Shenzhen Futu Network Technology Co Ltd v Tingting Chen

[2024] ATMO 136

TRADE MARKS ACT 1995

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

Re:Opposition by Shenzhen Futu Network Technology Co., Ltd to registration of trade mark application number 2185995 (class 36) - FU·TU (figurative) - in the name of Tingting Chen

Delegate:

Tracey Berger

Representation:

Opponent: Remarkable IP

Applicant: Duncan Cotterill Lawyers

Decision:

2024 ATMO 136

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 58, 59 and 62A pursued – s 62A ground of opposition established – trade mark application refused

Background

1. This decision concerns an opposition brought by Shenzhen Futu Network Technology Co Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the following trade mark which is the subject of the application detailed below:

Trade mark:  (‘Trade Mark’)

Number:  2185995 (‘Application’)

Owner:  Tingting Chen (‘Applicant’)

Filing date:  11 June 2021

Specification:                   Class 36: Financial consultation in the field of investment and commodity trading; securities brokerage; bonds brokerage services; investment of funds; conducting research in the field of financial investment and commodity trading for businesses; providing information in the field of financial investment and commodity trading for others and for businesses via a website (‘Services’)

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

2.     The acceptance of the Trade Mark for possible registration was advertised on 8 November 2022.  The Opponent filed a Notice of Intention to Oppose on 2 January 2023, followed by its Statement of Grounds and Particulars (‘SGP’) on 6 January 2023.  The Applicant filed a Notice of Intention to Defend the opposition on 28 February 2023.

3.     On 5 June 2023, the Opponent filed its evidence in support of the opposition consisting of a declaration of Li Hua, General Manager and majority shareholder of the Opponent, made on 2 June 2023 with Exhibits LH1 to LH14 (‘Hua’).  The Applicant did not file any evidence in answer.

4.     Once the evidence stage ended, the parties were given the opportunity to be heard.  The Opponent requested a hearing by written submissions and filed those submissions on 20 May 2024.  The Applicant did not ask to be heard.  As a delegate of the Registrar of Trade Marks, this matter has been allocated to me to determine based on the aforementioned materials. 

Grounds of opposition, onus and standard of proof

5. The SGP nominated grounds of opposition under ss 42(b), 58, 59, 60 and 62A of the Act. The s 60 ground of opposition is not pressed and I treat that ground as abandoned.

6.     To be successful, the Opponent bears the onus of establishing at least one of these grounds.[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 11 June 2021 (‘Relevant Date’), being both the filing and priority date of the Trade Mark.

[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 Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

and Edelman JJ).

Opponent’s evidence

7.     The Opponent was established on 18 December 2007 and has been principally engaged in the research and development of Internet products and technologies since 2009.  The Opponent’s products and services have been offered under the mark (‘Opponent’s Mark’)and variations thereof (collectively ‘Opponent’s Marks’).  Examples of use of the Opponent’s Marks in Hong Kong and China for financial services before the Relevant Date are provided (with English translations).

8.     The Opponent is a subsidiary of Futu Holdings (‘Parent Company’) which is listed on the NASDAQ exchange since 2019 and is the holding company for various subsidiaries operating digitized brokerage and wealth management platforms internationally.  The Parent Company’s subsidiaries include Futu Securities International (Hong Kong) Limited (‘Opponent’s HK Subsidiary’) and Futu Securities (Australia) Ltd (‘Australian Subsidiary’).  The Opponent’s HK Subsidiary has operated a website at since December 2014 which describes the company as ‘Asia’s top-ranked online broker’ and had over 13,000 visits from Australians between 1 January 2019 – 11 June 2021.  Details of visitors from China, the USA, Canada, Singapore and the UK are also provided.  The Opponent’s Australian Subsidiary registered the domain name in 2017 and has operated a website at this domain since December 2021 providing online brokerage services.

9.     Hua claims that its Parent Company has extensively marketed and promoted its business.  Details of the Parent Company’s annual global marketing expenditure for 2020-2022 (inclusive) are provided with extracts of its annual reports showing the annual revenue which is extremely substantial.

10.   According to Hua, in the course of his employment by the Opponent, Mr Hua sketched the Opponent’s Mark and refined it using computer software, completing the design on 18 December 2007.  The Opponent’s Mark is a combination of the letter F design, ‘FU’ meaning fortune and ‘TU’ meaning treasure.  The Opponent registered copyright in the Opponent’s Mark in China on 2 June 2022 claiming first publication on 18 December 2007.

11.   The Opponent’s Mark as a whole and marks containing either or both of the separate elements of the F Device and FUTU, have been registered as trade marks in the United States of America, China, Hong Kong and Singapore.

12.   Hua notes that the Applicant is a Chinese individual who filed the Application and three other Australian trade mark applications on the Relevant Date for marks which Hua alleges the Applicant does not own, details of which I extract below: 

Application	Trade Mark	Status
2186063	Withdrawn
2185982	Lapsed
2186061	Lapsed

13.   Hua alleges that the true owner of the mark Tiger Brokers & Device is Tiger Fintech (Singapore) Pte Ltd, WEBULL and  are owned by the Chinese company Webull Financial LLC, and   and MOOMOO are owned by the Opponent.  In support of this contention, Hua annexes copies of certificates of registration (and English translations) of its marks  and MOOMOO in other countries before the Relevant Date.

14.   Moreover, Hua attests that online searches have not revealed any use of the Trade Mark or the above three marks by the Applicant which the Opponent submits raises a presumption that the Applicant does not intend to use the Trade Mark for the Services and also lacks ‘the business infrastructure and/or financial wherewithal’ to provide the Services.  Hua also declares that its enquiries have not revealed any evidence that the Applicant has an Australian Financial Services Licence to provide the Services in Australia.

Discussion

Section 62A

15. Section 62A provides that a trade mark may be opposed on the grounds that the application for the mark was made in bad faith.

16.   The basis for this ground of opposition is that at the time of filing the Application, the Opponent’s Marks would have been well known to the Applicant, who like the Opponent is based in China, and that the Opponent has a history of applying for the trade marks of other traders.  Further, despite the Opponent notifying the Applicant of its rights in December 2022, the Applicant did not withdraw the Application.  Accordingly, the Opponent claims that the Applicant’s conduct falls short of the standards of acceptable commercial behaviour.

17. The term ‘bad faith’ is not defined in the Act. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith which include:

• 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.

18.   Justice Bennett considered the concept of bad faith and summarised the relevant principles in DC Comics v Chequout Pty Ltd:

·     Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.

·     Bad faith does not require dishonesty.

·     Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

·     The question is whether the conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.

·     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.[4]

[4] [2013] FCA 478, [62].

19.   The Opponent argues that its evidence establishes that the Applicant has engaged in a pattern of behaviour of applying for trade marks which they do not own or have permission to use and as a Chinese resident, the Applicant knew of the Opponent’s Marks and its use thereof for the same services as those claimed in the Application. 

20.   Given the size of the Parent Company’s business, I agree that the Applicant was more than likely aware of the use of the Opponent’s Marks prior to the filing of the Application.  Further, I agree with the Opponent that this awareness is the only rational explanation for the Applicant’s adoption of the same stylised letter F in combination with the element FU·TU.  This is particularly so given that the other applications filed by the Applicant, in Australia on the same day as the Application, incorporated other marks of the Opponent and apparently also those of third parties.  The Applicant has not filed any evidence or submissions to explain its adoption of the Trade Mark or contesting the Opponent’s claim that the Applicant has engaged in a pattern of behaviour in filing applications for registration of other traders’ trade marks.  In my view, in the circumstances, the only reasonable conclusion is that the Applicant’s motivations in filing the Application were unscrupulous and fall short of acceptable commercial behaviour.

21. The Opponent has established a ground of opposition under s 62A.

Decision

22.   The Opponent has established a ground of opposition and I refuse to register the Trade Mark.

23. Further, the Opponent has sought is costs in the opposition and as costs generally follow the event, I award costs against the Applicant under s 221 in accordance with Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

26 July 2024