Sharetea Australia Pty Ltd v Lian Fa International Dining Business Corporation

[2024] ATMO 75

TRADE MARKS ACT 1995

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

Re:Oppositions by Sharetea Australia Pty Ltd to registration of trade mark application numbers 2248751 (class 30), 2248761 (class 43) and 2248810 (class 35) – Share Tea EST. 1992 TAIWAN and Chinese characters (fig) – trade mark application numbers 2248764 (class 30), 2248766 (class 43), 2248808 (class 32) and 2248812 (class 35) – Share Tea (fig) – trade mark application numbers 2248806 (class 43) and 2248814 (class 35) – Share Tea EST. 1992 TAIWAN Bubblicious (fig) – each in the name of Lian Fa International Dining Business Corporation

Delegate:

Katrina Brown

Representation:

Opponent: Mills Oakley Lawyers

Applicant: Madderns Pty Ltd

Decision:

2024 ATMO 75

Trade Marks Act 1995 (Cth) – oppositions under s 52 – grounds pursued under ss 42(b), 43, 58, 59 and 60 – no grounds established – trade marks to proceed to registration

Background

1. This decision is in respect of oppositions under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Sharetea Australia Pty Ltd (‘Opponent’) to the registration of the following trade marks (‘Trade Marks’), each filed in the name of Lian Fa International Dining Business Corporation (‘Applicant’).

Trade mark number	Trade mark	Specification[1]
2248751	[2]	Class 30
2248761		Class 43
2248810		Class 35
2248808	Class 32
2248764	Class 30
2248766	Class 43
2248812	Class 35
2248806	Class 43
2248814	Class 35

[1] See Annexure A of this decision for the full specification of each of the Trade Marks.

[2] Each of these trade marks has the following endorsement: The applicant has advised that the Chinese characters appearing in the trade mark may be transliterated as XIE JIAO TING and translated into English as "take a rest, feet, a place".

1. Acceptance of each of the Trade Marks was advertised on 12 July 2022.

2. The Opponent filed Notices of Intention to Oppose each of the Trade Marks, followed by a Statement of Grounds and Particulars (‘SGP’) on 7 October 2022.

3. The Applicant filed Notices of Intention to Defend each of the Trade Marks on 21 November 2022.

4. Neither party filed evidence.

5. After the period for filing evidence ended, the Applicant requested that the matters be decided without hearing.

6. The matters have been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the material described in [3] of this decision.

Grounds of opposition, onus, and relevant date

1. In the SGP, the Opponent nominated grounds under ss 42(b), 43, 58, 59 and 60 of the Act. The grounds of opposition, and the particulars provided to support those grounds, are identical in respect of each of the Trade Marks.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition.[3] The standard of proof is the ordinary civil standard of the balance of probabilities.[4]

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

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

3. The date at which the rights of the parties are to be determined is 11 February 2022 (‘Relevant Date’) being both the filing and priority date of the Trade Marks.

Section 58

1. Section 58 of the Act provides:

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

2. In the SGP, it is asserted that the Applicant is not the owner of the Trade Marks because the Opponent was the first user of substantially identical trade marks in Australia.

3. The Opponent did not file any evidence in this matter. As such, no documentary evidence has been provided to substantiate the assertion that the Opponent was the first user of substantially identical trade marks in Australia.

4. In the absence of evidence, I cannot be satisfied that the Applicant is not the owner of the Trade Marks.

5. The ground of opposition under s 58 of the Act has not been established.

Section 59

1. Section 59 of the Act provides that registration of a trade mark may be opposed on the ground that the applicant does not intend to use, or authorise use of, the trade mark in Australia.

2. It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark.[5] The onus is on an opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date.[6]

   [5] Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J).

   [6] Aston v Harlee Manufacturing Co [1960] HCA 47, [21] (Fullagar J).

3. In support of the Opponent’s prima facie case, the SGP states the following:

   A licence agreement was entered into between the Opponent and the Applicant in 2012 or 2013. Despite the licence agreement, as at the priority date of the [Trade Marks] the Applicant had no intention to exercise sufficient control over the Opponent, within the meaning of “authorised user” in section 8 of the [Act].

4. No documentary evidence has been provided to substantiate the existence, or terms, of any licence agreement between the Opponent and Applicant. The material that is before me, namely the particulars in the SGP, does not rise above assertion.

5. I am not satisfied that the Opponent has made out a prima facie case that the Applicant lacked the requisite intention at the Relevant Date. Consequently, the ground of opposition under s 59 of the Act has not been established.

Section 60

1. Section 60 of the Act provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

2. To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Marks would be likely to deceive or cause confusion.

3. For the purposes of s 60 a reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[7] The Opponent did not file any evidence in this matter. As such, no documentary evidence has been provided to substantiate, as a matter of fact, that the Opponent, had a reputation in any trade mark in Australia at the Relevant Date.

   [7] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

4. Consequently, the ground of opposition under s 60 of the Act has not been established.

Section 42(b)

1. Section 42(b) of the Act provides that a trade mark must be rejected if its use would be contrary to law. In these matters, the Opponent relies on ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth).

2. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.[8]

   [8] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

3. In the SGP, it is asserted that due to the reputation of the Opponent in identical or deceptively similar trade marks, use of the Trade Marks by the Applicant would falsely suggest to consumers that the Applicant’s goods or services were those of the Opponent, or in some way connected with the Opponent.

4. As stated in relation to the s 60 ground of opposition, the Opponent has not provided documentary evidence to substantiate that it has a reputation in any trade mark in Australia. Where the case is framed as relying upon reputation, the absence of such evidence is fatal.

5. The ground of opposition under s 42(b) of the Act has not been established.

Section 43

1. Section 43 of the Act provides:

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. To succeed under this ground of opposition, the Opponent must establish that there is a connotation within the Trade Marks and, because of that connotation, the use of the Trade Marks by the Applicant would be likely to deceive or cause confusion.

3. The SGP states the following in respect of this ground of opposition:

   The use of the [Trade Marks] are likely to deceive or cause confusion because the connotations arising from the [Trade Marks] are false. Connotations arising from the [Trade Marks] include:

(i) The goods and/or services are related to those of the Opponent;

(ii) The goods and/or services are of the same kind, quality as those of the Opponent; and/or

iii) The goods and/or services are supplied by, or under, or with the authority of, the Opponent, or as having the approval of the Opponent.

1. A connotation is a secondary meaning implied by a trade mark.[9] In these matters, there is no evidence before me to establish that the Trade Marks contain any connotation that is likely to deceive or cause confusion. The Opponent has not provided any cogent basis to infer that the purchasing public, when presented with goods or services bearing the Trade Marks, would necessarily believe that the Opponent was in some way associated or connected with it.

   [9] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).

2. The ground of opposition under s 43 of the Act has not been established.

Decision

1. 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.

2. The Opponent has not established a ground of opposition. Accordingly, trade mark numbers 2248751, 2248761, 2248810, 2248808, 2248764, 2248766, 2248812, 2248806 and 2248814   may proceed to registration one month from the date of this decision.

3. 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 applications should otherwise be in accordance with the Court’s order or direction.

4. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle.

5. 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 Marks Regulations 1995 (Cth).

Katrina Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

26 April 2024

Annexure A

Trade mark number 2248751

Class 30: Tea-based beverages; Coffee; Cocoa; Cocoa beverages with milk; Ice cream; Edible ices; Cookies; Cereal based snack food; Bread; Cakes; Rice based snack foods; Noodle-based prepared meals; Ice pops

Trade mark number 2248761

Class 43: Cafes; Coffee shop services; Restaurant services for the provision of fast food; Snack bars (provision of food and drink); Restaurant services; Takeaway food and drink services; Bar services; Take-away restaurant services

Trade mark number 2248810

Class 35: Retail services; Wholesaling of goods (by any means); Providing commercial information and advice for consumers in the choice of products and services; Department store retailing; Advertising by mail order; Retail services relating to bakery products

Trade mark number 2248808

Class 32: Fruit drinks; Fruit juices; Smoothies; Lemonades; Orange juice; Non-alcoholic beverages flavored with tea; Non-alcoholic beverages flavored with coffee; Soft drinks; Soda water; Aerated mineral waters; Electrolyte replacement beverages for general and sports purposes; Sports drinks (non-medicated)

Trade mark number 2248764

Class 30: Tea-based beverages; Coffee; Cocoa; Cocoa beverages with milk; Ice cream; Edible ices; Cookies; Cereal based snack food; Bread; Cakes; Rice based snack foods; Noodle-based prepared meals; Ice pops

Trade mark number 2248766

Class 43: Cafes; Coffee shop services; Restaurant services for the provision of fast food; Snack bars (provision of food and drink); Restaurant services; Takeaway food and drink services; Bar services; Take-away restaurant services

Trade mark number 2248812

Class 35: Retail services; Wholesaling of goods (by any means); Providing commercial information and advice for consumers in the choice of products and services; Department store retailing; Advertising by mail order; Retail services relating to bakery products

Trade mark number 2248806

Class 43:  Cafes; Coffee shop services; Restaurant services for the provision of fast food; Snack bars (provision of food and drink); Restaurant services; Takeaway food and drink services; Bar services; Take-away restaurant services

Trade mark number 2248814

Class 35: Retail services; Wholesaling of goods (by any means); Providing commercial information and advice for consumers in the choice of products and services; Department store retailing; Advertising by mail order; Retail services relating to bakery products