Shandong Linglong Tyre Co., Ltd. v Mitsubishi Jidosha Kogyo Kabushiki Kaisha

[2024] ATMO 121

TRADE MARKS ACT 1995

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

Re:Opposition by Mitsubishi Jidosha Kogyo Kabushiki Kaisha to an application under section 92 of the Trade Marks Act 1995 (Cth) by Shandong Linglong Tyre Co., Ltd. for removal of trade mark number 793018 (12) – EVO – in the name of Mitsubishi Jidosha Kogyo Kabushiki Kaisha

Delegate:	Nicholas Smith
Representation:	Opponent: Spruson & Ferguson Applicant: W.S. Li
Decision:	2024 ATMO 121 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Opponent’s evidence shows authorised use of the Trade Mark for the Registered Goods during the relevant period – Trade Mark to remain on the Register

Background

1. This decision is pursuant to an application made on 21 April 2022 under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Shandong Linglong Tyre Co., Ltd. (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	793018
Lodgement date	5 May 1999
Goods	Class 12: Motor vehicles and parts and accessories therefor included in this class (‘Registered Goods’)
Owner	Mitsubishi Jidosha Kogyo Kabushiki Kaisha
Trade Mark	EVO (‘Trade Mark’)

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Mitsubishi Jidosha Kogyo Kabushiki Kaisha (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 27 June 2022 and a Statement of Grounds and Particulars (‘SGP’) on 25 July 2022.  The Applicant filed a Notice of Intention to Defend on 26 August 2022.

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support (‘EIS’)
Antonio Principe, Chief Business Advisor of Mitsubishi Motors Australia Limited (‘Principe declaration’)	29 November 2022	AP-1 to AP-26
Danielle Spath, employee with Spruson & Ferguson, the Opponent’s representative (‘Spath declaration’)	29 November 2022	DS-1 to DS-6
Evidence in answer
None filed
Evidence in reply
None filed

1. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 28 March 2023 the Applicant requested a hearing by written submissions and paid the appropriate fee.  The matter was set down for a hearing on 5 March 2024.  In line with usual practice, a letter was sent to the parties on 16 January 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 20 February 2024 (‘Opponent’s Submissions’).  The Applicant did not file any submissions.

2. I am a delegate of the Registrar of Trade Marks and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the evidence listed earlier in this decision:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Submissions. 

   The Relevant Provisions

3. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 relevantly 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:

      (a)  …

   (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.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

4. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 21 March 2022 (‘relevant period’).

5. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application for the Trade Mark,[1] and I confirm that five years since filing the application have in fact passed.

   [1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

6. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a) …
   (b)  …
   (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

7. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.

8. In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

9. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[4] Little weight is to be given to assertions of use which are not supported by documentary evidence.[5]  Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[6] 

   [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

   [4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

   [5] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Hearing Officer Wilson).

   [6] Act s 7(3).

10. The principles when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

    Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

    Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

    The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[7]

    [7] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

    Discussion

11. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[8]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)). 

    [8] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

12. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

    Use of the Trade Mark in the relevant period

13. The Opponent’s main evidence in this respect consists of a declaration by Antonio Principe, Chief Business Advisor of Mitsubishi Motors Australia Limited, the Opponent’s wholly owned Australian subsidiary.  The Spath declaration solely concerns the Applicant and is not relevant to establishing the Opponent’s use of the Trade Mark in the relevant period.

14. In the Principe declaration the declarant states that the Opponent (and its wholly owned subsidiaries) offered a high-performance motor vehicle called the Mitsubishi Lancer Evolution, which is also referred to as the EVO.  It sold approximately 2,600 units of the Mitsubishi Lancer Evolution in Australia between 2004 and 2016 after which it ceased manufacturing the vehicle.  However, the Opponent, its wholly owned subsidiaries, and its dealer network continue to use the Trade Mark in connection with the second hand sale of the Mitsubishi Lancer Evolution and also in respect of offering spare parts and servicing in respect of the vehicles and did so continuously from 2016 to the date of the declaration, including throughout the relevant period.  The Principe declaration also gives evidence as to the significant Australian reputation of the Trade Mark, as the EVO vehicles are high-performance vehicles that have been very successful in Australian and world rally racing, as well as having been featured in movies such as the Fast and Furious movie series.

15. The annexures to the Principe declaration contained detailed documentation which establish:

    ·      the sale of the Mitsubishi Lancer Evolution in Australia until 2016;

    ·     the use of the Trade Mark as a trade mark in connection with the Mitsubishi Lancer Evolution, including on the Opponent’s websites, and in car showrooms, where the vehicle is referred to as the EVO.  There is also evidence of third party usage of the Trade Mark to describe the vehicle produced by the Opponent.

    ·     that there have been used car sales of the Mitsubishi Lancer Evolution in the relevant period (though the documentation does not use the Trade Mark);

    ·     that second hand Mitsubishi Lancer Evolution vehicles have been exhibited for sale by the Opponent or its wholly owned subsidiaries in the relevant period;

    ·     that the Opponent offered parts and servicing for the Mitsubishi Lancer Evolution through the relevant period; and in particular on its website, it offers ‘evo parts’ and ‘evo service’.

16. Based on the material before me I am satisfied that the Opponent has used, or authorised the use by its wholly owned subsidiaries, the Trade Mark in respect of motor vehicle parts and accessories in the relevant period.  While the evidence is less complete, I am also satisfied that the Opponent has used, or authorised the use by its wholly owned subsidiaries, the Trade Mark in respect of vehicles in the relevant period.  Specifically, I consider that the evidence establishes that the Trade Mark was used, and continues to be used as a Trade Mark in respect of a particular type of Mitsubishi vehicle (and parts and service in respect of that vehicle) and that the Opponent’s wholly owned subsidiaries were responsible for the sale of a number of second-hand vehicles in the relevant period and hence there was use of the Trade Mark in respect of vehicles in the relevant period. 

17. I am satisfied that the Principe declaration shows evidence of use of the Trade Mark for the Registered Goods in the relevant period. As such, it has satisfied the onus under s100(3)(a) of the Act.

    Decision

18. I decide that the Opponent has established its opposition to removal and the Trade Mark should not be removed from the Register. Accordingly, I decide not to remove trade mark registration 793018 from the Register in relation to any of the goods for which it is registered.

    Costs

19. The Opponent has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    2 July 2024