Opposition by Jianda Xu to registration of trade mark application number 1998614 (class 11) – DIVEPRO – in the name of Jaunt Group Limited

[2022] ATMO 25

TRADE MARKS ACT 1995

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

Re:Opposition by Jianda Xu to registration of trade mark application number 1998614 (class 11) – DIVEPRO – in the name of Jaunt Group Limited

Delegate:	Katrina Brown
Representation:	Opponent: Cooper IP Pty Ltd Applicant: Bonamark Limited
Decision:	2022 ATMO 25 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 44, 58A and 60 - s 44 partially established – no other grounds established - applicant given opportunity to amend goods – goods amended – trade mark to proceed to registration

Background

1. This is a decision on the opposition to registration of the word mark appearing below:

   (‘Trade Mark’).

2. On 26 March 2019 Jaunt Group Limited (‘Applicant’) filed an application for registration of the Trade Mark. Since the application was filed, the specification has been amended several times at the Applicant’s request. The present statement of goods reads as follows:

   Class 11: Bicycle lights; Electric flashlights; Electric torches; Lamps; LED lighting apparatus; Lanterns for lighting; Electric lighting apparatus; Safety lamps; Searchlights; Spot lights; Ultraviolet ray lamps, not for medical purposes; Automobile lights; Lighting installations for air vehicles; Light diffusers; but not including diving lights or lights, lamps, torches, light apparatus, lanterns or lighting for use in water (‘Applicant’s Goods’)

3. As required by the Trade Marks Act 1995 (Cth)[1] the Trade Mark was examined, accepted for possible registration and then advertised for opposition purposes. Jianda Xu (‘Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark on 31 October 2019 and a Statement of Grounds and Particulars (‘SGP’) on 1 November 2019. The SGP was assessed as being inadequate. The Opponent addressed the inadequacy and the SGP was subsequently rectified.   

   [1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth).

4. The Applicant filed the Notice of Intention to Defend the Trade Mark from Opposition on 18 March 2020.  The parties then filed evidence in accordance with the timetable set out in the Trade Mark Regulations 1995 (Cth)[2] (with an extension of time granted to the Opponent to file their evidence in reply) concluding with the Opponent’s evidence in reply on 10 March 2021.

   [2] Each reference to a regulation in these reasons is a reference to a regulation of the Trade Marks Regulations 1995 (Cth).

5. The Opponent requested a hearing by way of written submissions and filed their written submissions on 3 November 2021. The Applicant did not file written submissions.

6. As a delegate of the Registrar of Trade Marks I have determined this matter with reference to the written material filed during these proceedings as outlined above.    

   Grounds of opposition, onus and relevant date

7. The nominated grounds of opposition are s 44, s 58A and s 60. The Opponent carries the burden of establishing one or more grounds of opposition[3] on the balance of probabilities.[4] The rights of the parties are assessed as at 26 March 2019 (‘Relevant Date’), being both the filing and priority date of the trade mark application.[5]

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

   [4] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J).

   [5] Southern Cross Refrigeration v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   Evidence

8. The following evidence was filed under reg 5.14:

   Evidence in support   

   Declaration of Jianda Xu, Director of CNHUSKY PTY LTD dated 23 June 2020 with Annexures A1 to A6 (‘Xu 1’).

   Evidence in answer
   Declaration of Erick Lin, Attorney for the Applicant dated 21 September 2020 with Exhibits A1 to A3 (‘Lin Declaration’).

   Evidence in reply
   Statutory Declaration of Jianda Xu dated 4 March 2021 with annexures JX1 to JX6 (‘Xu 2’).

   The Opponent’s evidence in support

9. Xu 1 states that Jianda Xu is the Director of CNHUSKY PYT LTD, the owner of Australian trade mark number 1798449, the stylised trade mark appearing below:

   (‘Opponent’s Trade Mark’)

10. The Opponent’s Trade Mark has a priority date of 27 September 2016 and is registered for the following goods (‘Opponent’s Goods’):  

    Class 9:  Breathing apparatus for diving; Diving apparatus; Diving boots; Diving equipment; Diving fins; Diving gloves; Diving goggles; Diving instruments; Diving snorkels; Diving suits; Diving weights; Masks for diving; Protective clothing for diving; Regulators for use in diving; Wet diving suits; Wet suits for diving; Underwater dive computers; Wet suits for divers; Divers' weight belts; Buoys for marine use; Signalling buoys; Masks for snorkelling; Snorkels; Swimming snorkels 

    Class 25:  Wet suits for water-skiing; Wet suits for windsurfing; Clothing; Clothing for swimming; Wetsuits for surface watersports; Wetsuits for surfing; Apparel (clothing, footwear, headgear); Headgear for wear; Waterproof boots; Waterproof Clothing; Waterproof headgear; Footwear; Socks

11. Xu 1 states that the Opponent’s Trade Mark was first used on diving gloves in January 2016 expanding to diving lights one year later.

12. Use of the Opponent’s Trade Mark, according to Xu 1 has been continuous in Australia and it is currently used in relation to ‘diving equipment like diving wetsuits, diving lights/torches, diving masks, diving snorkels, diving gloves, diving socks, diving fins, diving weights, diving belts and some other accessories for diving’.

13. Xu 1 sets out examples of sales of goods bearing the Opponent’s Trade Mark in Australia since 2016, use of the Opponent’s Trade Mark on the Opponent’s website and social media accounts and examples of use in sponsorships.

    The Applicant’s evidence in answer

14. The Lin Declaration states that the Applicant registered the domain name DIVEPRO.COM in 2001 and since 2016 uses the website for selling DIVEPRO products internationally.

15. The Lin Declaration claims that ‘products of the Applicant’ are available in 32 countries and refers to Exhibit 2 as proof of this claim. Exhibit 2 of the Lin Declaration does no more than list various trade fairs in several countries and three upcoming trade fairs. 

16. The Lin Declaration also claims use of the Trade Mark since September 2016 and refers to Exhibit 3 as evidence of such use. Exhibit 3 shows screenshots of a total of 8 orders of various goods from 8 September 2016 to 6 April 2018.  Each of the orders makes reference to the Trade Mark.

17. The photos of exhibition booths annexed to the Lin Declaration show use of the Trade Mark in relation to goods for diving with the tag line under the Trade Mark being ‘to dive, to be a DivePro’.

    The Opponent’s evidence in reply

18. Xu 2 challenges the creation date claimed in the Lin Declaration of the domain DIVEPRO.COM.

19. Xu 2 also challenges the accuracy of the sales and shipment information provided in the Lin Declaration suggesting that in fact, the information provided in the Lin Declaration is information that is ‘vulnerable to manipulation and/or fabrication’.

    Section 44

20. Relevant provisions of the Act with respect to s 44 provide:

    44 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.

    Note 1:     For deceptively similar see section 10.

    Note 2:     For similar goods see subsection 14(1).

    Note 3:     For priority date see section 12.

    Note 4:     The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

21. The expression ‘deceptively similar’ is defined within s 10 which provides:

    10 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.  

22. To successfully oppose the Trade Mark pursuant to s 44 the Opponent must establish the four requirements of s 44(1), namely that the Opponent’s Trade Mark:

    1.is in the name of a person other than the Applicant; and

    2.has a priority date which is earlier than the Relevant Date; and

    3.is registered in respect of goods which are similar to the Applicant’s Goods; and

    4.is substantially identical with or deceptively similar to the Trade Mark.

    Requirement 1- Person other than Applicant

23. The Opponent’s Trade Mark is registered by a person other than the Applicant.  Requirement 1 has been satisfied.

    Requirement 2 - Earlier priority date

24. The Opponent’s Trade Mark has a priority date which is earlier than the Relevant Date.   Requirement 2 has been satisfied.

    Requirement 3 - Similar goods 

25. Section 44 requires the assumption that both trade marks (the Applicant’s Trade Mark and the Opponent’s Trade Mark) will be used in a ‘normal and fair manner’[6] for all the goods of the application or registration in question. It is not a question of considering the actual modes of use but to instead ‘suppose that both parties use or intend to use their trade marks to the limits of their specifications’.[7]

    [6] Re Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97 101 (Evershed J).

    [7] Société Jas Hennessy & Co v Paradise Estate Wines Pty Ltd [2006] ATMO 40 [14] (Delegate Thompson).

26. The Applicant’s Goods cover various forms of lighting apparatus with the following exclusion: but not including diving lights or lights, lamps, torches, light apparatus, lanterns or lighting for use in water.

27. Following the principles set out above the comparison is between lighting excluding lighting for diving or for use in water on the one hand and the diving goods in class 9 and clothing goods in class 25 of the Opponent’s Trade Mark.   

28. Although I note that the Opponent in their evidence in support adduced evidence of use of the Opponent’s Trade Mark in respect of lighting apparatus such as diving torches, the analysis under s 44 as discussed above is between the statutory rights of the trade marks that are being compared and not the actual use. However, the broad term ‘diving equipment’ as found in the Opponent’s Trade Mark registration would include lighting apparatus such as torches for use when diving.    

29. Therefore, my first consideration is whether ‘diving equipment’ (a term broad enough to encompass a diver’s torch, diver’s flashlight, or a spotlight or ultraviolet ray lamp used while diving) is similar to a torch, flashlight or spotlight that can notionally be used for any purpose other than diving or used in water, or in the case of ultraviolet ray lamps, used for any purpose other than medical, diving or used in the water?    

30. The Opponent in their submissions referred me to the test for similar goods set out in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[8] which can be summarised as the nature of the goods, the uses to which they are put and the trade channels through which they are bought and sold. It is not essential that all three criteria be fulfilled.[9]

    [8] (1953) 91 CLR 592, 606 (Kitto J).

    [9] Ibid.

31. The nature of an ultraviolet ray lamp, torch, flashlight or spotlight used for a purpose other than diving or in water is the same as the nature of a torch, flashlight or spotlight used for diving or in water; all are light sources.  The uses to which an ultraviolet ray lamp, torch, flashlight or spotlight used for a purpose other than diving or in water would be the same as the uses to which a torch, flashlight or spotlight used for diving or in water; they are used to illuminate or light the way. Ultraviolet ray lamps, torches, flashlights or spotlights would be bought and sold through the same trade channels whether they were for the purpose of diving or for use in water or for a purpose other than diving or for use in water.

32. However, I do not consider the remaining Applicant’s Goods, namely, bicycle lights, automobile lights and lighting installations for air vehicles, to be similar to ‘diving equipment’. None of these goods would be characterised as diving equipment. These specific lighting goods would not be sold via the same trade channels as diving equipment and would not be purchased by the same class of customers as those in need of diving equipment.  

33. The Opponent’s Trade Mark is registered in respect of at least some goods which are similar to the following of the Applicant’s Goods: electric flashlights; electric torches; lamps; LED lighting apparatus; lanterns for lighting; electric lighting apparatus; safety lamps; searchlights; spot lights; ultraviolet ray lamps, not for medical purposes; light diffusers; but not including diving lights or lights, lamps, torches, light apparatus, lanterns or lighting for use in water. Requirement 3 has been satisfied in respect of those goods.

    Requirement 4 – Similarity of trade marks

34. When considering substantial identity, in Shell Co of Australia Ltd vs Esso Standard Oil (Australia) Ltd Windeyer J said:

    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.[10]

    [10] [1963] HCA 66, [12] (Windeyer J).

35. The two trade marks are depicted below for a side by side comparison as required by that test.

    Opponent’s Trade Mark  Trade Mark

36. On a side by side comparison the trade marks are substantially identical.  Although the Opponent’s Trade Mark is stylised with ‘painting-like strokes’ this stylised font is not sufficient to conclude that the marks are not substantially identical to each other. The trade marks, share the same (and only) essential feature being the word DIVEPRO.  The total impression is one of similarity. The Opponent’s Trade Mark is substantially identical with the Trade Mark.  Requirement 4 has been satisfied.

37. All four requirements of s 44(1) have been made out in respect of the subset of the Applicant’s Goods set out at [33] of this decision.

    Prior use, honest concurrent use or other circumstances

38. Section 44 is subject to s 44(3) and (4) which make provision for the Applicant to overcome a s 44 ground of opposition on the basis of prior continuous use, honest concurrent use or other circumstances which would allow for registration, notwithstanding a finding under s 44(1).   

39. Turning to the Applicant’s evidence, the Applicant has provided very little in the way of evidence of use of the Trade Mark. Exhibit A3 of the Lin Declaration shows screenshots of a total of 8 orders. The date range of orders is September 2016 to April 2018.

40. In considering whether the evidence of use provided is sufficient to demonstrate honest concurrent use of the Trade Mark the main factors to consider include the extent of the use in duration, area and volume.[11] In this instance, evidence of just 8 orders is not a sufficient number to demonstrate duration, area and volume of sales to overcome a finding under s 44(1).  Only 3 of the orders show clearly the region in Australia into which the goods will be delivered.  The total value of sale of the goods across the 8 orders is relatively low and the period of sale of the goods spans only 19 months.  The Lin Declaration is also silent on why the Applicant adopted the Trade Mark and the honesty of the adoption.  

    [11] John Fitton & Co Ltd.’s Application (1949) 66 RPC 110, 113 (Assistant-Comptroller Chisholm).

41. For prior continuous use, I must consider if the evidence provided demonstrates use of the Trade Mark that is earlier than the priority date of the Opponent’s Trade Mark, namely 27 September 2016 and that the use has been continuous ending on the Relevant Date, namely 26 March 2019.

42. Of the 8 orders provided in the Lin Declaration, one is dated before the priority date of the Opponent’s Trade Mark.  This order is dated 8 September 2016.  However, the final order provided in the Lin Declaration is dated 6 April 2018 which is approximately a year before the Relevant Date. As such, I am not satisfied that the evidence is sufficient to establish prior continuous use of the Trade Mark.

43. In considering whether the evidence provided by the Applicant is sufficient to overcome the finding under s 44 because of other circumstances, my attention has not been drawn to any other circumstances that would make it proper for me to accept the application.        

44. The Applicant has not overcome the ground of opposition under s 44.

45. The s 44 ground of opposition has only been made out in respect of electric flashlights; Electric torches; Lamps; LED lighting apparatus; Lanterns for lighting; Electric lighting apparatus; Safety lamps; Searchlights; Spot lights; Light diffusers; but not including diving lights or lights, lamps, torches, light apparatus, lanterns or lighting for use in water.

46. I will now consider whether any of the remaining grounds claimed in the SGP have been established in respect of the remaining goods claimed by the Applicant, namely, bicycle lights, automobile lights and lighting installations for air vehicles; but not including diving lights or lights, lamps, torches, light apparatus, lanterns or lighting for use in water (‘Remaining Goods’).

    Section 58A

47. To establish the ground of opposition under s 58A, the Trade Mark must have been accepted for registration under s 44(4).  The Opponent must first have established prima facie grounds of opposition under s 44 in respect of the Remaining Goods to which the Applicant has responded by providing evidence of prior and continuous use of the Trade Mark pursuant to s 44(4).   

48. The Opponent has not established prima facie grounds of opposition under s 44 in relation to the Remaining Goods.  As such, the ground under s 58A is not made out.

    Section 60

49. To establish grounds of opposition under s 60, the Opponent must establish a reputation in a trade mark in Australia at the Relevant Date and that because of that reputation, use of the Trade Mark is likely to deceive or cause confusion. 

50. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[12] In this matter, the evidence in support provided by the Opponent is insufficient to establish reputation.  Insufficient information was provided from which to judge reputation such as figures in relation to revenue generated under the Trade Mark, no related promotional expenditure was provided in evidence, no indication of the number of visitors to the social media sites and no indication of the number of visitors who have attended the events sponsored by the Opponent.       

    [12] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77] (Lockhart J).

51. The Opponent has not established the ground of opposition under s 60.

    Decision

52. Section 55(1) 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.

1. The Opponent has established the ground of opposition under s 44 for electric flashlights; Electric torches; Lamps; LED lighting apparatus; Lanterns for lighting; Electric lighting apparatus; Safety lamps; Searchlights; Spot lights; Ultraviolet ray lamps, not for medical purposes; Light diffusers; but not including diving lights or lights, lamps, torches, light apparatus, lanterns or lighting for use in water. 

2. The Opponent has not established a ground of opposition for the Remaining Goods.

3. On 10 February 2022 I informed the Applicant that it was my intention to refuse to register the Trade Mark unless the specification was amended so as to remove the goods or which the s 44 ground has been established.

4. On 14 February 2022 the Applicant agreed to the amendment and the specification in class 11 has been amended to:

   Class 11: Bicycle lights; automobile lights; lighting installations for air vehicles; but not including diving lights or lights, lamps, torches, light apparatus, lanterns or lighting for use in water. 

5. The Trade Mark can now proceed to registration.

   Costs

6. Both parties sought an award of costs. As both parties have had a measure of success, I decline to award costs in this matter.

   Katrina Brown
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   16 February 2022