Re: Opposition by Xiaomei Wang to application by Aurinda Pty Ltd to remove trade mark number 1487950 (5) Aurinda in the name of Xiaomei Wang

[2021] ATMO 57

TRADE MARKS ACT 1995

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

Re:Opposition by Xiaomei Wang to application by Aurinda Pty Ltd to remove trade mark number 1487950 (5) - AURINDA - in the name of Xiaomei Wang

Delegate:	Louise Tuohy
Representation:	Opponent: Sebastien Aymeric and Gemma Smith of James & Wells Intellectual Property Applicant: David Larish of Counsel instructed by LegalVision ILP Pty Ltd
Decision:	2021 ATMO 57 Trade Marks Act 1995 (Cth) – section 96 opposition to 92(4)(b) application for removal in respect of all goods – application successful; trade mark will be removed from Register

Background

1. Xiaomei Wang (‘Removal Opponent’) is the registered owner of the following trade mark:

   Registration number: 1487950

   Trade Mark:               AURINDA (‘Trade Mark’)

   Specification:             Class 5: Albumin dietary supplements; alginate dietary supplements; bee glue (propolis) dietary supplements; carbohydrate based dietary supplements; casein dietary supplements; dietary supplements for animals; dietary supplements for infants; enzyme dietary supplements; food supplements (dietary supplements); glucose dietary supplements; herbal dietary supplements; lecithin dietary supplements; linseed dietary supplements; linseed oil dietary supplements; mineral dietary supplements for animals; mineral dietary supplements for humans; non-carbohydrate dietary supplements; plant compounds for use as dietary supplements (medicinal); plant compounds for use as dietary supplements (veterinary); plant extracts (dietary supplements); pollen (dietary supplement); pollen dietary supplements; propolis dietary supplements; protein dietary supplements; royal jelly dietary supplements; wheat germ dietary supplements; yeast dietary supplements (‘Goods’)

1. Aurinda Pty Ltd (‘Removal Applicant’) applied on 4 July 2019 under the provisions of s 92(4)(b) of the Trade Marks Act 1995 (Cth)(‘Act’) seeking removal of the Trade Mark in respect of all of the Goods.

2. On 25 September 2019 the Trade Mark was removed from the Register because the removal application was not opposed. On 5 November 2019 the Removal Opponent filed an application for extension of time to oppose the removal of the Trade Mark, in addition to its Notice of Intention to Oppose removal and Statement of Grounds and Particulars (‘SGP’). On 10 March 2020 this office granted the extension of time and the Trade Mark was restored to the Register.[1]

   [1] The Trade Mark was therefore not to have been removed from the Register as per s 98 of the Act.

3. This office informed the parties of the grant of the extension of time, gave the Removal Applicant a copy of the SGP, and informed it of the due date for its Notice of Intention to Defend (‘NID’). The Removal Applicant filed its NID on 20 March 2020.

4. The Removal Opponent filed the following declarations as evidence in support and evidence in reply:

   • Declaration by Xiaomei Wang, the Removal Opponent, made on 29 June 2020 with Exhibits XW-1 to XW-25, (‘Wang 1’); and

• Declaration by Xiaomei Wang, made on 24 November 2020, (‘Wang 2’).

1. The Removal Applicant filed the following declaration as evidence in answer:

   • Declaration by Guoguang Tao, sole shareholder and director of Tas Mania Pty Ltd the holding company of the Removal Applicant, made on 24 September 2020, with Annexures A to C, (‘Tao’).

2. I heard the matter in Canberra on 16 June 2021, as delegate of the Registrar of Trade Marks. Sebastien Aymeric and Gemma Smith of James & Wells Intellectual Property appeared via video link on behalf of the Removal Opponent. David Larish of Counsel appeared via video link on behalf of the Removal Applicant. The representatives’ oral submissions were supported by written submissions filed prior to the hearing.

Legal Framework

Part 9 of the Act deals with removal of trade marks from the Register due to non-use.

1. Section 92(4)(b) of the Act provides:

92  Application for removal of trade mark from Register etc.

[…]

(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:

[…]

(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.

[…]

1. The Removal Applicant alleges that the Removal Opponent did not use the Trade Mark in the course of trade in Australia at any time in the three year period ending on 4 June 2019 (‘Relevant Period’).

2. Pursuant to s 100 of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b). The Removal Opponent can rebut the allegation by establishing that it used the Trade Mark in good faith in relation to the Goods in the Relevant Period.[2]

   [2] Section 100(3) of the Act.

3. In Woolly Bull Enterprises Pty Ltd v Reynolds,[3] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92 of the Act, namely it is ‘real, as opposed to token, use in a commercial sense’. Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[4] Little weight is to be given to assertions of use which are not supported by documentary evidence.[5]

   [3] [2001] FCA 261, [16].

   [4] Ibid [17].

   [5] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8.

1. The burden of proof is the ordinary civil standard of the balance of probabilities.[6]

   [6] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

2. In accordance with s 101 of the Act, if grounds for removal are established I may decide to remove the Trade Mark from the Register in respect of any or all of the Goods, or, if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.

Discussion

1. In the SGP the Removal Opponent particularises its rebuttal of the s 92(4)(b) ground as follows:

   The AURINDA word mark the subject of Registration 1487950 (the ‘Mark’) has been used in Australia in relation to class 5 goods since at least August 2017, including Propolis Soft Gel Capsules (500mg), Liquid Calcium Soft Gel Capsules, Coenzyme Q10 Hard Shell Capsules, Lecithin Soft Gel Capsules and Goat Milk Tablets. Significant quantities of these goods have been manufactured, packaged and labelled in Australia.

   Xiaomei Wang (the ‘Owner’) has granted licences to use the Mark to other parties in Australia since at least January 2017. In particular, GMP Pharmaceuticals Limited (GMP) has been manufacturing AURINDA branded gel capsules since at least January 2017 in Girrawen, New South Wales for direct export to China.

   In addition, AURINDA branded Coenzyme Q10 Hard Shell Capsules and Lecithin Soft Gel Capsules gained approval from the Australian Department of Health’s Therapeutic Goods Administration in September and November 2018, respectively.

2. Confining the evidence to documents from within the Relevant Period, Wang 1 provides the following copies of documents showing use of the Trade Mark:

   • Exhibit XW-4 is a Tax Invoice issued by GMP for Goat Milk Tablets, dated 23 September 2016;
   • Exhibit XW-7 is a Tax Invoice issued by GMP for Children’s Fish Oil Capsules, dated 19 December 2017;
   • Exhibit XW-9 is a Tax Invoice issued by GMP for Propolis Soft Gel Capsules, dated 14 December 2018;
   • Exhibit XW-11 is a Tax Invoice issued by GMP for Propolis Soft Gel Capsules and Liquid Calcium Soft Gel Capsules, dated 17 August 2018;
   • Exhibit XW-19 is a Tax Invoice issued by GMP for Coenzyme Q10 Hard Shell Capsules, dated 20 February 2019; and
   • Exhibit XW-22 is a copy of an Australian Register of Therapeutic Goods Certificate issued to GMP for the approval to supply Lecithin Soft Gel Capsules under the Trade Mark, dated 9 November 2018.  

3. The above detailed Exhibits show use of the Trade Mark in relation to Goat Milk Tablets, Children’s Fish Oil Capsules, Propolis Soft Gel Capsules, Liquid Calcium Soft Gel Capsules, Coenzyme Q10 Hard Shell Capsules, and Lecithin Soft Gel Capsules. However, the invoices and the Therapeutic Goods Administration approval are all in the name of GMP Pharmaceuticals Pty Limited (‘GMP’) and not the Removal Opponent.

4. To clarify this issue Wang 1 states the Removal Opponent granted a licence to GMP to manufacturer gel capsules under the Trade Mark in Australia for direct export to China. In this regard, Note 1 to s 100(3) of the Act states that if the registered owner of a trade mark has authorised another person to use it, any authorised use of the trade mark by that other person is taken to be a use of the trade mark by the registered owner.

5. Section 8 of the Act defines an ‘authorised user’, and ‘authorised use’ as follows:

6. Definitions of authorised user and authorised use

   (1)  A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

   (2)  The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

   (3)  If the owner of a trade mark exercises quality control over goods or services:

   (a)  dealt with or provided in the course of trade by another person; and

   (b)  in relation to which the trade mark is used;

   the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

   (4)  If:

   (a)  a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

   (b)  the owner of the trade mark exercises financial control over the other person’s relevant trading activities;

   the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

   (5)  Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

7. This makes clear that use of a trade mark by an authorised user, will only be taken to be use by the registered proprietor of the trade mark if the latter exercises control over the use of the trade mark during the Relevant Period so as to maintain a connection in the course of trade between the goods and the owner. That can be achieved if, for example, either quality control or financial control is exercised.[7]

   [7] See Ceramiche Caesar S.p.A v Caesarstone Ltd [2020] FCAFC 124; Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100; and Lodestar Anstalt v Campari America LLC [2016] FCAFC 92.

8. In Wang 1 the Removal Opponent claims GMP is an authorised user on the basis that GMP’s use of the Trade Mark is pursuant to an oral licence agreement. The Removal Opponent submits that it exercises control over GMP because, all use of the Trade Mark must be approved by the Removal Opponent. Wang 1 also claims the Removal Opponent has access to GMP’s records as they pertain to its use of the Trade Mark. Wang 2 further claims that the Removal Opponent is a close relative of GMP’s sole shareholder/director.

9. In my consideration, these statements are insufficient to demonstrate that control existed during the Relevant Period. I make this finding without hesitation since a bare licence, even one reduced to writing, has been held to be insufficient for this purpose.[8] On that basis the mere assertion of a licence is certainly not, sufficient to establish control within the meaning of s 8 of the Act. In the absence of any corroborating evidence, simply asserting that GMP’s use of the Trade Mark must be approved by the Removal Opponent without explaining any process or mechanism by which such approval is obtained provides an insufficient basis to find there was actual control. Likewise, having access to GMP's records such as invoices and approvals or having an alleged familial relation to GMP's director does not, without more, establish any control was actively exercised by the Removal Opponent during the Relevant Period. For these reasons, I find that GMP is not an authorised user of the Trade Mark for the purposes of the Act. Therefore, I am not satisfied that the Removal Opponent or an authorised user as contemplated by the Act has used the Trade Mark during the Relevant Period in relation to the Goods.

   [8] Lodestar Anstalt v Campari America LLC [2016] FCAFC 92, [184].

10. Furthermore, the Removal Opponent does not claim nor does the evidence raise matters which could be regarded as obstacles to use of the Trade Mark in the Relevant Period, pursuant to s 100(3)(c) of the Act.

11. The ground for removal under s 92(4)(b) of the Act has been established in respect of all of the Goods.

Registrar’s Discretion

1. Section 101(3) of the Act provides:

101  Determination of opposed application—general

[…]

(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.

[…]

1. The Removal Opponent bears the onus of satisfying the Register that the discretion under s 101(3) ought to be exercised in its favour.[9]

   [9] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273].

2. The question to be asked is whether it is reasonable not to remove the Trade Mark in respect of the Goods, even though the Removal Opponent did not establish that it had used the Trade Mark in relation to the Goods.[10]

   [10] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28].

3. The Removal Opponent has requested the Registrar’s discretion be exercised to allow the Trade Mark to remain registered for all of the Goods because the Trade Mark has acquired a reputation in Australia as a result of its continuous and extensive use.

4. I am not satisfied that there have been any sales or promotion of the Trade Mark in relation to the Goods within the relevant period, or a residual reputation resulting from use of the Trade Mark in relation to the Goods in Australia outside that time. While Exhibit XW-1 provides GMP’s sale figures for the period 2016 to 2019, which I would assess as being moderate, there is no evidence other than by assertion to indicate that these sales are connected to the Removal Opponent. 

5. Even if I were to find a connection between the Removal Opponent and GMP, the evidence is that GMP manufactured to export directly to China. Further, the invoices provided are redacted so they do not establish that there are any local retailers or consumers of goods offered under the Trade Mark. It is unclear how such business activity could support a finding that the Trade Mark enjoys a reputation in Australia.

6. The Tao declaration shows that the Removal Applicant has a genuine commercial interest in registering its pending trade mark application no. 2011406, however it does not wish to do so while the Trade Mark remains on the Register.[11]

   [11] See Tao [17]-[18], [Annexure C].

7. Whilst acknowledging the broad discretion available under s 101(3) of the Act, having considered all the claims and material before me, and in the absence of any detailed submissions or persuasive evidence from the Removal Opponent in this regard, I am satisfied that it is in the public interest for the Trade Mark to be removed from the Register in respect of all the Goods.

Decision

1. I find the Removal Opponent has not rebutted the allegation of non-use. I direct that trade mark registration 1487950 be removed from the Register in respect of all Goods to which the registration applies, one month from the date of this decision. In the event of an appeal, I direct that the Trade Mark will not be removed until the appeal has been discontinued or, in the event of a decision from the Court, that the Trade Mark be subject to that order.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Opponent as allowed by Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Louise Tuohy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
29 June 2021