Quang Pty Ltd v Binh Tay Food Company

[2017] ATMO 142

TRADE MARKS ACT 1995

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

Re:Opposition by The Quang Pty Ltd to application under section 92 of the Act by Binh Tay Food Company to remove trade mark number 983654(29, 30) - LA BO DE and device - in the name of The Quang Pty Ltd

Delegate:

Katrina Brown

Representation:

Removal Opponent: Fisher Adams Kelly Callinans

Removal Applicant: AJ Park IP Pty Ltd

Decision:

2017 ATMO 142

Decision on the written record

Trade Marks Act 1995 – application for removal under ss 92(4)(a) and 92(4)(b) – use shown for some goods – discretion exercised in relation to some other goods – registration to be partially removed – no award of costs.

Background

1. The Quang Pty Ltd (‘the Removal Opponent’) is the registered owner of the following trade mark (‘the Trade Mark’):

Registration No:

983654

Registration Date:

2 January 2004

Trade Mark:

(‘the Trade Mark’)

Specification:

Class 29: Dried and cooked fruits and vegetables; dried dates; chips; fruit and potatoes; soups; tonic soups; dried herbs; dried foodstuffs; sauces (other than condiments); fruit jellies as in this Class

Class 30: Coffee; tea, including iced tea; cocoa; sugar; rice and rice products, including rice paper, instant rice, rice cakes, rice sticks, rice porridge; noodles, including instant and dried noodles; sago; tapioca; flour and preparations made from cereals, including bread, pastry and confectionery; ices; honey; treacle; baking-powder; mustard; vinegar; sauces, including soy sauce, soya sauce, soya bean sauce, fish sauce, chilli sauce; spices, including salt, aniseed, cinnamon, cloves, curry, pepper; cornflour, flour food, flour milling products; all beverages as are included in this class; biscuits; candy for food; chips; confectionery; condiments; cookies; crackers; fruit jellies (confectionery); tea and coffee based beverages; vermicelli; condiments; seasoning; canned food; dried foodstuffs; sauces (condiments)

(‘the registered goods’)

Endorsement:

The applicant has advised that the VIETNAMESE letter grouping LA appearing in the trade mark may be translated in English as LEAF and the VIETNAMESE letter grouping BO DE appearing in the trade mark refer to a type of tree. The letter grouping appearing in the trade mark is making reference to a LEAF of a particular TREE.

2.     On 26 February 2016 Binh Tay Food Company (‘the Removal Applicant’) filed an application seeking removal of the Trade Mark from the Register. The application was made in respect of all of the registered goods; that is complete removal of the Trade Mark from the Register.

3.     The Removal Opponent filed a Notice of Intention to Oppose the removal application on 9 May 2016, followed by a Statement of Grounds and Particulars (‘SGP’) on 9 June 2016.

4.     The Removal Applicant filed a Notice of Intention to Defend the removal application on 25 July 2016.

5.     The Removal Opponent filed evidence in support of its opposition to removal. The Removal Applicant did not file evidence in answer.

6.     Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing. As neither party requested a hearing, the matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the written record.

7.     On 7 April 2017 IP Australia informed the parties that they had one month from that date to file any written submissions that they wished to rely upon. Neither party filed written submissions.

Evidence

8.     To rebut the allegation of non-use, the Removal Opponent relies on the following declaration which was filed as evidence in support:

·     Declaration of Jack Ma (Director of Removal Opponent) made on 25 October 2016 with Exhibits JM-1 to JM-11 (‘Ma Declaration’).

The Removal Opponent

9.     The Removal Opponent imports and sells products in Australia under various trade marks including the Trade Mark. The Ma Declaration states that the Removal Opponent imports soy sauce and noodles bearing the Trade Mark for sale in Australia and has done so continuously since 2005.

10.   At [4] of the Ma Declaration it is declared that the Removal Opponent is:

currently developing new products for sale under the LA BO DE Trade Mark, including rice paper, rice sticks, instant noodles, instant rice porridge, and chilli sauce. These products are expected to be on the market within the next year, and will be sold all over Australia.

The Removal Applicant

11.   The Removal Applicant did not file any evidence or submissions in this matter and the Removal Opponent’s evidence does not provide any insight into the Removal Applicant.

The law

12. Part 9 of the Trade Marks Act 1995 (‘the Act’) deals with the removal of trade marks from the Register due to non-use. Section 92 relevantly provides:

(4)An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

(a) that, on the day on which the application for the registration of the   trade mark was filed, the applicant for registration had no intention in              good faith:

i.to use the trade mark in Australia; or

ii.to authorise use of the trade mark in Australia; or

iii.to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

iv. has not used the trade mark in Australia; or

v.  has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

i.   used the trade mark in Australia; or

ii.  used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

13. The Removal Applicant is relying upon s 92(4)(a) and (b) of the Act. Shanahan’s Australian Law of Trade Marks and Passing Off states that s 92(4)(a) and s 92(4)(b) merge once the trade mark that is the subject of the removal application has been registered for 5 years.[1]

[1] Mark Davison and Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co., 6^th ed, 2016) [70.510].  

14. In this matter, the Trade Mark has been registered for more than 5 years. As such in my opinion the proper approach is for me to consider s 92(4)(b) and to turn to s 92(4)(a) if for some reason I am unable to decide the matter on the basis of s 92(4)(b).

15. Pursuant to s 92(4)(b), the Removal Applicant alleges that the Removal Opponent did not use the Trade Mark in Australia, in good faith and in relation to the registered goods, in the three year period ending on 26 January 2016 (‘the Relevant Period’).

16. Pursuant to s 100(1)(c) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b) by establishing that the registered owner used the Trade Mark in Australia, in good faith and in relation to the registered goods, during the Relevant Period. The relevant standard of proof is on the balance of probabilities.[2]

[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132].

17.   As the Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc:[3]

The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz) at 7, said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

[3] [2015] ATMO 10 [8].

18. In accordance with s 101 of the Act, the Registrar may decide to remove the Trade Mark for all or some of the goods identified in the removal application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the ground for removal is established.

Discussion and reasons

19.   The Ma Declaration states that the Removal Opponent imports soy sauce and dried noodles, bearing the Trade Mark, into Australia. The Removal Opponent then sells these goods to Asian grocery stores in Australia.

20.   Exhibits JM-9 and JM-10 to the Ma Declaration consist of product catalogues of the Removal Opponent. These product catalogues are dated 20 October 2015 which is within the Relevant Period. The product catalogues show the Trade Mark being used on the packaging of soy sauce and dried noodles. It is declared that these catalogues, or very similar catalogues, were distributed to customers each time an order was placed.

21.   The Removal Opponent has provided an indication of the revenue it has generated from the sale of goods bearing the Trade Mark and has also provided invoices relating to the sale of LA BO DE soy sauce and dried noodles within the Relevant Period.

22.   As a whole, I am satisfied that the evidence demonstrates that the Removal Opponent made genuine and commercial use of the Trade Mark within the Relevant Period in relation to soy sauce and dried noodles. Therefore the opposition to removal is established in relation to soy sauce and dried noodles only.

23. Pursuant to s 101 of the Act I must now consider whether it is reasonable to allow the Trade Mark to remain on the Register for the remainder of the registered goods.

24. Section 101 relevantly provides:

(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

(a) similar goods or closely related services; or

(b) similar services or closely related goods;

to those to which the application relates.  

25. The Removal Opponent bears the onus of convincing the Registrar that it is reasonable to exercise the discretion under s 101.[4] In the SGP, the Removal Opponent summarises its position as:

Section 101(3) Trade Marks Act 1995

At the Registrar’s discretion, the Trade Mark should not be removed even if the grounds on which the application was made have been established in relation to some or all of the goods covered by the registration.

The registered owner is planning to expand use of the Trade Mark to all or most of the relevant goods.

Section 101(4) Trade Marks Act 1995

At the Registrar’s discretion, the Trade Mark should not be removed even if the grounds on which the application was made have been established in relation to some or all of the relevant goods covered by the registration, because the trade mark has been used in connection with similar goods.

[4] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8 [44].

26. Section 101 confers a broad discretion upon the Registrar which ‘is limited only by the subject matter, scope and purpose of Part 9 of the Act’.[5] A range of circumstances may be taken into account in exercising this discretion. The circumstances do not need to be exceptional, but they need to be sufficient to satisfy the Registrar that it is reasonable to exercise the discretion.[6]

[5] Ibid [35].

[6] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [198].

27.   In Austin, Nichols & Co Inc v Lodestar Anstalt the Full Court confirmed that whether removal of the trade mark would lead to deception or confusion was a relevant factor in considering the exercise of the discretion.[7]

[7] [2012] FCAFC 8 [31].

28.   In the current matter, the Removal Opponent has demonstrated use within the Relevant Period in relation to soy sauce and dried noodles which I consider to be similar to the following goods for which the Trade Mark is registered in respect of:

Class 29: sauces (other than condiments).

Class 30: rice and rice products, including rice paper, instant rice, rice cakes,        rice sticks, rice porridge, noodles, including instant noodles; mustard; vinegar;      sauces, including soya sauce, soya bean sauce, fish sauce, chilli sauce;        condiments;      vermicelli; condiments; seasoning; dried foodstuffs; sauces         (condiments).

29.   I consider that use of the Trade Mark, or a trade mark that is substantially identical or deceptively similar, on these similar goods by a trader, other than the Removal Opponent, would be likely to deceive or cause confusion. Therefore, I consider it is reasonable to exercise the Registrar’s discretion to allow the Trade Mark to remain registered for the goods set out in [28] of this decision.

Decision

30.   The opposition to the removal application has been established in relation to soy sauce and dried noodles. As stated above, I also consider it reasonable to exercise the Registrar’s discretion to allow the Trade Mark to remain registered for the goods set out in [28] of this decision.

31.   Therefore I direct that registration number 983654 be partially removed from the Register of Trade Marks one month from the date of this decision, in respect of the following goods:

Class 29: Dried and cooked fruits and vegetables; dried dates; chips; fruit and      potatoes; soups; tonic soups; dried herbs; dried foodstuffs; fruit jellies in this class.

Class 30: Coffee; tea, including iced tea; cocoa; sugar; sago; tapioca; flour and      preparations made from cereals, including bread, pastry and confectionery;          ices; honey; treacle; baking-powder; spices, including salt, aniseed, cinnamon,        cloves, curry, pepper, cornflour, flour food, flour milling products; all      beverages as are included in this class; biscuits; candy for food; chips;       confectionery; cookies; crackers; fruit jellies (confectionery); tea and coffee   based beverages; canned food.

32.   The Trade Mark will remain registered for the following goods:

Class 29: sauces (other than condiments).

Class 30: rice and rice products, including rice paper, instant rice, rice cakes,        rice sticks, rice porridge, noodles, including instant noodles; mustard; vinegar;      sauces, including soy sauce,  soya sauce, soya bean sauce, fish sauce, chilli        sauce;   condiments;      vermicelli; condiments; seasoning; dried foodstuffs;       sauces   (condiments).

33.   If the Registrar is served with a notice of appeal within the relevant timeframe, the registration will be subject to the decision made by the court.

Costs

34.   As both parties were, strictly speaking, partly successful I believe it appropriate in this case that each party bears its own costs.

Katrina Brown

Hearing Officer

Trade Marks Hearings

22 November 2017