   representing the pinyin ‘gong’, namely   and     , in the relevant trade marks is consistent with that provided in Shi 1. However, the declarant states that, in the context of the trade marks, ‘bengong’ and ‘gongcha’ have dissimilar concepts for the following reasons:

   The word bengong is a gender-neutral first-person singular pronoun used by the empress or concubine when speaking to a person or audience of lower rank or status. On the other hand, gongcha, also known as tribute tea, refers to "the act of offering tea to the Emperor in ancient China"8

Additionally, the declarant observes that while the Chinese characters         and share the same pinyin ‘gong’, the actual characters are pronounced in different tones and this is particularly significant because Mandarin is a tonal language, such that different tones may completely change the meaning of a character.

1. The Wan Declaration explains that the Applicant is the licensee of the Trade Mark pursuant to an agreement with Guangzhou Bengong Food & Beverage Management Co Ltd. The declarant states the Applicant’s business is in its infancy and indicates that an iteration of the Trade Mark was first used in or around May 2018.9

1. According to the declarant, the Trade Mark is used in relation to retail stores that have an in- house bakery. A variety of food and drink products are sold at these stores including tea-based

7 See Australian trade mark registration details reproduced at [12] of this decision.

8 Li Declaration, [7] (emphasis in original).

and fruit-based beverages. The Trade Mark is promoted via store signage, product packaging and online via various social media platforms as well as the Applicant’s website.

1. The Wan Declaration also provides information pertaining to the ingredients of the Opponent’s beverages as well as the differences, perceived by the declarant, between the respective business models of the Opponent and the Applicant. Evidence in the form of a list of trade marks returned from separate Register searches for the exact words ‘cha’, ‘gong’ and ‘tea’ in respect of classes 30 and 43 are also exhibited.

Discussion Section 44

1. Section 44 of the Act relevantly provides:

Identical etc. trade marks

1.   Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

a.   the applicant's trade mark is substantially identical with, or deceptively similar to:

i.   a trade mark registered by another person in respect of similar goods or closely related services; or

ii.   a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

b.   the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

1. To establish this ground of opposition, the Opponent must identify at least one trade mark which satisfies the following requirements:

   i.it is in the name of a person other than the Applicant;

i.it has a priority date which is earlier than that of the Trade Mark;

i.it is substantially identical with, or deceptively similar to, the Trade Mark; and

i.it is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods.

1. To support this ground of opposition, the SGP nominated Australian trade mark registration number 1592767 (a GC Device Mark)10 and the GC Word Mark. However, the Opponent’s Submissions discuss the GC Device Marks and no reference is made to the GC Word Mark. This discrepancy does not have any direct consequence on the outcome of this matter given the GC Word Mark and GC Device Marks contain essentially the same word elements apart from the additional map image present in the latter. The Opponent’s Submissions concentrate on the common element of ‘gong’ and as this element is more pronounced in the GC Word Mark, the following discussion will consider the comparison of same in relation to the Trade Mark. This is because if the GC Word Mark is found not to be at least deceptively similar to the Trade Mark, the same result will arise in respect of the GC Device Marks given they are more dissimilar to the Trade Mark by virtue of their depiction and additional point of differentiation.

1. The GC Word Mark is registered by a person other than the Applicant and has a priority date of 16 May 2017 which is earlier than the Trade Mark’s priority date of 25 October 2017. The GC Word Mark contains claims in class 30 for goods similar to the Applicant’s Goods. For example, the broad class 30 claims for ‘bread; cakes; candies; fructose; honey’ would be similar to the Applicant’s Goods such as ‘foodstuffs made with flour; snack foods consisting principally of confectionery; fructose syrup for use in the manufacture of foods; glazes for food’. It follows that requirements (i), (ii) and (iv) set out at [25] have been satisfied.

1. Establishing this ground of opposition therefore turns on whether the Trade Mark is substantially identical with, or deceptively similar to, the GC Word Mark. The test for ‘substantial identity’ was set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.11

1. The Trade Mark and the GC Word Mark are reproduced below:

Trade Mark GC Word Mark

10 See Australian trade mark registration details reproduced at [12] of this decision.

1. Substantial identity was not raised in the Opponent’s Submissions and I agree that the trade marks are not substantially identical. When considered side by side, significant differences between the trade marks are apparent. The Trade Mark is a complex composite mark which, for the purpose of the present discussion, is comprised of two main components. The first component consists of the phrases ‘origin tea taste’ and ‘ben gong’s tea’ arranged within an annulus encircling a stylised house with three decorative embellishments. This component is positioned above the second component which contains a stylised house atop of four Chinese characters and the phrase ‘ben gong’s tea’ orientated to the right of the device. Conversely, the GC Word Mark is an unembellished trade mark which contains the phrase ‘gong cha’ followed by two Chinese characters. These differences are sufficient to preclude a finding of substantial identity.

1. I now turn to consider whether the respective trade marks are deceptively similar. The term ‘deceptively similar’ is defined in s 10 of the Act:

   Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. The assessment of deceptive similarity was considered by Windeyer J in Shell who observed:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].12

1. The Opponent contends that ‘gong’ is a prominent element of ‘gong cha’ and consumers will be drawn to same given a) ‘cha’ may be translated from Chinese into English as ‘tea’ and b) the goods claimed by each trade mark include tea-based beverages and food products. In this context, the Opponent argues that it is likely consumers will imperfectly recall the GC Word Mark as being ‘gong’ “something” with some Chinese characters’.13 The implication being that ‘ben gong’s tea’ is likely to be perceived by consumers as simply a variation of the GC Word Mark.

1. The Opponent asserts that the presence of ‘ben’ at the commencement of the Trade Mark does not reduce the potential for confusion. This is because ‘ben’ is clearly presented as a separate and distinct element of the Trade Mark. Put another way, the term ‘gong’s tea’ allegedly forms a distinct element of the Trade Mark which serves to ‘qualify or inform the primary element’.14 Consequently, the Opponent concludes that the Trade Mark and the GC Word Mark are deceptively similar.

1. I am not persuaded by the Opponent’s line of argument. The comparison undertaken for the purpose of determining deceptive similarity is between the trade marks in their entirety15 and it is the general effect of the trade marks as wholes that must be compared.16 As such, reducing the Trade Mark to the words ‘ben gong’s tea’ simpliciter is not an appropriate application of the test when consideration is given to the complexity of the Trade Mark as a whole. While the ordinary consumer is not to be credited as highly perceptive, equally they are not to be construed as being exceptionally careless or stupid.17 In my view, the overall impression conveyed by the Trade Mark for a consumer of ordinary intelligence is more than just a three- word phrase.

1. In the present comparison, an overall impression of dissimilarity emerges when the Trade Mark is considered against the GC Word Mark. From a visual perspective, the Trade Mark contains a total of nine words which are arranged into the phrases ‘origin tea taste’ and ‘ben gong’s tea’,

13 Opponent’s Submissions, [67].

14 Ibid.

15 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [92].

16 Clark v Sharp (1898) 15 RPC 141, 146.

17 Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

the latter of which is repeated. In contrast, the GC Word Mark only contains two words and is substantially shorter in length to either phrase present in the Trade Mark. The Trade Mark also has four Chinese characters which appear to the left of the English words in the Trade Mark, whereas the GC Word Mark contains only two Chinese characters positioned to the right of the English words. This creates a further point of difference between the trade marks.

1. The Trade Mark also contains a significant stylised house device element which is duplicated within the Trade Mark. The house device occupies a centralised position, has no descriptive significance in the context of the class 30 goods and its bolded depiction imbues it with a comparable weight to the word elements present in the Trade Mark. In contrast, the GC Word Mark is devoid of any device or image. As such, the trade marks have strong visual dissimilarities.

1. There are also considerable aural differences between the trade marks. While both trade marks contain the word ‘gong’, it is well established that greater emphasis should generally be attributed to the beginning of a trade mark.18 In this instance, irrespective of whether ‘origin’ or ‘ben’ is articulated first when referring to the Trade Mark, each is strikingly different to the word ‘gong’ which is the first element of the GC Word Mark. The additional word(s) that follow the first element within each trade mark serve to further diminish any potential aural similarity arising.

1. I am not convinced that ‘cha’ in the GC Word Mark should be attributed significantly less weight because it is Chinese for ‘tea’ and thus descriptive in relation to tea-based goods. In my opinion, this translation would not immediately come to the mind of the generally monolingual Australian consumer. Pertinently, even if ‘cha’ was understood as meaning ‘tea’, the Applicant’s Goods do not contain any specific claim for tea and it only has one particularised beverage claim

   – namely, ‘malted food drinks’. It follows that the presence of ‘cha’ within the term ‘gong cha’ cannot be wholly discounted when consideration is given to the full extent of goods claimed in Class 30.

1. The trade marks are also conceptually distinct. The term ‘ben gong’s’ retains an identity within the Trade Mark and presents as the full name of a male person. This interpretation is reinforced by the presence of the possessive apostrophe within the Trade Mark. The GC Word Mark conveys no such impression.

2. I have considered the Chinese characters present within each trade mark. In my view, these characters are likely to be unintelligible to a large proportion of consumers given the generally monolingual nature of the Australian population. To the extent that they would be comprehended, the presence of the Chinese characters further differentiates the overall impression conveyed by the trade marks. While the pinyin transliteration of ‘gong’ is the same in each trade mark, importantly, the translation and pronunciation of it is markedly different. The relevant character present in the Trade Mark refers to a ‘palace’ whereas the relevant character appearing in the GC Word Mark refers to an ‘offering’. The former is vocalised in a high level first tone whilst the latter is vocalised in the fourth tone, which is aurally characterised by starting at the top and falling sharp and strong to the bottom. 19

1. At any rate, I do not consider ordinary consumers would fixate upon a solitary character embedded within the respective trade marks as the primary basis for recollection. This is because Australian consumers not versed in the Chinese language will likely be completely reliant on visual cues for the purpose of comparing Chinese characters and some importance would be attributed to the total number of characters present in each trade mark. In this instance, ordinary consumers will readily observe the difference between four Chinese characters and two Chinese characters. Further, a different Chinese character represents the common pinyin transliteration of ‘gong’ in each trade mark which reinforces a different meaning and it is quite unlikely that consumers would draw any visual association between the trade marks. Consequently, the presence of the Chinese characters within each trade mark accentuates their dissimilarity when considered as wholes.

1. For the above reasons, I am satisfied that there is no real and tangible danger of confusion between the GC Word Mark and the Trade Mark. While the trade marks share ‘gong’ as a common word element, I do not consider the overall impressions left by the trade marks to be deceptively similar. There are significant visual, aural and conceptual differences between the trade marks such that, even allowing for imperfect recollection, the trade marks are distinguishable when considered in their entirety. It follows that the GC Device Marks are also not deceptively similar to the Trade Mark.

1. Accordingly, the s 44 ground of opposition has not been established.

Section 60

1. 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.

1. To establish this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before 25 October 2017. The Opponent must then show that because of this reputation use of the Trade Mark would be likely to deceive or cause confusion.

1. 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’.20Her Honour quoted with approval the following statement of Lockhart J in Re 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 ... 21

1. In considering types of evidence that may assist in establishing reputation, Kenny J also observed 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.22

20 [2000] FCA 1335, [81] (‘McCormick’).

21 [1992] FCA 159, [118] (‘ConAgra’).

1. The reputation in the other trade mark must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers23 but this is tempered by the nature of the relevant market. The reputation must also be established as a matter of fact by the Opponent.24

1. The SGP particularises the same trade marks nominated under the s 44 ground of opposition detailed at [26]. The Opponent’s Submissions do not delineate between the two trade marks when discussing the s 60 ground of opposition. Whilst I am mindful that each trade mark should be considered separately for the purpose of considering the operation of s 60 of the Act,25 it is convenient to adopt a similar approach for the present discussion.

1. In the present matter, the relevant market is not specialised. The Opponent characterised the target market of its goods as the ‘fast moving consumable beverage market’26 and the Applicant did not contest this characterisation. The relevant market is large and, as the Applicant mentioned, would conceivably encompass ‘the entire Australian population from early teenage years onwards’.27

1. The information and revenue figures disclosed in Shi 1 indicate the Opponent enjoys a sizeable commercial presence both in Australia and abroad. The latter is derived from the more than 1500 ‘gong cha’ outlets operating around the world and is reinforced by RTT’s portfolio of 38 trade marks incorporating the words ‘gong cha’ in foreign jurisdictions.28

1. As regards to use of the Gong Cha Marks in Australia, Shi 1 explains there are 52 outlets which sell beverages under or by reference to the Gong Cha Marks. Shi 1 also states that between 2017 to 2018 a daily average of 19,726 cups of ‘gong cha’ branded tea-based beverages were consumed in Australia.29 The advertising expenditure disclosed is modest but, in my view, not entirely unexpected given the Gong Cha Marks appear to be predominantly promoted through social media platforms.

23 See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra (n 21).

24 ConAgra (n 21) [77].

25 Qantas Airways Limited v Edwards [2016] FCA 729, [160].

26 Opponent’s Submissions, [36].

27 Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587, [95].

28 See Exhibit LS-1 to Shi 1.

1. The Applicant’s Submissions level several criticisms at the Opponent’s evidence including:

•    Some of the evidence makes either incidental or no reference to the Gong Cha Marks;

•    No evidence was submitted to support how the purported use of the Gong Cha Marks in other jurisdictions has spilled over into Australia before 25 October 2017; and

•    The sales and revenue figures disclosed are inadequately particularised and are expressed as ‘approximate sales’.

On this basis, the Applicant contends that the Gong Cha Marks did not have an acquired reputation in Australia as at the priority date of the Trade Mark.

1. Having assessed the Opponent’s evidence, there is some merit in the deficiencies identified by the Applicant. It is true that parts of the evidence filed by the Opponent are either undated30 or dated after 25 October 2017.31 Evidence that falls into either category is immaterial for present purposes because it would not necessarily reflect how the Gong Cha Marks were used before the priority date of the Trade Mark. Similarly, the Opponent has not fully addressed what, if any, exposure Australian consumers would have had to the Gong Cha Marks overseas or whether the online foreign content has been accessed by users in Australia. As such, little weight can be given to such material for the purpose of establishing a reputation under s 60(a) of the Act.

1. I note the Opponent’s evidence primarily demonstrates use of Australian trade mark registration number 1592767 (‘767 Mark’). As such, any finding of acquired reputation would reside in this particular trade mark and not the Gong Cha Marks.

1. In relation to the sales and revenue figures disclosed, on the face of it there is some ambiguity surrounding their significance. In my view, the Applicant’s criticism of the expression ‘approximate sales’ speaks more to the form of the evidence as opposed to its substance. This is because any sales and revenue remotely within the vicinity of the actual figures disclosed would still be impressive. For confidentiality reasons, I am unable to disclose the sales and revenue

30 See, eg, Exhibit LS-1 to Shi 1, 27.

figures, but it is suffice to say that they are substantial. The sheer volume of revenue is particularly impressive when regard is had to the modest unit cost of the goods.32

1. Likewise, the omission of a sales and revenue breakdown by product category does not automatically render the figures meaningless. The figures are stated as being in respect of the ‘GONG CHA Goods’ which is defined as ‘tea-based beverage products, foods and related products’.33 Shi 1 states that the ‘GONG CHA Goods sold in the GONG CHA outlets are tea-based beverages, served hot or cold’34 and the menu in Exhibit LS-1 to Shi 1 only lists beverages products. Moreover, Shi 2 states that there is only an intention to offer food items at Australian outlets ‘in the near future’35 and the SGP states the ‘Gong Cha marks have been extensively used in Australia in respect of the sale and promotion of quality tea and beverages’.36 It can be reasonably inferred that the sales and revenue figures derive primarily, if not exclusively, from the sale of beverages. As such, their lack of particularisation does not, in this instance, undermine the significance attributable to same.

1. While the duration of use of the 767 Mark before the priority date of the Trade Mark is only 5 years, the figures demonstrate consistent and sizeable increases in the annual revenue generated as well as quantity of goods sold. Such rapid growth within a relatively short timeframe is a compelling indicia of consumer recognition. This, when coupled with the surrounding circumstances such as the total number and geographical spread of Australian outlets which sell beverages under the 767 Mark, consolidates my view that the evidence provides a sufficient basis to conclude that the 767 Mark had at the very least acquired, before 25 October 2017, a limited reputation in Australia for tea-based beverages. To this end, the observations of Kenny J in McCormick are apposite:

   It is true, as Mary McCormick's counsel points out, that the evidence does not establish what proportion of sales was made under or by reference to any particular mark. It is also true, as he points out, that, apart from the evidence as to sales and advertising expenditure, there is little or no evidence about the effect of advertising upon consumers. There were no consumer surveys in evidence, nor was there evidence about the marketing of McCormick & Co's products. There was also no evidence to connect

32 See, eg, Exhibit LS-1 to Shi 1, 33.

33 Shi 1, [10].

34 Shi 1, [21] (emphasis added).

35 Shi 2, [3].

whatever international reputation McCormick & Co might have with the reputation of the McCormick & Co marks in Australia.

I accept that those were important omissions and, in another case, might have proved fatal. Still, none of the factors pointed to by counsel for Mary McCormick are essential requirements for a finding of reputation under s 60. The sales and advertising of the order of magnitude involved in this case are, in my view, a sufficient basis for establishing reputation …37

1. I now turn to consider whether because of the Opponent’s reputation in the 767 Mark, use of the Trade Mark in respect of the Applicant’s Goods would be likely to deceive or cause confusion.

1. The Opponent is not required to establish that the trade marks are deceptively similar for the purposes of s 60 of the Act. However, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark’.38 This is because ‘[c]onfusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks’.39

1. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the Registrar’s delegate observed:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.40

1. In the present matter, I am not satisfied that confusion or deception will arise between the 767 Mark and the Trade Mark based on the limited reputation of the 767 Mark. For the reasons already canvassed in relation to s 44, the respective trade marks have a very low degree of

37 McCormick (n 20) [87]–[88] (emphasis added).

38 Qantas Airways Limited v Edwards [2016] FCA 729, [142].

39 Rogers Seller & Myhill v Reece Pty Ltd [2010] ATMO 5, [39].

similarity since the only commonality is the word element ‘gong’. Given the very low degree of similarity of the trade marks and the limited reputation enjoyed by the 767 Mark, I am satisfied that use of the Trade Mark would not be likely to deceive or cause confusion in the marketplace even if such use was in relation to identical goods. Further, and although by no means determinative, I note that no evidence of actual confusion or wonderment has been tendered by the Opponent.

1. Accordingly, the s 60 ground of opposition has not been established.

Section 42

1. Section 42 of the Act relevantly provides:

Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

…

(b) its use would be contrary to law.

1. To succeed under this ground of opposition, the Opponent must establish that use of the Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.41 The relevant time for assessing whether the application is contrary to law is at the priority date, namely 25 October 2017. However, ‘prospective conduct after registration’ may be considered.42

1. This ground of opposition was particularised in the SGP as follows:

The Opponent and the Owner have used the Gong Cha marks since 2012 in Australia, and by reason of that use and associated global and local marketing and social media presence, have acquired a substantial reputation in those trademarks in Australia. By virtue of the reputation of the Gong Cha marks within Australia, the use of the Opposed Trade Mark would be likely to mislead or deceive in breach of sections 18 and/or 29 of the Australian Consumer Law and could also constitute passing off at common law.

1. Accordingly, the SGP identifies ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010 and the tort of passing off as the basis for this ground of opposition. Section 18 of the ACL pertains to conduct or representations that have, or

41 Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).

are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading.

1. As stated above, the Opponent has failed to establish the ground of opposition under s 60 of the Act. The test for ‘misleading or deceptive conduct’ under s 18 of the ACL is recognised as being a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.43 It follows that I am satisfied that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.

1. In Monster Energy v USA Nutraceuticals Inc the Registrar’s delegate observed:

Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’. Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL …44

Accordingly, I am satisfied that the Opponent has also failed to establish that use of the Trade Mark would contravene s 29 of the ACL.

1. Given my finding in relation to ss 18 and 29 of the ACL, the observations of Hill J addressing the relationship between s 52 of the superseded Trade Practices Act 1974 (Cth) and passing off in Re Equity Access Pty Ltd v Westpac Banking Corporation are also relevant:

   The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.45

1. Therefore, I am not satisfied that use of the Trade Mark would amount to passing off at common law given I do not consider s 18 of the ACL would be contravened.

1. Consequently, I am not satisfied that use of the Trade Mark would be contrary to law and therefore the s 42(b) ground of opposition has not been established.

43 See, e.g, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).

44 [2017] ATMO 22, [58] (citations omitted).

Decision

1. 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.

1. The Opponent has not established a ground of opposition. It follows that trade mark application number 1882415 may proceed to registration one month from the date of this decision.

1. If the Registrar has been 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

1. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent as per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Nicholas Barbey Hearing Officer

Oppositions and Hearings Trade Marks and Designs 30 October 2019

Annexure 1

Class 30: Aromatic preparations for food; Aromatic preparations for the food production industry; Auxiliaries (other than essential oils) for the improvement of the flavour of food; Dressings for food; Dried pasta foods; Essences for food (other than essential oils); Essences for foodstuffs (except etheric essences and essential oils); Essences for use in food preparation (other than essential oils); Extracts of cocoa for use as flavours in foodstuffs; Extracts of coffee for use as flavours in foodstuffs; Extruded food products made of wheat; Extruded savoury snack foods made from wheat; Flavour enhancers for food (other than essential oils); Flavourings for snack foods (other than essential oils); Flour concentrate for food; Food dressings (sauces); Food essences (except etheric essences and essential oils); Food flavourings, other than essential oils; Food mixes for making bakery products; Food pastes (seasonings); Food pastes (spices); Food preparations for making puddings; Food products consisting of cereals; Food products for making nachos; Food products having a pastry base; Food products made from potato flour; Food products predominantly made of cereals; Food products predominantly made of flour; Foods produced from baked cereals; Foods produced from puffed cereals; Foods with a chocolate base; Foods with a cocoa base; Foodstuffs made from cereals; Foodstuffs made from corn; Foodstuffs made from dough; Foodstuffs made from farinaceous products; Foodstuffs made from maize; Foodstuffs made from oats; Foodstuffs made of rice; Foodstuffs made of sugar for making a dessert; Foodstuffs made of sugar for sweetening desserts; Foodstuffs made with cereals; Foodstuffs made with flour; Fructose syrup for use in the manufacture of foods; Glazes for food; Glazing for food products; Glazing products for application to food; Gluten prepared as foodstuff; Groats for human food; Malt extract for food; Malted food drinks; Mineral salts for preserving foodstuffs; Mixes for making breakfast foods; Molasses for food; Oat-based food; Organic thickening agents for cooking foodstuffs; Pickling preparations for foodstuffs; Pickling salt for pickling foodstuffs; Polysaccharides for use as food for culinary purposes; Potato flour based snack food products; Potato flour for food; Preparations for preserving foodstuffs (salt);  Preparations for use as rising agents in food; Preservatives for food (salt); Processed grains for use in food; Products for use in food preservation (salt); Salt for flavouring food; Salt for preserving foodstuffs; Salt pellets for preserving foodstuffs; Sea salt for preserving foodstuffs; Snack food products consisting of cereal products; Snack food products made from cereal flour; Snack food products made from cereals; Snack food products made from maize flour; Snack food products made from potato flour; Snack food products made from rice; Snack food products made from rice flour; Snack food products made from soya flour; Snack foods consisting principally of bread; Snack foods consisting principally of confectionery; Snack foods consisting principally of extruded cereals; Snack

foods consisting principally of grain; Snack foods consisting principally of pasta; Snack foods consisting principally of rice; Snack foods made from cereals; Snack foods made from corn; Snack foods made of wheat; Snack foods made of whole wheat; Snack foods prepared from cereals; Snack foods prepared from grains; Snack foods prepared from maize; Snack foods prepared from potato flour; Sodium chloride for preserving foodstuffs; Starch for food; Synthetic thickeners for foodstuffs; Tapioca flour for food; Thickeners for cooking foodstuffs; Thickening agents for cooking foodstuffs; Turmeric for food; Wafers (food)

Annexure 2

Class 16: Bags (envelopes, pouches) of paper or plastics, for packaging; calendars; catalogues; coasters of paper; manuals (handbooks); paper coffee filters; towels of paper; labels, not of textile; graphic prints; printed publications; boxes of cardboard or paper; stationery; stickers (stationery); plastic films for wrapping; wrapping paper; writing instruments; bottle wrappers of cardboard or paper

Class 21: Insulated cups; mugs; cups of paper or plastic; coffee brewers (non-electric); coffeepots, non-electric; coffee services (tableware); tableware, other than knives, forks and spoons; tea mug; tea infusers; shakers; crisper; porcelain ornaments; decorative crystal glasses (not for building); earthenware ornaments; piggy banks; insulated food warmer bags; glass jars (carboys); straws for drinking

Class 30: Tea leaves; tea bags; scented tea; tea-based beverages; cocoa-based beverages; coffee- based beverages; chocolate-based beverages; honey; ice; ice cream; sugar; fructose; bread; cookies; cakes; candies

Class 43: Cafes; canteens; cafeterias; restaurants; tea room services; bar services; preparation of take-away and fast food; providing food and drink; takeaway food and drink services