Opposition by Stone Paper Global Technologies Ltd to registration of trade mark application number 2022778 (class 16) – Karst Stone Paper – in the name of Karst Group Pty Ltd and Kevin Garcia

[2022] ATMO 46

TRADE MARKS ACT 1995

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

Re:Opposition by Stone Paper Global Technologies Ltd to registration of trade mark application number 2022778 (class 16) – Karst Stone Paper – in the name of Karst Group Pty Ltd and Kevin Garcia

Delegate:	Katrina Brown
Representation:	Opponent: Michael Buck IP Applicants: Self-represented
Decision:	2022 ATMO 46 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 42(b), 58, 59, 60 and 62A – no grounds established – trade mark to proceed to registration.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Stone Paper Global Technologies Ltd (‘Opponent’) to registration of the following trade mark:

   Trade Mark No:         2022778

   Trade Mark:               Karst Stone Paper (‘Trade Mark’)

   Applicants:                 Karst Group Pty Ltd and Kevin Garcia (‘Applicants’)

   Filing Date:                19 July 2019

   Specification:             Class 16: Cards (stationery); Cards being computer stationery (other than encoded or magnetic); Cases for holding documents (stationery); Cases for stationery; Cases for storing documents (stationery); Chalk being articles of stationery; Charcoal pencils being articles of stationery; Computer stationery; Copying paper (stationery); Dispensers for adhesive for stationery use; Document boxes (stationery); Document cases (stationery); Document cases for files (stationery); Document containers (stationery); Document files (stationery); Document folders (stationery); Document holders (stationery); Document holders being articles of stationery; Document pockets (stationery); Document pouches (stationery); Document wallets (stationery); Envelopes (stationery); Erasers (stationery); Executive planners (stationery); Gift stationery; Index cards (stationery); Lining papers for stationery use; Loose-leaf stationery; Marking pens (stationery); Metal drawing pins (stationery); Notelets being stationery for social purposes; Office organisers (stationery); Office stationery; Office supplies (stationery); Organisers (stationery); Organizers (stationery); Pad holders (stationery); Pads (stationery); Paper adhesive tape for stationery purposes; Paper articles of stationery; Paper boards (stationery); Paper files (stationery); Paper folders (stationery); Paper grips (stationery); Paper holders (stationery); Paper punches being articles of stationery; Paper sheets (stationery); Paper slips (stationery); Paper stationery; Patterned stationery; Personal files (stationery); Personal organiser files (stationery); Pocket books (stationery); Pouches (stationery); Presentation portfolios (stationery cases); Printed stationery; School supplies (stationery); Signs (stationery); Spiral bound blocks of paper (stationery); Spiral bound pads of paper (stationery); Spiral pads (stationery); Staples (stationery); Staples for stationery purposes; Stationery; Stationery adapted to be heat sealed; Stationery cabinets (other than furniture); Stationery cases; Stationery for children's educational activities; Stationery for children's playing activities; Stationery for computers; Stationery for domestic purposes; Stationery for household purposes; Stationery for use in the educational field; Stationery for use with computers; Stationery for use with data processing apparatus; Stationery goods; Stationery holders for desks; Stationery in the form of cards; Stationery in the nature of files; Stationery materials; Stationery paper; Stationery racks; Stationery relating to holidays; Stationery trays; Trays for stationery use; Trays for use on desks to contain stationery; Wallets (stationery) for containing flat objects; Wallets (stationery) for filing flat objects; Wallets (stationery) for protecting flat objects; Wallets (stationery) made of card; Wallets (stationery) made of paper; Wallets of card for carrying documents (stationery); Wallets of card for carrying papers (stationery); Wallets of card for holding documents (stationery); Wallets of card for holding papers (stationery); Wallets of paper for carrying documents (stationery); Wallets of paper for carrying papers (stationery); Wallets of paper for holding documents (stationery); Wallets of paper for holding papers (stationery); Writing cases (stationery) (‘Applicants’ Goods’)

2. The trade mark application was examined as required by s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 20 December 2019.

3. The Opponent filed a Notice of Intention to Oppose on 19 February 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 19 March 2020.

4. The Applicants filed a Notice of Intention to Defend on 29 June 2020.

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

   ·Declaration of Sam Farhangi (CEO of Opponent) made on 9 January 2021 with Exhibits SF-1 to SF-6 (‘Farhangi 1’); and

   ·Declaration of Sam Farhangi made on 14 May 2021 with Exhibits SF-1 to SF-4.

6. The Applicants filed the following declaration as evidence in this matter:

   ·Declaration of Jonathon Tse (Director of Karst Group Pty Ltd) made on 5 March 2021 with Exhibits JT-1 to JT-5.

7. Each of the declarations filed in this matter contain clauses to the effect that the entirety of the declarations, including publicly available information, is confidential. I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd.[1] Arguably, there are sensitive commercial matters in the evidence which I will not discuss in any detail in my reasoning. However, I will discuss the evidence to the degree necessary to provide sensible reasons for my decision.

   [1] [2008] ATMO 17 [5]–[6].

8. Once the time allowed for filing evidence ended, the Opponent requested a hearing by written submissions. Neither party filed written submissions.

9. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the material described in [3] to [6] of this decision.

   Grounds of opposition, onus, and relevant date

10. In the SGP, the Opponent adequately particularised grounds of opposition under ss 42(b), 58, 59, 60 and 62A of the Act.

11. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

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

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

12. The date at which the rights of the parties are to be determined is 19 July 2019 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

    Section 58

13. Section 58 of the Act provides:

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

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

15. To succeed under this ground of opposition, the Opponent must establish that:

    i)the trade mark/s relied upon by the Opponent is/are identical or substantially identical with the Trade Mark;[4] and

    ii)the Applicants’ Goods are the ‘same kind of thing’ as the goods for which the trade mark/s relied upon by the Opponent has/have been used;[5] and

    iii)a person (other than the Applicants) has the earlier claim to ownership based on use, of the trade mark/s relied upon by the Opponent, prior to the application to register the Trade Mark or any actual use of the Trade Mark (whichever is the earlier).[6]

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

    [5] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

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

16. In the SGP, the Opponent nominated the following two trade marks (‘Opponent’s Trade Marks’) as the basis for this ground of opposition:

    STONE PAPER

17. My first consideration is whether either of the Opponent’s Trade Marks are identical or substantially identical with the Trade Mark. It is plainly evident that neither of the Opponent’s Trade Marks are identical to the Trade Mark.

18. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:

    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.[7]

    [7] [1963] HCA 66 [12] (Windeyer J).

19. In my opinion, a total impression of resemblance does not emerge from a side by side comparison of the Trade Mark and either of the Opponent’s Trade Marks. The Trade Mark contains the word ‘Karst’ which is not in either of the Opponent’s Trade Marks. Its presence in the Trade Mark is unlikely to go unnoticed in a side by side comparison. As such, I do not consider the Trade Mark to be substantially identical with either of the Opponent’s Trade Marks.

20. Consequently, as the Trade Mark is not identical or substantially identical with either of the Opponent’s Trade Marks, the ground of opposition under s 58 of the Act has not been established.

    Section 59

21. Section 59 of the Act provides that registration of a trade mark may be opposed on the ground that the applicant does not intend to use, or authorise use of, the trade mark in Australia.

22. It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark.[8] The onus is on an opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date.[9] If an opponent makes out a prima facie case, the evidentiary onus shifts to the applicant to show its intention to use the trade mark at the filing date.[10]

    [8] Suyen Corp v Americana International Ltd [2010] FCA 638 [197] (Dodds-Streeton J).

    [9] Aston v Harlee Manufacturing Co [1960] HCA 47 (Fullagar J).

    [10] Suyen Corp v Americana International Ltd (n 8) [190].

23. In support of the prima facie case, it is asserted in the SGP that the Applicants have nominated a wide range of goods and do not use, or intend to use, the Trade Mark in relation to all the nominated goods.

24. Mere non-use on the part of the Applicants does not, of itself, imply a lack of intention to use the Trade Mark. In Suyen Corp v Americana International Ltd Dodds-Streeton J pointed out that:

    There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.[11]

    [11] Ibid [207].

25. Furthermore, whilst the list of the Applicants’ Goods is lengthy, they are all stationery items. This is not an instance where an applicant has claimed an extremely diverse range of goods or services that are unlikely to be provided by the same trader. There is nothing before me to suggest that the Applicants do not intend to use the Trade Mark in relation to all the nominated goods.

26. The Opponent has not made out a prima facie case that the Applicants lacked the requisite intention at the Relevant Date. Consequently, the ground of opposition under s 59 of the Act has not been established.

    Section 60

27. Section 60 of the Act provides:

    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.

28. To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

29. In the SGP, the Opponent’s Trade Marks are nominated as the basis for this ground of opposition.

    Reputation

30. For the purposes of s 60 ‘reputation’ is ‘the recognition of the [trade mark] by the public generally’.[12] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[13] number of people or potential consumers. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[14] In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[15]

    [12] McCormick & Company Inc v McCormick [2000] FCA 1335 [81] (Kenny J).

    [13]Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170 (Moore, Tamberlin and Goldberg JJ).

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

    [15] [2019] FCA 923 [83] (O’Bryan J).

31. In Farhangi 1 it is declared that the Opponent’s Trade Marks were first used in Australia as early as 31 March 2000, approximately 19 years before the Relevant Date. The ‘Opponent’s Australian market turnover’ has been provided for the financial years 2005 to 2020. Whilst the figures are not insignificant, the declaration is silent as to whether these figures relate to goods bearing the Opponent’s Trade Marks.

32. It is declared that goods bearing the Opponent’s Trade Marks are promoted and advertised via various means including on generic pouches, bags, and mailers and via websites, social media, industry magazines and guide books. An indication of the annual social media expenditure has been provided, however there is no indication as to what proportion of this is targeted to, or otherwise consumed by the Australian market. The examples of use of the Opponent’s Trade Marks on social media contained in Exhibit SF-6 to Farhangi 1 suffer from the same deficiency, in addition to being dated after the Relevant Date.

33. Similarly, the examples of use contained in Exhibit SF-2 to Farhangi 1 are of little assistance to the Opponent as they are either undated, or it is not clear that the use relates to Australia.  

34. The Opponent also relies on spillover reputation. It is declared that the Opponent’s Trade Marks were first used in overseas jurisdictions as early as 1998. The Opponent has provided an indication of when the Opponent’s Trade Marks were first used in specific jurisdictions along with an indication of the annual turnover in each jurisdiction for the financial year 2020.  However, the Opponent has not provided an indication of the turnover in those jurisdictions before the Relevant Date. Furthermore, the Opponent has not provided me any means to quantify the reputation that may have spilled over into Australia.

35. Overall, the Opponent’s evidence lacks the specificity necessary for me to quantify any reputation that the Opponent’s Trade Marks may have in Australia. Consequently, I am not satisfied, as a matter of fact, that at the Relevant Date any of the Opponent’s Trade Marks had the reputation in Australia that is contemplated by s 60 of the Act.

36. The ground of opposition under s 60 of the Act has not been established.

    Section 42(b)

37. Section 42(b) of the Act provides that a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of the Trade Mark would rather than could be contrary to law.[16]

    [16] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 [28] (Madgwick J).

38. The Opponent submits that use of the Trade Mark would be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). The Opponent also asserts that use of the Trade Mark would amount to the common law tort of passing off.

    Australian Consumer Law

39. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading.

40. For the purposes of s 60 I have found that the Opponent has not demonstrated a reputation in another trade mark. It follows that it is unlikely that use of the Trade Mark will amount to misleading or deceptive conduct under the ACL because ‘for the public to be misled or deceived…there must be in the minds of the relevant public some established truth against which the notion of misleading or deceptive conduct can be measured’.[17] Similarly, without reputation having been demonstrated, the use of the Trade Mark would not falsely represent to an Australian consumer that the Applicants’ Goods have the sponsorship or approval of the Opponent.

    [17] Dairy Vale Metro Co-op Ltd v Brownes Dairy Ltd [1981] FCA 63 [42] (Toohey J).

41. The Opponent has not satisfied me that use of the Trade Mark would be contrary to the ACL.

    Passing Off

42. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.

43. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

    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.[18]

    [18] [1989] FCA 506 [40] (Hill J).

44. Section 18 of the ACL is the equivalent of s 52 of the TPA.[19] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.

    [19] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [410] (Rangiah J).

45. As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.

46. The ground of opposition under s 42(b) of the Act has not been established.

    Section 62A

47. Section 62A of the Act provides:

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

48. The phrase ‘bad faith’ is not defined in the Act. In DC Comics v Cheqout Pty Ltd, Bennett J explained:

    Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

    The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[20]

    [20] [2013] FCA 478 [62].

49. This ground of opposition is particularised in the SGP as follows:

    At the time filing the Application:

    (a)the Opponent and the Applicant had an existing commercial relationship whereby the Opponent supplied goods bearing the Opponent’s Trade Marks to the Applicant for sale in Australia; and

    (b)the Applicant was aware of the Opponent, the Opponent’s reputation and the Opponent’s Trade Marks; and

    (c)the Applicant was aware that it should not file a trade mark application for the Opposed Trade Mark.

1. The nature of the alleged relationship between the Opponent and the Applicants is unclear. There is no evidence to substantiate that the Opponent supplied goods to the Applicants. Rather, the evidence indicates that prior to the Relevant Date, the Applicants had dealings with Taiwan Lung Meng Advanced Composite Materials (‘TLM’). Whilst the Opponent asserts that TLM only supplies goods bearing the Opponent’s Trade Marks, there is no evidence to substantiate this statement, nor is there any evidence to substantiate the more specific assertion that the Opponent’s Trade Marks were on the goods supplied by TLM to the Applicants. A series of emails between representatives of the Opponent and Applicants has been provided. However, the earliest of these emails is dated September 2020, over a year after the Relevant Date. The emails do not contain any information that assists me in determining what the Applicants knew at the Relevant Date.

2. Furthermore, mere knowledge or awareness of the Opponent and its trade marks, or a prior dealing, is not, without more, an indication of bad faith.

3. The Opponent has not provided cogent evidence to support the assertions under s 62A of the Act. In the absence of such evidence, I cannot be satisfied that the trade mark application was made in bad faith. In this respect, I note the following observations of the delegate in Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited:

   The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly. [21]

   [21] [2009] ATMO 26 [12] (emphasis added).

4. The ground of opposition under s 62A of the Act has not been established.

   Decision

5. 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.

6. The Opponent has not established a ground of opposition.

7. Accordingly, trade mark application number 2022778 may proceed to registration one month from the date of this decision.

8. If the Registrar is 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 otherwise be in accordance with the Court’s order or direction.

   Katrina Brown
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   29 March 2022