Re: Opposition by Development Center for Teaching Chinese as A Foreign Language of The Ministry of Education P.R.C to an application under section 92 of the Act by Fashion One (Oceania) Pty. Ltd. to remove trade..

[2021] ATMO 7

TRADE MARKS ACT 1995

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

Re: Opposition by Development Center for Teaching Chinese as A Foreign Language of The Ministry of Education P.R.C to an application under section 92 of the Act by Fashion One (Oceania) Pty. Ltd. to remove trade mark number 1029965 (41) – HSK - in the name of Development Center for Teaching Chinese as A Foreign Language of The Ministry of Education P.R.C.

Delegate:	Bianca Irgang
Representation:	Opponent: Vivian Tran of Spruson & Ferguson Non-Use Applicant: Not present
Decision:	2021 ATMO 7 Trade Marks Act 1995 (Cth) –Application under section 92(4) (a) and (b) - Use established during the relevant period on all services– removal application unsuccessful.

Background

1. This matter is an opposition proceeding under section 96 of the Trade Marks Act 1995 (‘the Act’) in which, by an application under subsection 92(4)(a) and (b) filed on 29 November 2018, Fashion One (Oceania) Pty. Ltd. (‘the non-use applicant’) has sought the removal from the Register of the trade mark (‘Trade Mark’) appearing below in respect of all the services in class 41 for which it is registered:

Trade mark:  

Trade mark number:  1029965

Date of registration:  3 June 2004

Goods:Class 41: Educational examination

1. Development Center for Teaching Chinese as A Foreign Language of The Ministry of Education P.R.C (‘the opponent’) filed a Notice of Intention to Oppose Removal on 5 February 2019 followed by a Statement of Grounds and Particulars on 5 March 2019.

2. The Statement of Grounds and Particulars asserted that the grounds on which the non-use applicant relied were not relevant because the opponent had been using the Trade Mark in relation to the registered services in Australia since it had been registered, and had used the Trade Mark in relation to the registered services in good faith during the relevant three-year period.  

3. On 17 April 2019 the non-use applicant filed their Notice of Intention to Defend. The opponent then filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’).

4. The matter came before me, a delegate of the Registrar of Trade Marks on 8 October 2020. Vivian Tran of Spruson & Ferguson appeared on behalf of the opponent. The removal applicant was not present at the hearing and did not provide written submissions for consideration.

Legal Framework

1. Part 9 of the Act governs the removal of trade marks from the Register for non-use. The sections of that part which are most relevant to the case in hand are sections 92, 96, 100 and 101.

2. Section 92 provides, inter alia, that a person may apply to the Registrar to have a trade mark removed from the Register because it has not been used for a continuous period of three years. The removal application must be in accordance with the Regulations[1] and may be made in respect of any or all of the goods and services in respect of which the trade mark is registered. Subsection 92(4)(a) and (b) as it is relevant to this case provides the following:

   [1] Regulations 9.1 to 9.4 are relevant here.

   (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 authorize the 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 to non-use application related 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 service at any time before the period of one month ending on the day in 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.

3. As the Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc[2]:

   Section 100(1) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s92(4) which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.

   The required use is as a trade mark, that is to say it is as a badge of origin in that it indicates a connection in the course of trade between the goods and the person who applies the mark to the goods: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41] – [43].

   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.

   [2] [2015] ATMO 10

4. Further, section 101 of the Act deals, inter alia, with the Registrar’s discretion:

   Determination of opposed application—general

   (1) Subject to subsection (3) and to section 102, if:

   (a) the proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b) the Registrar is satisfied that the grounds on which the application was made have been established;

   the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

   (2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

   (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.

   Note 1:       If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

   Note 2:       For registered owner see section 6.

5. In Pioneer Computers Australia Pty Ltd v Pioneer KK[3]  Bennett J made the following observations concerning the Registrar’s discretion:

   [3] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354

   [167] The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.

   [168] In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).

   […]

   [171] By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.

Evidence

Evidence in Support

• The declaration of Ma Jianfei (‘Jianfei’) dated 22 July 2019 accompanied by Annexures A to Confidential Annexure G.

Discussion

1. To defeat the non-use application, the opponent must demonstrate that it has used the Trade Mark on the services covered by the registration within the period of three years ending one month before the day on which the non-use application was filed (‘the relevant period’). The evidentiary standard is the ‘balance of probabilities’ which means that I must be satisfied the opponent more likely than not used the Trade Mark during the relevant period. This arises by virtue of section 100(1)(c) of the Act.

2. The main argument advanced by the non-use applicant in this case is that:

• The opponent has not used the Trade Mark on the registered services during the relevant period in good faith.

1. In opposition to that assertion, the Jianfei declaration avers that the Trade Mark has been continuously used in Australia by the opponent on the educational examination services. In particular, the services provided under or by reference to the Trade Mark are used in relation to China’s national standardized test designed and developed to assess Chinese language proficiency of non-native speakers of the Chinese language.

2. According to Jianfei, during the relevant period, information regarding the Trade Mark services have been and continue to be available to Australian consumers through:

• The website: and

• Embassy of the People’s Republic of China in the Commonwealth of Australia website ;and

• Australian Universities including University of Western Australia, Queensland University of Technology, University of Queensland, University of Sydney, Griffith University and Victoria University;[6] and

• Third party websites including Annexure C accompanying the Jianfei declaration

[7] Annexure D accompanying the Jianfei declaration

1. Jianfei confirms that as a result of these promotions that the opponent has consistently provided the educational examination services under the Trade Mark to a reasonable number of Australian consumers across Australia during the relevant period[8]. The number of people using the opponent’s educational examination services under the Trade Mark has also generated a reasonable revenue during the relevant period[9].

   [8] Confidential Annexure E accompanying the Jianfei declaration

   [9] Confidential Annexure G accompanying the Jianfei declaration

2. These examples provide clear and sufficient information to demonstrate genuine commercial use of the opponent’s Trade Mark in relation to educational examination services within the relevant period, in accordance with the test in Imperial Group Ltd v Philip Morris & CoLtd[10]. Even a single bona fide use of the mark in the relevant period is sufficient to resist an application for removal - Woolly Bull Enterprises Pty Ltd v Reynolds[11]. I am satisfied from the material before me that the opponent has established use, in good faith, for all its services within class 41 during the relevant period. Consequently, the ground of removal under section 92(4)(a) and (b) is rebutted with respect of all the services.

   [10] [1982] FSR 72

   [11] (2001) 51 IPR 149

Decision

1. I am satisfied that the Trade Mark has been used in the relevant period.

2. Therefore, I refuse to remove Trade Mark registration no. 1029965.

Costs

1. The opponent has requested its costs. Having been successful, it is so entitled.  I award costs against the non-use applicant at the official scale.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
22 January 2021

[4] Annexure A accompanying the Jianfei declaration

[5] Annexure B accompanying the Jianfei declaration