Pon Bicycle Holding B.V. v HONBIKE (Hong Kong) Intelligent Technology Limited

[2024] ATMO 8

TRADE MARKS ACT 1995

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

Re:Opposition by Pon Bicycle Holding B.V. to registration of trade mark application number 2187451 (classes 9 & 12) -  - in the name of HONBIKE (HONG KONG) INTELLIGENT TECHNOLOGY LIMITED.

Delegate:

Timothy Brown

Representation:

Opponent: Jürgen Bebber of Corrs Chambers Westgarth

Applicant: Written submissions by Bill Singleton of HWL Ebsworth Lawyers

Decision:

2024 ATMO 8

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44 and 60 considered – no grounds established – trade mark to proceed to registration.

Background

1. This decision concerns an opposition brought by Pon Bicycle Holding B.V (‘Opponent’) under section 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark:

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

   Trade Mark Number: 2187451

Trade Mark:    (‘Trade Mark’)

Owner:HONBIKE (HONG KONG) INTELLIGENT TECHNOLOGY LIMITED (‘Applicant’)

Priority Date:  21 June 2021

Specification:  Class 9: Batteries, electric; Battery chargers; Protective helmets; Computer software applications (downloadable); Battery boxes

Class 12: Bicycles; Electric bicycles; Baskets adapted for cycles; Motor scooters; Bicycle saddles

(‘Applicant’s Goods’)

1. Following exanimation under section 33 of the Act, the Trade Mark was accepted and subsequently advertised for opposition on 22 November 2021.

2. The Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 24 January 2022, followed by a Statement of Grounds and Particulars (‘SGP’) on 9 February 2022. On 13 April 2022, the Applicant filed a Notice of Intention to Defend the opposition.

3. Evidence in Support of the opposition was filed by the Opponent on 14 July 2022. The Applicant filed its Evidence in Answer on the 17 October 2022. The Opponent filed Evidence in Reply on 15 December 2022.

4. Following the conclusion of the evidence stages, the Opponent requested to be heard. The matter was heard before me, a delegate of the Registrar of Trade Marks, on 18 October 2023. The Opponent was represented by Jürgen Bebber of Corrs Chambers Westgarth accompanied by Sara Lemley and Sarah Catania also of Corrs Chambers Westgarth. The Applicant relied on its written submissions.

Grounds of Opposition, Onus and Relevant Date

1. The grounds of opposition nominated in the SGP were sections 42(b), 44, 60 and 62A of the Act. At the hearing, the Opponent pressed only sections 42(b), 44 and 60. For completeness, I find that section 62A is not established.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is the priority date of the Trade Mark, being 21 June 2021 (‘Relevant Date’).

Evidence

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

[3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Opponent

1. The Opponent’s evidence consists of the following:

   Evidence in Support

• Declaration of Justin Kohnstamm, General Counsel of the Opponent, made on 13 July 2022, with Exhibits JK-1 to JK-8 (‘Kohnstamm Declaration’).

  Evidence in Reply

• Declaration of Sarah Elizabeth Catania, solicitor acting for the Opponent, made on 14 December 2022, with Annexures SEC-1 to SEC-5 (‘Catania Declaration’).

• Declaration of Justin Kohnstamm dated 9 December 2022 (‘Second Kohnstamm Declaration’).

1. The Opponent is a subsidiary of Pon Holdings B.V, a global importer and distributor of automotive and transport products. Mr Kohnstamm asserts that the Opponent is one of the world’s largest bicycle manufacturers and distributors, offering over 15 premium bicycle brands and selling products in over 65 countries across Europe, North America, South America, Asia and Australia. Some of the bicycle brands offered by the Opponent include Gazelle, Cannondale, FOCUS, Santa Cruz, Kalkhoff, GT, Schwinn, Mongoose, Caloi, Charge and Urban Arrow.

2. The Opponent is the owner of the following trade mark registration:

   Trade Mark Number:  1871605

   International Registration Number:         1364376

   Trade Mark:   PON.BIKE (‘Opponent’s Trade Mark’)

   Filing Date:  22 August 2016

   Convention Priority Date:   13 May 2016

   Specification:   Class 35: Advertising; business management; business administration; clerical services; commercial intermediary services and the provision of business and commercial advice regarding the purchase, sale, import and export of vehicles, motorised bicycles and scooters [vehicles], bicycles and bicycle parts, children's bicycles and their parts, push bikes, bikes for children, bicycle trailers, go-carts, small wagons for transporting children [vehicles], clothing, footwear and headgear; advertising and sales promotion; marketing; online marketing activities relating to bicycles; market surveys and market studies, public relations services, advertising and promotion in connection with the production and sale of bicycles; import, export and business intermediary services in the trading of bicycles and bicycle accessories; advisory services relating to promotional activities for amongst others sporting purposes and competitions; administrative services; searching donors and sponsors for the benefit of funds; lobbying for commercial purposes; organisation of events for commercial and advertising purposes; services with regard to product presentation to the public; promoting the goods and services of others; promotional services

   (‘Opponent’s Services’)

3. Since 2009, the Opponent has sold bicycles to the Australian market via a range of distribution channels. Mr Kohnstamm explains that since 22 June 2011 bicycles are imported into Australia and offered for sale through Pon.Bike Australia, a subsidiary of the Opponent. The Opponent’s bicycles are then sold through authorised stockists across all of Australia. Confidential Exhibit JK-3 of the Kohnstamm Declaration includes the total sales of the Opponent’s bicycles from the end of financial year 2014 to May 2022.

4. Confidential Exhibit JK-5 of the Kohnstamm Declaration includes the Opponent’s total marketing expenditure since its entry into the Australia marketplace. The Kohnstamm Declaration explains the Opponent’s promotional activities include:

• Promotion of the Opponent’s bicycles via the Opponent’s website, (‘Opponent’s Website’) since August 2016.[4]

• Sponsorship of the Team Jumbo-Visma cycling team, a professional Dutch bicycle team, and sponsorship of Rijksmuseum, the national museum of the Netherlands.

• The Pon Bikes Australia 2018 ‘kick off’ event, which was designed to introduce the Opponent’s bicycles to the Australian market. Exhibit JK-2 shows a third-party post from the Facebook page ‘Croyden Cycle Works’ documenting the event.

• Sponsorship of the Tour Down Under (also know as the Santos Tour Down Under) in 2018. The Tour Down Under being a cycling race in and around Adelaide, and the opening event of the Union Cycliste Internationale (ICU) World Tour.

• A reward program entitled ‘Pon.Bike Dealer Rewards Program’, which was provided to dealers of the Opponent’s bicycles in October 2017.

  [4] Kohnstamm Declaration Exhibit JK-7.

Applicant

1. The Applicant’s evidence consists of the following:

• Declaration of Xu Hongjun, founder of the Applicant, made on 12 October 2022, with Exhibits A to I (‘Hongjun Declaration’).

1. Mr Xu declares that the brand ‘HONBIKE’ was founded in Japan in 2017 and was coined from his own personal name, Hongjun. Mr Xu asserts that the ‘HONBIKE’ brand revolutionised the e-bike industry after the Applicant created the world’s first e-bike with a patented shaft drive system.

2. Mr Xu explains that the Applicant manufacturers bicycles, bicycle batteries, bicycle accessories and bicycle parts, such as saddles tyres and pedals. The ‘HONBIKE’ design is described in the Hongjun Declaration as ‘very unique and distinctive’ and is the recipient of several international design awards. These awards include the Good Design Award 2020, the Silver Award 2021, the IF Design Award 2021, and the Red Dot Design Award 2021. Mr Xu asserts that the Applicant has established a global reputation in the bicycle market. In support, Exhibit I of the Hongjun Declaration includes various articles discussing the ‘HONBIKE’.[5]

   [5] See: Hongjun Declaration Exhibit I.

3. According to the Hongjun Declaration, in 2021 the Applicant filed several trade mark applications for the Trade Mark in various jurisdictions around the world, including China, the USA, the European Union, the UK, Canada, Singapore, New Zealand and South Korea.

4. Mr Xu explains that the Trade Mark is used in every facet of the Applicant’s business, including on its website, promotional material, retail store branding and social media, including Facebook, Instagram and YouTube.[6] The Trade Mark is also prominently displayed on the Applicant’s Goods and its product packaging.[7] In addition to the various bicycle products produced by the Applicant, the Applicant also uses the Trade Mark as the name of a software application and mobile app.[8]

Discussion and Reasons  

[6] Ibid E, F, G and H.

[7] See: Ibid Exhibit B.

[8] Ibid Exhibit C.

Section 44

1. Section 44 relevantly provides:

   (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 succeed under this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of goods that are similar to the Applicant’s Goods, or services that are closely related to the Applicant’s Goods.

2. The Opponent relies on the Opponent’s Trade Mark as the basis for this ground of opposition.

3. The Opponent’s Trade Mark has an earlier priority than the Trade Mark, and is held in the name of another party.

Comparison of Goods and Services

1. The phrase ‘closely related’ is not defined in the Act. In Registrar of Trade Marks v Woolworths,[9] French J explained:

   The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related"…[10]

   [9] [1999] FCA 1020.

   [10] Ibid [37].

2. Justice French went on to state that the ‘relationship may and in perhaps most cases will be defined by the function of the service with respect to the goods’.[11]

   [11] Ibid [38].

3. Where the earlier trade mark services necessarily involve use or sale of the other trade mark’s goods, it is more likely that those goods and services will be perceived as closely related.[12] Also relevant is the nature, function and circumstances or channels of the trade.[13] The question is not concerned with the actual trade engaged in by the respective parties but with whether the Applicant’s Goods as specified in the trade mark application are closely related to the Applicant’s Services.[14]

   [12] Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 1 IPR, 265, 277 (Lockhart J).

   [13] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [39] (Kennett J).

   [14] Ibid [36].

4. The Opponent contends that the Applicant’s Goods are closely related to the Opponent’s Services on the basis that its services include the distribution and promotion of the products covered by the Trade Mark. Framed another way, the Opponent submits that the services and goods are closely related because its services concern assisting businesses with the sale of bicycles and similar vehicles products.

5. The Applicant submits that the Applicant’s Goods are not closely related to the Opponent’s Services, that the goods and services specified are different in nature, have distinct uses and are not commonly provided through the same trade channels or to the same customers. The Applicant submits that the Opponent’s Services are ordinarily offered to businesses rather than directly to consumers of goods.

6. In the present case, the Applicant’s Goods include bicycles, electronic bicycles, scooters, various bicycle accessories in Class 12 as well as batteries, battery chargers, bicycle helmets and computer software in Class 9, while the Opponent’s Services include a wide range of business services in Class 35, including ‘import, export and business intermediary services in the trading of bicycles and bicycle accessories’, ‘business and commercial advice regarding the purchase, sale, import and export of vehicles, motorised bicycles and scooters [vehicles], bicycles and bicycle parts...’, and ‘promotion in connection with the production and sale of bicycles’.

7. The Opponent asserts that brands used in relation to bikes and vehicles and the brand that retails those goods will often be identical. Whilst there is no evidence to substantiate this claim, I agree that there is a close relationship between vehicles and the retail of vehicles generally. However, it does not necessarily follow that the same can be said for bicycles and the various promotional, advisory and commercial intermediary services specified in Class 35 of the Applicant’s Services. Despite the nexus with bicycle products, these services are further removed from the Applicant’s Goods than retail or wholesale services. The Opponent’s Services are expressly concerned with the promotion, import and export of bicycles, or advice regarding the sale of bicycles and bicycle parts. They can be charaterised as business assistance services rather than services for the actual sale of bicycles. In the absence of any evidence to indicate that a consumer could expect these services and the Applicant’s Goods to be provided from the same trade source, the Opponent’s Services are not closely related to the Applicant’s Goods.

8. For completeness, I also do not consider the remainder of Applicant’s Goods in Class 9, being batteries, computer software, helmets and battery chargers, to be closely related to the Opponent’s Services. The nature of these goods is even further removed from the Opponent’s Services than the goods in Class 12.

9. In consideration of all of the above, I am not satisfied that the Applicant’s Goods are closely related to the Opponent’s Services. Accordingly, the section 44 ground of opposition has not been established.

Section 60

1. Section 60 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.

2. To succeed on this ground of opposition, the Opponent must establish:

• A reputation in another trade mark in Australia before the Relevant Date; and

• That use of the Trade Mark would be likely to deceive or cause confusion because of the reputation of the other trade mark.

1. Reputation, in the context of section 60, refers to ‘recognition of [the mark] by the public generally’[15]. It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[16]

   [15] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J).

   [16] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 176, [118] (Lockhart J).

2. There are a variety of ways the reputation of a trade mark may be established, including by demonstrating that a significant number of people have been exposed to the trade mark,[17] or providing evidence of high volume of sales,[18] advertising expenditure or other promotion of goods or services to which the trade mark applies.[19]

   [17] Ibid [118].

   [18] McCormick (n 24) [86].

   [19] Ibid.

3. 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.[20]

   [20] [2019] FCA 923, [83] (O’Bryan J).

4. The reputation relied on by the Opponent must be amongst a significant or substantial number of persons.[21] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[22]

   [21] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).

   [22] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

5. The Opponent contends that through the Opponent’s extensive promotional, sales and business activities in Australia, the Opponent’s Trade Mark has acquired a significant reputation in Australia, and that due to this reputation, use of the Trade Mark by the Applicant is likely to deceive or cause confusion. In support of this contention, the Opponent relies on the following:

   ·     The sale of products bearing the Opponent’s Trade Mark;

   ·      The Opponent’s total revenue figures relating to products sold in Australia since 2014;[23]

   ·      The Opponent’s use of the Opponent’s Trade Mark on the Opponent’s Website;[24]

   ·     Third party promotions featuring the Opponent’s Trade Mark on Australia cycling media websites,[25] namely and

   ·     The Opponent’s promotional activities, including its sponsorship of the Tour Down Under in 2018.[26]

   [23] Kohnstamm Declaration Exhibit Confidential Exhibit JK-3.

   [24] Ibid Exhibit JK-7.

   [25] Ibid Exhibit JK-8.

   [26] Ibid Exhibit JK-6.

6. In addition, the Opponent also relies on the alleged global reputation of the Opponent’s Trade Mark.

7. Conversely, the Applicant submits that the evidence provided by the Opponent is not sufficient to establish that the Opponent’s Trade Mark had acquired a reputation in Australia at the Relevant Date. In particular, the Applicant emphasises that the Opponent has not provided evidence that it sells, or has ever sold, bicycles branded under the Opponent’s Trade Mark. Rather, the Opponent appears to sell its bicycles under various third-party trade marks, such as FOCUS, Santa Cruz and Urban Arrow.

8. In my view, the Opponent’s evidence does not establish that the Opponent’s Trade Mark had acquired a reputation in Australia amongst a substantial or significant number of persons in the relevant market at the Relevant Date. There are only a limited number of examples of use of the Opponent’s Trade Mark. These examples are confined to use of the Opponent’s Trade Mark on the Opponent’s Website, third party references in media articles, and use in relation to the Opponent’s rewards program. Despite the Opponent’s submission referring to the ‘sale of products bearing the Opponent’s Trade Mark’, there is an absence of any use of the Opponent’s Trade Mark on relevant goods. Rather the products included in the Opponent’s evidence generally feature other trade marks used by the Opponent, for example:

1. Similarly, regarding the evidence of expenditure by the Opponent on promotional activities, the promotional activities appear to be tied to the marketing and promotion of the various bicycle brands owned by the Opponent rather than the Opponent’s Trade Mark. The sales revenue appears substantial, but in the context of the Opponent’s evidence it suggests that these sales only concern the sale of bikes branded with other trade marks to third party retailers in Australia.

2. Although I acknowledge that the evidence suggests that the Opponent is a successful business and significant manufacturer and supplier of bicycles globally, there insufficient evidence of use of the Opponent’s Trade Mark and how it has been promoted for me to conclude that the trade mark itself has a reputation in Australia.

3. Accordingly, I am not satisfied that the Opponent’s Trade Mark had acquired a reputation in Australia at the Relevant Date amongst a significant or substantial number of Australian consumers. Since section 60(a) of the Act has not been satisfied, it is not necessary to consider section 60(b).

4. The ground of opposition under section 60 has not been established.

Section 42

1. Section 42(b) of the Act relevantly provides:

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

   …

   (b)    contrary to law.

2. The Opponent relies on sections 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) as the basis for the ground of opposition under section 42(b) of the Act. In support of this ground of opposition, the Opponent repeats its submissions made in relation to the section 60 ground of opposition.

3. To succeed in an opposition under section 42(b) of the Act, the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would contravene sections 18 or 29 of the ACL.[27]

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

4. Section 18 of the ACL requires there to be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s Goods due to the conduct of the Applicant. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in section 18 of the ACL and ‘false or misleading’ in section 29 of the ACL.[28] The requirement to mislead or deceive the relevant consumer imports a stricter requirement than section 60 of the Act.[29]

   [28] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

   [29] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).

5. For the reasons outlined in relation to the section 60 ground of opposition, in my view it is not likely that use of the Trade Mark would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant goods or services into believing that the Trade Mark and the Opponent’s Trade Mark are related.

6. Accordingly, the ground of opposition under section 42(b) has not been established.

Decision

1. Section 55(1) of the Act relevantly provides:

   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 not established a ground of opposition. Accordingly, trade mark number 2187451 may proceed to registration one month from the date of this decision. 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 be in accordance with the court’s order or direction.

Costs

1. Both parties sought an award of costs. As the Opponent has not been successful in the opposition, I award costs against the Opponent under s 221 of the Act in accordance with Schedule 8 of the Regulations.

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

16 January 2024