Re: Opposition by Homelink Real Estate Agency Co., Ltd. to registration of trade mark application number 1786400 (class 36) &#38142

[2019] ATMO 101

TRADE MARKS ACT 1995

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

Re: Opposition by Homelink Real Estate Agency Co., Ltd. to registration of trade mark application number 1786400 (class 36) - 链 家 - in the name of Maxwell Investments Group Pty Ltd

DELEGATE:

Adrian Richards

REPRESENTATION:

Opponent: Gerard Skelly of Shelston Intellectual Property

Applicant: Desmond Cheung of Compass Lawyers

DECISION:

2019 ATMO 101

Trade Marks Act 1995 (Cth) – opposition under section 52 – ground of opposition under section 58 established – trade mark to be refused

  registration  

Background

1. These reasons concern an opposition to registration of a trade mark under s 52 of the

   Trade Marks Act 1995 (Cth) (Act). Relevant details of the mark are:

   Application number:           1786400

   Filing date:  28 July 2016 (Relevant Date)

   Applicant:  Maxwell Investments Group Pty Ltd

   Trade mark:   (Trade Mark)

   Endorsement:  The applicant has advised that the CHINESE characters

   appearing in the trade mark may be transliterated as LIAN JIA which may be translated into English as LINK HOME

   Specification of services:      Class 36: Agency services for the  leasing of real  estate

   property; Agency services for the selling on  commission of real property; Commercial property investment services; Domestic property finding services; Financing of property development;  Leasing of freehold property; Leasing of property; Management of property; Property leasing (real estate property only); Property portfolio management; Property sales services

   relating to property development; Property sales services relating to real estate development; Property valuation; Provision of information relating to property (real estate); Real estate services relating to property development; Real property evaluation (financial); Real property letting; Real property management; Rental of property; Valuation of property (Applicant’s Services)

2. Acceptance of the Trade Mark for possible registration was advertised for opposition purposes on 22 December 2016. Homelink Real Estate Agency Co., Ltd. (Opponent) filed a Notice of Intention to Oppose registration of the Trade Mark on 21 February 2017, followed by a Statement of Grounds and Particulars on 21 March 2017 (SGP). The Applicant filed a Notice of Intention to Defend the Trade Mark against opposition in 18 May 2017. The Opponent filed evidence in support on 24 August 2017, the Applicant filed evidence in answer between 29 November 2017 and 1 December 2017 and the Opponent filed evidence in reply on 7 February 2018.

1. The opposition was ostensibly ready to be heard. On 9 March 2018 the Applicant asked that it be heard on the papers. I was originally assigned to hold a hearing of  this opposition (nominally) on 12 June 2018. On reviewing the file, I noticed that the Applicant had also asked that the Registrar of Trade Marks (Registrar) require that the Opponent produce documents under s 202(c) of the Act. That request was eventually refused, but while it remained unresolved it caused the initial hearing date to be vacated. Subsequently, another hearing date was set for 23 January 2019. In the lead up to that date, each party told this office that it wanted to attend an oral hearing. An oral hearing accordingly was held on that day in Canberra before me in my capacity as a delegate of the Registrar. Desmond Cheung of Compass Lawyers appeared by telephone on behalf of the Applicant, and Gerard Skelly of Shelston Intellectual Property appeared in person for the Opponent.

Grounds and onus

1. The SGP nominates grounds of opposition under ss 42(b), 58, 60 and 62A of the Act. In the lead up to the hearing, the Opponent informed the Applicant and me that s 42(b) would not be pressed. I have treated that ground as abandoned.

1. The onus falls on the Opponent to satisfy me that at least one of the three remaining grounds of opposition is established. The level of satisfaction is the ordinary civil

2. standard of the balance of probabilities.1 For reasons discussed below I am satisfied that the Opponent has established the ground of opposition under s 58 of the Act. It has therefore not been necessary for me to consider the two other grounds.

3. If this decision is appealed the opposition would be heard de novo.2 As such, in appeal proceedings it would be open to the Opponent to invoke any grounds of opposition applicable under the Act.

Evidence

1. The evidence filed in relation to this opposition consists of the following declarations:

   Evidence in support

   Brett Hartley-Wilson, Sales Director for the Opponent, made 24 August 2017 with exhibits BHW-1 to BHW-14 (Hartley-Wilson 1)

   Kathryn Ruth Mytton, Legal Practitioner of Shelston IP Pty Ltd, made 24 August 2017 with exhibits KRM-1 to KRM-12 (Mytton 1)

Evidence in answer

Conrad Cheng, Director of the Applicant, made 27 November 2017 with exhibits EXH-1 to EXH-47 (Cheng 1)

Conrad Cheng, Director of the Applicant, made 27 November 2017 with exhibits EXH-47 and EXH-401 to EXH-412 (Cheng 2)

Conrad Cheng, Director of the Applicant, made 27 November 2017 (Cheng 3)

Conrad Cheng, Director of the Applicant, made 27 November 2017 (request for information from Brett Hartley-Wilson)
Conrad Cheng, Director of the Applicant, made 27 November 2017 (request for information from Kathryn Ruth Mytton)
Conrad Cheng, Director of the Applicant, made 27 November 2017 (list of documents filed as evidence in answer)

Evidence in reply

Brett Hartley-Wilson, Sales Director for the Opponent, made 9 February 2018 with exhibits BHW-15 to BHW-17 (Hartley-Wilson 2)

Kathryn Ruth Mytton, Legal Practitioner of Shelston IP Pty Ltd, made 7 February 2018 with exhibits KRM-12 to KRM-16 (Mytton 2)

1. I have discussed the detail of the evidence relevant to the successful ground of opposition in the section below. At this point it is necessary to set out my general understanding of the Applicant’s evidence, deal with an issue raised by the Applicant in its submissions  and briefly mention some late filed evidentiary material filed by the parties.

1 Pfizer Products Inc v Karam (2006) 219 FCR 585, 587–94 [6]–[26]; endorsed by the Full Federal Court in

Telstra Corporation Ltd v Phone Directories Company Pty Ltd (2015) 237 FCR 388, 420 [133].

2 Primary Health Care Limited v Commonwealth (2016) 335 ALR 676, 680 [9].

1. Cheng 1, 2 and 3 are respectively in answer to Hartley-Wilson 1, Mytton 1 and the SGP. Mr Cheng’s two ‘requests for information’ are not in answer to the evidence in support but appear to be an attempt to enter interrogatories. While commonly found in court proceedings, the Act does not provide for interrogatories in proceedings before the Registrar. Despite the Applicant’s suggestions to the contrary, the fact that not every aspect of these ‘requests for information’ is dealt with in the Opponent’s evidence in  reply is not, of itself, prejudicial to the Opponent’s case. I have therefore given very little weight to the Applicant’s ‘requests for information’. Mr Cheng’s sixth declaration only lists his other five declarations and is of no probative value.

1. Much of Mytton 2 and Hartley-Wilson 2 are taken up with responding to Mr Cheng’s ‘requests for information’, while their balance reply to other aspects of the evidence in answer. Despite the downright orthodox nature of the Opponent’s evidence in reply, in submissions the Applicant asked that it be struck from the record because it had not been afforded an opportunity to respond. For reasons that follow, the Applicant has given no good reason for me to disregard the evidence in reply.

1. A quick way to dismiss this complaint is to recall that Mr Cheng’s requests for information specifically asked the Opponent to provide much of the content in the evidence in reply. So far as that may be, the Applicant has itself to blame. A more charitable way of reading the Applicant’s submission is as a more general criticism: the statute does not confer upon any applicant a right to respond to evidence in reply. Aside from some critical legal theory that this line of argument might evoke,3 I am satisfied that the procedure provided by the Act and Trade Marks Regulations 1995  (Cth) (Regulations) has offered the parties a reasonable opportunity to put their respective cases. The Opponent first set out its case in brief in the SGP, then substantiated it by filing evidence in support. The Applicant had an opportunity to file evidence in answer to the SGP and evidence in support. The Opponent had the final opportunity to file evidence, but this was only ‘in reply’ to matters raised in the evidence in answer. The Opponent’s later opportunity to file evidence in reply is balanced by the fact the onus will typically fall upon it to establish a ground of opposition—where a ground of opposition is left in doubt, it is not established. Even still, the Opponent did not have the final word. Regulation 5.17(6) requires that the parties provide a summary of their submissions

3 See, eg, Jacques Derrida, ‘Force of Law’ in Drucilla Cornell, Michel Rosenfeld and David Gray Carlson (eds),

Deconstruction and the Possibility of Justice (Mary Quaintance trans, Routledge, 1992) 3, 26–8.

before the hearing. They take this in turns, with the Opponent going first. While submissions do not carry the weight of evidence, they are nevertheless important to a decision-maker in gaining an understanding of the evidence in the context of the applicable law.

1. The third issue to address here is late evidentiary material filed under the guise of submissions. As mentioned, the parties were required to file a summary of their submissions before the hearing took place. The Opponent’s submissions includes two undated pictures of the Opponent’s retail shopfronts somewhere in China. These images were not in the evidence and are not relevant to the ground of opposition discussed below, so I give them no weight. The Applicant’s summary of submissions was filed with a 59- page attachment headed ABSTRACT. This document consists of a two-page summary and critique of the proceedings, followed by 21 exhibits of evidentiary material. Some of those exhibits are copies from the properly filed evidence marked up, highlighted and filed again for ‘quick reference’. Most of the exhibits, however, are an attempt to introduce new material at a late stage in proceedings. Of that new material, one page of one exhibit was presented by the Applicant as relevant to the s 58 ground. The page  relates to the lodgement of a rental bond on 18 August 2015, yet the Applicant did not offer an explanation as to why this page could not have been submitted sooner than it  was. The page has no potential to impact on the outcome of this opposition, so I have given it no weight along with the rest of the Applicant’s late filed evidentiary material. I have however briefly mentioned this page below only to explain in context why it does not assist the Applicant.

Discussion of s 58

1. Section 58 of the Act reads as follows:

58 Applicant not owner of trade mark

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

Note:       For applicant see section 6.

1. One way that the law recognises ownership of a trade mark is where a person is shown to be the first user in Australia of that mark.4 In the context of this ground of opposition, that

4 Shell Co (Aust) Ltd v Rohm and Haas Co (1948) 78 CLR 601, 627.

earlier use must be of a mark identical or substantially identical to the Trade Mark,5 in relation to goods or services that are the ‘same kind of thing’ as the Applicant’s Services.6

1. The Opponent says it was first user, and is therefore the owner of the Trade Mark. The Applicant has filed evidence that it says shows it used the Trade Mark before the Opponent. I have assessed each party’s claims in turn below.

The Opponent’s trade mark use in Australia

1. The Opponent has provided several examples of its dealings in Australia starting in 2015. Its earliest examples use the following mark:

   (HOP Mark)

2. The issue immediately apparent with the HOP Mark is whether it is substantially identical to the Trade Mark. The Opponent submits that the first two Chinese characters on the left can be taken to be a separate mark.7 The HOP Mark does not lend itself to such a reading. The words ‘Overseas Property’, though somewhat descriptive, are nevertheless part of the overall source identifier ‘Homelink Overseas Property’. The same would go for their translation into Chinese script below. Moreover, I do not consider it appropriate to dissect either the English and Chinese writings from the very large and distinctive device to their left. Given the significant areas of difference, the HOP Mark is not substantially identical to the Trade Mark.

1. Among the other examples of the Opponent’s dealings in Australia is a Strategic Partnership Agreement between the Opponent and Ray White (Real Estate) Pty Ltd made 1 May 2016. This document uses the following header:

5 Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513.

6 Re Hicks's Trade Mark (1897) 22 VLR 636, 640.

7 See, eg, Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 345 ALR 205.

1. Given the commercial nature of the document, and that its sole concern is the coordination of real estate sales in Australia, this is use of the above trade marks by the parties to this agreement for services that are the same kind of thing as the Applicant’s Services. Turning to identity or substantial identity I have placed the Opponent’s mark from the left of the header (Lianjia Mark) alongside the Trade Mark below for a side-by- side comparison:

2. The Lianjia Mark consists of Lianjia written in the Roman alphabet then a full stop and two Chinese characters. I accept the Opponent’s submission that the two Chinese characters in the Lianjia Mark are stylised versions of 链家. The two Chinese characters that make up the Trade mark are plainly also 链家. The Applicant’s endorsement for the Trade Mark provides the transliteration of the Trade Mark as LIAN JIA. Thus according to the Applicant’s endorsement, the Roman letters appearing in the Lianjia Mark are an expression of the sound of the Chinese characters that appear in both marks. I accept the Opponent’s submission that the Lianjia Mark is two alternate trade marks indicating the same trade source in different scripts: ‘It is established that more than one trade mark may be used in close proximity.’8 I have been persuaded of this because the alternate transliterations in the Lianjia Mark, ‘Lianjia’ and ‘链家’, are delimited by a full stop. The comparison is therefore ultimately between a traditional and stylised rendering of the same two Chinese characters. I find they are substantially identical.

The Applicant’s trade mark use in Australia

1. At the hearing, Mr Cheung took me to EXH-47, an exhibit to both Cheng 1 and 2. Those declarations state that this exhibit shows properties that have ‘been sold or exchanged, leased from August 2015.’ The exhibit consists of a typed list of addresses under the heading ‘Property List’ (Mr Cheng’s Property List), a floor plan of an apartment, five pages of real estate photographs, and a partly redacted conveyancing letter. Several of the photographs show the Trade Mark as a watermark in a corner, a smaller number show a truncated version of the Trade Mark as though that part of the image has been cropped from frame, and most photographs do not contain the Trade Mark at all. None of the

8 H. Young (Operations) Ltd v Universal Protein Supplements Corporation [2016] ATMO 82, [27].

images are dated and how (or whether) they were ever used in relation to any of the Applicant’s Services is not in evidence. For example, the nearest that any of these images come to demonstrating use of the Trade Mark is the photograph below:

1. As with all of the photographs in this exhibit, the above is presented simply as an image without any context other than Mr Cheng’s vague declaration that it relates to a property that has been sold, exchanged contracts or leased with the involvement of the Applicant at some time since August 2015. The pictured placard includes a description and several photographs of a unit, Mr Cheng’s name and the name of the Applicant. Two of the lower images on the placard contain the Trade Mark in their bottom right. A third photograph toward the top right shows an example of a truncated Trade Mark. What purpose the inconsistently and haphazardly placed Chinese characters in the photographs serve is unclear, but it is plain in this context that none is use of the Trade Mark in relation to the Applicant’s Services. The identifier of the real estate services appears prominently at the bottom of the placard: the prospective customer is told to direct their enquiry to Conrad Cheng and possibly the Applicant.

1. Returning to the specific example that Mr Cheung referred me to at the hearing, the trail began with Mr Cheng’s Property List. He asked that I note the second item in the list is a

2. street address in Burwood, New South Wales (with no unit number included in it). He then had me turn a few pages of EXH-47 to view an image of a tall building with the Trade Mark appearing as a watermark in its lower left corner (pictured below). Mr Cheung asserted that this was a picture of the Burwood property referred to in Mr Cheng’s Property List. Mr Cheung then asked that I look at one of the attachments to his written submissions, which was the late filed evidentiary material I mentioned at [12] above. This page is a partially redacted Advice of Lodgement for a rental bond lodged with New South Wales Fair Trading on 18 August 2015. It is for a property at the same street address as appears in the Mr Cheng’s Property List, but with a unit number quite obviously redacted.

1. The probative value of Mr Cheng’s Property List, a typed list of addresses, is very slight. Even in combination with Mr Cheng’s sworn statement that it lists properties ‘sold or exchanged, leased from August 2015’, precisely what any item on that list is evidence of is left at a such a level of vagueness that it leaves his claim almost unverifiable. The only scrap of information linking the Burwood address in that list to a photograph of the building showing the Trade Mark is Mr Cheung’s submission on behalf of the Applicant made at the hearing that the two things were connected. Similarly, there is nothing other than Mr Cheung’s submission at hearing that the Advice of Lodgement of a rental bond is

2. related in any way to that photograph. Even were there evidence that the Applicant’s Services had been offered by the Applicant in relation to the address in Burwood and that property was linked with the above photograph, the fact that the Trade Mark appears in the lower left corner of the image does not establish that it was used as a trade mark in or around August 2015. It appears simply as an undated photograph with a watermark superimposed upon it. There is no evidence that it was included, for example, in any advertising material offering the Applicant’s Services.

1. The Applicant has not established that it used the Trade Mark earlier than the Opponent’s use of a substantially identical mark.

Decision and costs

1. Section 55 of the Act relevantly provides:

   55 Decision

   (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.

   Note: For limitations see section 6.

1. The Opponent has established the s 58 ground of opposition, so I have decided that the Trade Mark shall be refused registration in one month from the date of this decision. If  the Registrar is served with a notice of appeal before that time, I direct that refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

1. The Opponent asked that an award of costs me made. Costs usually follow the event. I have not been presented with any reason to make an exception in this matter. Accordingly, I award costs against the Applicant in the applicable amounts set out in sch  8 of the Regulations.

Adrian Richards Hearing Officer

Oppositions and Hearings Trade Marks and Designs

28 June 2019