Re: Opposition by Southcorp Brands Pty Ltd to registration of trade mark application 1854825 (33) - MAISON RICH (Fancy) in the name of BIN-VIN(Shanghai)Trading Co., Ltd

[2020] ATMO 27

TRADE MARKS ACT 1995

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

Re:Opposition by Southcorp Brands Pty Ltd to registration of trade mark application 1854825 (33) – MAISON RICH (Fancy) in the name of BIN-VIN(Shanghai)Trading Co., Ltd.

Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented Applicant: Yunpeng Teng
Decision:	2020 ATMO 27 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 62A considered – ground established – registration refused

Background

1. This decision concerns an opposition brought by Southcorp Brands Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of BIN-VIN(Shanghai)Trading Co., Ltd. (‘Applicant’): 

Application Number:

1854825

Filing Date:

27 June 2017

Goods:

Class 33: Cocktails; Digesters (liqueurs and spirits); Wine; Spirits (beverages); Brandy; Rum; Vodka; Alcoholic beverages (except beer); Alcoholic beverages containing fruit; Baijiu (Chinese distilled alcoholic beverage)

(‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

2. Following the advertisement on 16 November 2017 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 13 December 2017.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 15 January 2018. The SGP raised grounds of opposition under ss 42(b), 44, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 12 February 2018.

Evidence

1. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 16 May 2018.  This evidence consists of a declaration by Andrew Geoffrey Butler, Trade Marks Attorney for the then Opponent’s representative, made on 16 May 2018 with Exhibits AGB-1 to AGB-11 (‘Butler Declaration’).  The Applicant did not file any Evidence in Answer.

   4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 5 December 2018 the parties were notified that as a hearing had not been requested the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions upon which they wished to rely.  On 5 June 2019 the Opponent filed submissions in this matter (‘Opponent’s Submissions’).  The Applicant did not file any submissions.

   5. On 5 June 2019, the Opponent sought to file further evidence in this matter, being the declaration of Anna Gabrielle Gibson, director of Intellectual Property for Treasury Wine Estates, made on 5 June 2019 (‘Gibson Declaration’). 

   6. Section 54 of the Act states that the Registrar must give to the Opponent and to the Applicant the opportunity to be heard on the Opposition. Neither the Act nor the Trade Marks Regulations 1995 (‘Regulations’) requires the Register to consider late-filed submissions or oblige the Registrar to reject late-filed submissions, rather Regulation 21.15(4) of the Trade Marks Regulations 1995 states that the Registrar may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate.  In the present proceeding, the Gibson Declaration contained directly probative material relevant to this proceeding, none of which could have been filed as part of the EIS (as it related to the conduct of the Opponent after the EIS had been filed).  A serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the Registrar for the making of that decision, subject to considerations of public interest, such as the speedy resolution of proceedings before the Registrar.  I note that the Applicant has taken no active part in this matter and hence is unlikely to be disadvantaged in a procedural sense by me having regard to the Gibson Declaration.

   7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

2. The Opponent is an Australian company that is the wholly owned subsidiary of Treasury Wine Estates Limited and the producer of wine sold under various well-know wine brands including Penfolds.

3. The relevant claims/statements in the Butler Declaration can be summarised as follows:

   ·     The Opponent’s Penfolds brand is Australia’s most famous wine brand having been in existence since 1844.  The Penfolds brand has a reputation for high quality wine, including the iconic Grange range, produced since 1951.

   ·     The Penfolds brand is used either in plain word font (‘Penfolds Mark’) or red cursive script (‘Script Mark’), which is commonly displayed on the Opponent’s Penfolds wine.  The Opponent extensively promotes the Penfolds brand, including through advertising and marketing featuring both the Penfolds Mark and the Script Mark, and sales of wine under the brand are extensive.

   ·     The Opponent and its parent company are constantly under attack from companies based in China that seek to misappropriate key elements of the Opponent’s branding, including the Script Mark, the Penfolds Mark, its transliteration ‘Ben Fu’ and the Chinese character version of the Penfolds Mark (‘Opponent’s Marks’).

   ·     The Chinese character version of the Penfolds Mark may be translated into English as ‘Rush Rich’.

   ·     The Applicant appears to be the same corporate entity as Shanghai Huan Yan International Trade Co., Ltd, and is part of a group of interrelated corporate entities that share ownership and directors (including Eastern Tomorrow (Jinjiang) Import & Export Co., Ltd, Jinjiang Pernod Ricard Wine Co., Ltd and RUSH RICH International Trading Co., Ltd) (‘Applicant Group’) that have collectively engaged in behaviour in China and Australia that has involved the misappropriation of the Opponent’s branding.  The Applicant Group has been involved in numerous proceedings in China and Australia in connection with attempts to register and use trade marks which are similar to the Opponent’s Marks, including marks such as RUSH RICH and marks featuring the Chinese character version of the Penfolds Mark.

   ·     The Opponent is also the owner of the trade mark MAISON DE GRAND ESPRIT and a series of related trade marks which it has registered throughout the world (including in Australia as Trade Mark No. 1244985).  The Trade Mark simply reproduces the word MAISON from the Opponent’s trade mark no. 1244985 and RICH being the second word from the translation of the Chinese character version of the Penfolds Mark.

   ·     In summary the Applicant, at the date of application, was aware of the Opponent and seeks to register the Trade Mark as part of a pattern of behaviour engaged in by the Applicant Group (including registering other marks similar to the Opponent’s Marks) of attempting to pass itself off as the Opponent.  In the present case that amounts to seeking to register a mark that comprises one word from the Applicant’s MAISON DE GRAND ESPIRIT Mark and one word from the translation of the Chinese character version of the Penfolds Mark.  Such conduct falls short of commercially acceptable behaviour. 

4. The Exhibits to the Butler Declaration contain details of the Opponent’s trade mark registrations, the renown of the Penfolds Mark and the MAISON DE GRAND ESPRIT Mark, the connection between the various entities of the Applicant Group and details of the Applicant Group’s attempts to register various marks in Australia and China that are similar to the Opponent’s Marks.   

5. The relevant claims/statements in the Gibson Declaration can be summarised as follows:

   ·     The Applicant Group has continued to file trade mark applications that reflect the Opponent’s registered trade marks.  In particular following the decision of this office in Southcorp Brands Pty Ltd v Eastern Tomorrow Jinjaing Import & Export Co Ltd[1] (a member of the Applicant Group), the Applicant Group continued to apply to register various marks that correspond with the Opponent’s brands from different related entities that are part of the Applicant Group.

   [1] [2018] ATMO 118.

   ·     Various entities in the Applicant Group have been subject of a default judgement in the Federal Court and a judgement in the Shanghai Pudong District People’s Court in respect of their conduct, either involving the infringement of the Opponent’s registered trade marks or engaging in unfair competition through the making of false allegations.

   The Applicant

   12.     The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

   Grounds of Opposition, Onus and Standard of Proof

   13. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 62A. Accordingly, I have found it necessary to discuss this ground only. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

   14.     The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is 27 June 2017 (‘relevant date’), being the priority and filing date of the application in Australia.[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 62A

6. Section 62A of the Act is reproduced below:

   62A Application made in bad faith

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

7. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

   ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

   ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

   ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

8. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[5]:

   [5] [2004] EWCA Civ 1028; [2005] FSR 10.

   Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

   … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[6]

   [6] [2012] FCA 81, [147].

9. Her Honour continued later in the same decision:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[7]

   [7] Ibid [165]-[166].

   19.      Her Honour also noted with approval a number of cases in which bad faith was found in specific circumstances as set out below:

   In William Leith New Century Marquees (SRISO/018/00, UK Registry), the applicant applied to register a trade mark in respect of marquees, tents and related goods, although aware that NEW CENTURY was the opponent’s trade mark in the United States of America and that the opponent had started to trade in the United Kingdom under the trade mark. He was himself a customer and the delegate found that he should have been aware that the opponent could be expected to expand that trade, if it had not already done so. He had previously proposed a licence arrangement with the opponent although its terms were not clear. The delegate of the Registrar concluded:

   Mr Leith subsequently adopted the sign NEW CENTURY MARQUEES as his own trade mark, and he used it in the UK. When he was challenged about this he sought to register the mark in combination with his own name. In my view, the mark he has applied to register is confusingly similar with the mark NEW CENTURY.
   ...
   It is difficult to see how a person who applies to register a mark in his own name which he has previously recognised as the property of a potential overseas principal can be said to be acting in accordance with acceptable standards of commercial behaviour. I do not believe that combining the mark with the applicant’s own name is any answer to that criticism.[8]

   [8] Ibid [151].

   …

   In Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, Hearing Officer Nancarrow held that applications to register the trade marks HARD COFFEE MAIN BEACH and HARD COFFEE were made in bad faith within the meaning of s 62A, where a company controlled by the applicant’s controller had previously obtained a licence from the opponent’s predecessor in title to use the HARD COFFEE MAIN BEACH trade mark, acknowledging in that context that it had not purchased any right, title or interest in the names and that the vendor retained title to all related intellectual property rights. The Hearing Officer considered that in the circumstances, the director clearly understood that the trade mark in question remained the property of the opponent in respect of coffee shops.[9]

   [9] Ibid [153].

   …

   In Pritchard Pacific Pty Ltd Baltimore Aircoil (Australia) Pty Ltd v Brendan McCarrison and Breezewater Pty Ltd [2011] ATMO 46, the delegate upheld opposition to the registration of a trade mark for, inter alia, cooling towers and like apparatus and related services, on grounds including bad faith under s 62A of the Act. The delegate found that the applicant’s controller had a prior business connection with and knowledge of the opponent, such that a person standing in his shoes should have known that he should not apply for the registration of a trade mark deceptively similar to that used by his former business partner (at [42]).[10]

   [10] Ibid [156].

10. The Opponent has particularised this ground of opposition in the SGP as follows:

    The Applicant is affiliated with a number of Chinese entities by virtue of shared directorship and a common corporate group. The Opponent and a number of those affiliated companies are known to each other, having been previously or currently engaged in various trade mark oppositions and civil actions in China and in other countries involving the Opponent’s trade marks and the Opponent’s wines. It is reasonable to infer that the opposed application has been filed in the name of a company related to the companies already known to the Opponent in an attempt by the Applicant to avoid the application being detected by the Opponent. It is also reasonable to infer that the Applicant is trying to derive some benefit from the reputation enjoyed by the Opponent in its various trade marks by obviously and deceitfully coining a trade mark which is a combination of two elements which have a connection with trade marks of the Opponent which are otherwise unrelated. Furthermore, the opposed trade mark can be represented in the same manner as the Opponent’s well known Penfolds trade mark and the Opponent has grounds to believe that the opposed trade mark will be so used. Moreover, the Opponent has reason to believe that wines bearing the opposed trade mark are destined for the Chinese market in order to compete unfairly with the Opponent’s products there. This conduct falls short of commercially acceptable behavior.

11. In the absence of any evidence in answer I accept the evidence of the Opponent in this matter.  The Applicant is an entity that is connected to the Applicant Group.  The Applicant seeks to register a mark for wine that takes elements to the Opponent’s well-known Penfolds brand and the MAISON DE GRAND ESPIRIT Mark, each of which are well-known and highly regarded wine brands in Australia.  The Applicant has done so clearly aware of the Opponent and its Penfolds brand, since the Applicant Group has made frequent and repeated attempts to register marks that are similar to the Opponent’s Marks for wine. 

12. In the absence of any alternative explanation of the Applicant’s conduct I consider that the application to register the Trade Mark was part of a pattern of conduct by the Applicant Group in both seeking to register trade marks and engaging in broader conduct with the aim of passing itself off and misappropriate the goodwill of the Opponent (and in particular the goodwill the Opponent has in its Penfolds brand and related products).  When the Opponent has sought to oppose (in each prior case successfully) the Applicant Group’s registrations, rather than contest the opposition proceedings the Applicant Group has applied to register additional marks that correspond to the Opponent’s brands (including the present mark, applied for after the opposition proceeding in Southcorp Brands Pty Ltd v Eastern Tomorrow Jinjaing Import & Export Co Ltd[11] had commenced), but in the name of a related entity. In view of the actions taken by the Applicant Group since approximately 2016, it is difficult to ascribe any motives to the Applicant’s filing of the present trade mark application that do not involve bad faith.  The Applicant certainly provides no evidence or submissions to suggest otherwise. I am satisfied that the Applicant’s conduct falls short of the ‘standards of acceptable commercial behaviour observed by reasonable and experienced persons’.[12] I find that the Opponent has established the ground of opposition under s 62A.

    [11] [2018] ATMO 118.

    [12] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [77].

    Decision

    23. I have found the Opponent has established the ground of opposition it raised pursuant to s 62A of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

    Costs

    24. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs in respect of trade mark number 1854825 against the Applicant under s 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.  

    Nicholas Smith
    Hearing Officer
    Oppositions and Hearings

    24 February 2020