Opposition by Home Box Office Inc to registration of trade mark application number 1974349 (classes 29, 32, 33, 35, 41, 43) – LANNISTER with device - in the name of Hongyi Wu and Xia Yang

[2021] ATMO 119

TRADE MARKS ACT 1995

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

Re:Opposition by Home Box Office Inc to registration of trade mark application number 1974349 (classes 29, 32, 33, 35, 41, 43) – LANNISTER with device - in the name of Hongyi Wu and Xia Yang

Delegate:

Katrina Brown

Representation:

Opponent: Kerry Chrysiliou of Chrysiliou IP

Applicants: Paul Wyk of A.P.T. Patent and Trade Mark Attorneys

Decision:

2021 ATMO 119

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 58 considered – joint applicants not the owner of the trade mark – opposition successful – registration refused.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Home Box Office Inc (‘Opponent’) to registration of the following trade mark:

Trade Mark No:                1974349

Trade Mark:  

(‘Trade Mark’)

Applicant:  Hongyi Wu and Xia Yang (‘Applicants’) 

Filing Date:  7 December 2018

Specification:                   Class 29: Meat

Class 32: Alcohol-free wine

Class 33: Dry sparkling wines; wines

Class 35: Cellar door sales of wine

Class 41: Wine tasting services (education); wine tasting services (entertainment)

Class 43: Wine tasting services (provision of beverages)

(‘Applicants’ Goods and Services’)

1. The trade mark application was examined as required by s 31 of the Act and its acceptance for possible registration was advertised in the Official Journal of Trade Marks on 14 May 2019.

2. The Opponent filed a Notice of Intention to Oppose on 12 July 2019, followed by a Statement of Grounds and Particulars (‘SGP’) on 12 August 2019 which was amended on 29 June 2020 to include an additional ground of opposition.

3. The Applicants filed a Notice of Intention to Defend on 16 October 2019.

4. The Opponent filed the following declarations as evidence in this matter:

• Declaration of Ryan Mellon (Senior Counsel of the Opponent) made on 15 January 2020 with Exhibits RM-1 to RM-13;

• Declaration of Kerry Chrysiliou (Chrysiliou IP) made on 16 January 2020 with Exhibits KC-1 to KC-33;

• Declaration of Ryan Mellon made on 17 June 2020 with Exhibits RM-14 to RM-16; and

• Declaration of Reynier Van Der Westhuizen (Chrysiliou IP) made on 17 June 2020 with Exhibits RW-1 to RW-8.

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

• Declaration of Hongyi Wu (Applicant) made on 20 April 2020 with Annexures HYW-1 to HYW-37 (‘Wu 1’); and

• Declaration of Hongyi Wu (Applicant) made on 29 July 2020 with Annexures HYW-38 to HYW-42 (‘Wu 2’).

1. Once the time allowed for filing evidence ended a hearing was requested. The matter was heard on 19 February 2021 by me, a delegate of the Registrar of Trade Marks. The Applicants were represented by Paul Wyk of A.P.T. Patent and Trade Mark Attorneys. The Opponent was represented by Kerry Chrysiliou of Chrysiliou IP.

Grounds of opposition and onus

1. In the SGP, the Opponent nominated grounds of opposition under ss 42(b), 43, 44, 58, 60 and 62A of the Act.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] In the event that the Opponent establishes one of the grounds in relation to all the Applicants’ Goods and Services, there is no requirement for me to consider the other grounds of opposition.

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

3. The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133] (Besanko, Jagot and Edelman JJ).

Section 58

1. Section 58 of the Act provides:

   Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

2. It is well established that ownership of a trade mark is established either by authorship and prior use, or by the combination of authorship, the filing of the application and an intention to use or authorise use.[3] Authorship refers to an applicant’s adoption of a trade mark with the intention of using it in Australia.[4]

   [3] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 [29] (Greenwood, Jagot and Beach JJ) (‘Pham’).

   [4] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6 [48] (Nicholas, Yates and Beach JJ).

3. The requirement of ownership must be satisfied at the time the trade mark application was filed.[5] A flaw in the ownership cannot be cured at a later date.[6] Hongyi Wu and Xia Yang applied to register the Trade Mark on 7 December 2018 (‘Relevant Date’). By doing so, they claimed to be joint owners of the Trade Mark.[7]

   [5] Pham (n 3) [14].

   [6] Ibid [44].

   [7] Section 28 of the Act.

4. The Opponent asserts that Lannister Group Pty Ltd was the owner of the Trade Mark at the Relevant Date. Contrastingly, the Applicants submit that they have always been the owners of the Trade Mark and that Lannister Group Pty Ltd is an authorised user of the Trade Mark.

5. At this point, it is convenient to summarise the relevant evidence:

   ·     Hongyi Wu and Xia Yang are spouses.

   ·     Lannister Group Pty Ltd is an Australian private company registered on 5 December 2012. In Wu 2 it is declared that Hongyi Wu has always been the only company officer and is currently the sole shareholder of Lannister Group Pty Ltd. Xia Yang has never been a company officer or shareholder. Hongyi Wu declares that he is ‘the person that manages the business affairs of Lannister Group Pty Ltd, being the sole officer and managing director of the business’.

   ·     Hongyi Wu declares that he sourced a graphic artist through Hutu.com (a Chinese language web portal) to develop the Trade Mark. Annexures HYW-38 to HYW-44 to Wu 2 are English translations of contracts between Hongyi Wu and the authors of various labels consisting of, or containing, the Trade Mark. The earliest contract is dated 30 December 2012. Each contract transfers the copyright of the label from the author to Hongyi Wu.

   ·     Several Annexures to Wu 1 show the Trade Mark being used on invoices, advertising and on the website Each example demonstrates use by Lannister Group Pty Ltd. There are no documented examples of the Trade Mark being used by the Applicants.

6. In my opinion, the evidence demonstrates that authorship of the Trade Mark lies with Hongyi Wu, either in his own right, or potentially acting for and on behalf of Lannister Group Pty Ltd. By his own evidence he sourced the graphic artist to develop the Trade Mark, the copyright in the design was transferred from the graphic artist to him, and the Trade Mark is used by a company of which he is the sole officer and shareholder.

7. In the face of this evidence, Xia Yang’s involvement in the authorship of the Trade Mark is left wholly unexplained. The Applicants’ submissions follow suit, instead focusing on whether Xia Yang had the requisite control, jointly with her husband, over the use of the Trade Mark by Lannister Group Pty Ltd. This approach conveniently overlooks authorship, a requirement of both alternative sources of ownership set out at [12] of this decision.

8. Furthermore, any suggestion that Xia Yang’s role in the authorship, or ownership, of the Trade Mark is implicit due to the ‘unity of purpose’ of spouses does not assist the Applicants. In this respect, I refer to the following observation in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd:

   Nexus or “unity of purpose” is not an answer to identification of the owner of a mark at the time an application for registration is made and does not answer a ground of opposition under s 58 of the TM Act.[8]

   [8] [2020] FCA 1078 [334] (Markovic J).

9. I am satisfied that the evidence demonstrates that Hongyi Wu or Lannister Group Pty Ltd (in the event that Hongyi Wu was acting for and on behalf of the company) was the owner of the Trade Mark at the Relevant Date by virtue of authorship, and prior use or an intention to use, the Trade Mark in respect of the Applicants’ Goods and Services. All of which leads to the conclusion that the application to register the Trade Mark should not have included Xia Yang, as she was not the owner of the Trade Mark.

10. The s 58 ground of opposition has been established.

Decision

1. Section 55 of the Act relevantly provides:

   (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.

2. The Opponent has established the ground of opposition under s 58 of the Act. Accordingly, I refuse to register trade mark number 1974349.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicants according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Katrina Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

11 October 2021