Red Generation Corporation Limited v Luckin Coffee Group Co. Ltd

[2022] ATMO 126

TRADE MARKS ACT 1995

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

Re:Opposition by Red Generation Corporation Limited to registration of trade mark application number 2073099 (class 7) – luckin coffee EXPRESS with device - in the name of Luckin Coffee Group Co. Ltd

Delegate:

Katrina Brown

Representation:

Opponent: Alvaro Del Barco, New Zealand and Madrid Limited

Applicant: Benjamin Gardiner of Counsel, instructed by McCullough Robertson Lawyers

Decision:

2022 ATMO 126

Trade Marks Act 1995 (Cth) – opposition under section 52 – ground pursued under s 44 – ground not established – trade mark to proceed to registration

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Red Generation Corporation Limited (‘Opponent’) to the registration of the following trade mark:

   Trade mark number:  2073099

   Trade mark:  

   (‘Trade Mark’)

   Applicant:  Luckin Coffee Group Co. Ltd[1] (‘Applicant’)

   Filing date:  3 March 2020

   Goods:Class 7 - Aquarium pumps; fodder presses; electric hair clipping machines for animals; paring machines; papermaking machines; printing presses; spinning wheels; dyeing machines; butter machines; juice extractors, electric; tobacco processing machines; leather-working machines; stitching machines; bicycle assembling machines; potters' wheels; engraving machines; cord making machines; bottle filling machines; electric coffee grinders; washing machines (laundry); disintegrators; machines for processing plastics; glass-working machines; electromechanical machines for chemical industry; cutters (machines); oil refining machines; stamping machines; metalworking machines; hydraulic turbines; scissors, electric; spray guns for paint; pumps for heating installations; garbage disposal units; filtering machines; vending machines; galvanizing machines (‘Applicant’s Goods’)

   [1] A full assignment from Beijing Luckin Coffee Technology Co., Ltd to Luckin Coffee Group Co. Ltd was recorded on 18 August 2021.

2. The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 4 August 2020.

3. The Opponent filed a Notice of Intention to Oppose on 28 September 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 13 October 2020.

4. The Applicant filed a Notice of Intention to Defend on 12 January 2021.

5. The Opponent filed the following declarations as evidence in this opposition:

   ·Declaration of Alvaro Eduardo Del Barco De Alarcon (Opponent’s Agent) made on 5 February 2021 with Exhibits 1 to 19; and

   ·Declaration of Alvaro Eduardo Del Barco De Alarcon made on 13 September 2021 with Exhibits 1 to 4.

6. The Applicant filed the following declaration as evidence in this opposition:

   ·Declaration of Jinyi Guo (Chief Executive Officer of Applicant) made on 9 July 2021 with Exhibits 1 to 4.

7. Once the time allowed for filing evidence ended, the parties requested a hearing. The matter was heard by me, a delegate of the Registrar of Trade Marks, on 20 July 2022. The Opponent was represented by Alvaro Del Barco of New Zealand and Madrid Limited. The Applicant was represented by Benjamin Gardiner of Counsel, instructed by Alison Walshe and Harriet Young of McCullough Robertson Lawyers.

   Grounds of opposition, onus, and relevant date

8. In the SGP, the Opponent particularised a single ground of opposition under s 44 of the Act.

9. The Opponent bears the onus of establishing the ground of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

10. The date at which the rights of the parties are to be determined is 3 March 2020 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

    Section 44

11. Section 44 of the Act relevantly provides:

    (1)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

    (a)  the applicant’s trade mark is substantially identical with, or   deceptively similar to:

    (i) a trade mark registered by another person in respect of   similar goods or closely related services; or

    (ii) a trade mark whose registration in respect of similar goods   or closely related services is being sought by another person;   and

    (b)  the priority date for the registration of the applicant’s trade mark   in respect of the applicant’s goods is not earlier than the priority   date for the registration of the other trade mark in respect of the   similar goods or closely related services.

12. To succeed the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services.

13. In the SGP, the Opponent identifies trade mark numbers 2077170 and 2101205 (‘Opponent’s Registrations’) as the basis for this ground of opposition. The details of the Opponent’s Registrations are as follows:

Trade mark no.	2077170	2101205
Trade mark	(‘Registration 170’)	(‘Registration 205’)
Owner	Opponent	Opponent
Priority date	7 October 2019	10 January 2020
Specification	Class 7 – automatic vending machines	Class 7 – manufacturing robot

1. From the information set out above, it is evident that the Opponent’s Registrations are held in a name other than that of the Applicant, and the priority dates are earlier than the Relevant Date.

2. My next consideration is whether the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Registrations. I will concentrate my analysis on Registration 205. If I am not satisfied that the Trade Mark is substantially identical with, or deceptively similar to Registration 205, I would not reach a different conclusion in respect of Registration 170.

   Substantially identical

3. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

   they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

   [4] [1963] HCA 66, [12] (Windeyer J) (‘Shell’).

4. The Trade Mark consists of the words ‘luckin coffee EXPRESS’ in combination with the silhouette of a deer inside a circle. Registration 205 consists of the words ‘Lukkin Leo’ with a cartoon like depiction of a tiger inside a circle. A total impression of resemblance does not emerge from the required comparison; there are clear differences between the Trade Mark and Registration 205 that are unlikely to go unnoticed in a side by side comparison. Consequently, I do not consider the Trade Mark to be substantially identical with Registration 205.

   Deceptively similar

5. Section 10 of the Act defines deceptively similar as:

   a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

6. In Shell, Windeyer J provided the following insights on deceptive similarity:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[5]

   [5] [1963] HCA 66, [13].

7. As such, I must estimate the impression that a person of ordinary intelligence and memory would have of the Trade Mark and of Registration 205. I must consider the look, sound and idea conveyed by the trade marks, allowing for imperfect recollection.

8. The Opponent submits that the trade marks are deceptively similar due to the presence of the similar word elements ‘luckin’ and ‘Lukkin’. I agree that ‘luckin’ and ‘Lukkin’ are visually and aurally similar. However, the trade marks must be considered in their entirety.[6] There are numerous other word and device elements in each of the trade marks which cannot simply be ignored; those elements must be accorded due weight when conducting the comparison of the Trade Mark and Registration 205.

   [6] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [92].

9. Each of the trade marks contains word elements in addition to luckin/Lukkin. The additional words are visually, aurally, and conceptually dissimilar. The additional distinctive word element in Registration 205, namely ‘Leo’, bears no resemblance in look, sound or meaning to ‘coffee’ or ‘express’, the additional word elements in the Trade Mark. Furthermore, there is no apparent logical nexus or close association between ‘Leo’ and ‘coffee’ or ‘express’.

10. The trade marks also contain device elements. The Opponent submits that these elements are similar as they are both animals in circles. This characterisation of the similarity is overly simplistic. The device elements in each of the trade marks are relatively complex and intricate and it is therefore unlikely that a consumer would describe them with such a high level of abstraction as animals in a circle. The device element in Registration 205 is a cartoonish depiction of the head and torso of a tiger in a circle. Contrastingly the Trade Mark contains the silhouette of a deer in front of a circle. The impression of the device in the Trade Mark is that of a deer in the moonlight, significantly different to that of the cartoon tiger in Registration 205.

11. The trade marks (as a whole) also convey different ideas. Noting the alliteration and placement of the words ‘Lukkin Leo’ directly underneath the cartoon of a tiger, the likely impression that a person of ordinary intelligence and memory would have of Registration 205 is that of a tiger named Lukkin Leo. The Trade Mark conveys no such idea. At best, the Trade Mark conveys an idea about the speed of luckin’s coffee.

12. In determining whether there is a likelihood of deception or confusion I must also consider the surrounding circumstances.[7] The Opponent submits that the Applicant’s conduct in amending the specification when the opposition was afoot and electing not to file a notice of intention to defend in a different opposition proceeding are surrounding circumstances which weigh in the Opponent’s favour. The Opponent also draws my attention to oppositions between the parties in other jurisdictions.

    [7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] ALR 115, 594 (Kitto J).

13. I do not find the Opponent’s submissions in relation to the surrounding circumstances sufficiently compelling. With respect to the Applicant’s conduct, the Applicant did amend its specification of goods after the SGP was filed, and it also chose not to defend the registration of trade mark number 2072607 LUCKIN POP MINI. The Opponent asserts that this conduct of the Applicant amounts to ‘an express admission that the [Trade Mark] is in fact substantially identical, or at least deceptively similar to the [Opponent’s Registrations]’. I do not agree that the Applicant’s conduct is an admission, express or otherwise. The inference that the Opponent asks me to draw is speculative at best. There is nothing before me to establish the motivation for the Applicant’s conduct; there are any number of reasons for amending a specification or for electing not to file a notice of intention to defend. Furthermore, my role is to decide whether the s 44 ground is established with respect to the trade mark that is the subject of this opposition, and with respect to the specification as it currently stands.

14. Additionally, the mere fact that the parties are involved in oppositions in other jurisdictions is of no assistance to the Opponent. It does little more than demonstrate the intent of each of the parties to pursue its rights (as it sees them) in various jurisdictions. The Opponent has specifically drawn my attention to a decision made by the Korean IP Office, in which the Trade Mark and the Opponent’s Registrations were found to be similar. Firstly, I note that I am not bound by a decision made in another jurisdiction. Secondly, little weight can be given to decisions made in other jurisdictions due to differences in trade mark legislation and practice concerning the comparison of trade marks, in addition to differences in culture and circumstances of trade. In this regard I note the following observations of Delegate Thompson in Pfizer Products Inc v Viaguara S.A:

    Additionally, the evidence of the success of the parties (or lack of it) in other jurisdictions is not of great weight: considerations of deceptive similarity occur within local cultural, linguistic, phonetic and legal contexts and these differ from country to country. Prolonged consideration of the decisions in other countries is likely to be as unproductive as consideration of prior registrations on the Australian register of trade marks.[8]

    [8] [2010] ATMO 27, [32] (citation omitted).

15. Considering all the above, I am not satisfied that there is a real and tangible danger of deception or confusion. In my opinion, when considered as wholes, the Trade Mark and the Opponent’s Registrations contain numerous elements which set them apart from each other notwithstanding the points of similarity between the words ‘luckin’ and ‘Lukkin’.  

16. The s 44 ground of opposition has not been established.

    Decision

17. Section 55 of the Act relevantly provides:

    (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.

18. The Opponent has not established the ground of opposition.

19. Accordingly, trade mark number 2073099 may proceed to registration one month from the date of this decision.

20. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order of direction.

    Costs

21. Both parties have requested that costs be awarded. As the Applicant has been successful, I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

    Katrina Brown

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    29 July 2022