Shenzhen Lixing Technology Co Ltd v Shiyu Zhang

[2025] ATMO 28

TRADE MARKS ACT 1995

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

Re:Opposition by Shenzhen Lixing Technology Co., Ltd to registration of trade mark application number 2417839 (class 21) - SAEEYCUE - in the name of Shiyu Zhang

Delegate:

Tracey Berger

Representation:

Opponent: Intellectual Property Strategy Pty Ltd

Applicant: PUOU IP

Decision:

2025 ATMO 28

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 58, 59 and 62A claimed – s 58 ground of opposition established for some goods and s 62A established for remaining goods – trade mark refused

Background

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Shenzhen Lixing Technology Co Ltd (‘Opponent’) to registration of the trade mark detailed below in the name of Shiyu Zhang (‘Applicant’):

Trade Mark:  SAEEYCUE (‘Trade Mark’)

Number:2417839 (‘Application’)

Filing Date:    2 January 2024           

Specification: Class 21:  Facial gua sha tools; Toilet paper holders; Non-electric kitchen devices for scraping; Clothing stretchers; Lint removers, electric or non-electric; Pestles for kitchen use; Covers for tissue boxes; Fruit bowls; Mug sleeves; Baking cases of silicone; Mop wringers; Rails and rings for towels; Trivets (table utensils); Containers for household or kitchen use; Drying racks for laundry (‘Applicant’s Goods’)

[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.  

1. Following the advertisement of acceptance of the Trade Mark for possible registration, on 10 June 2024, the Opponent filed both a Notice of Intention to Oppose registration of the Trade Mark and a Statement of Grounds and Particulars (‘SGP’) on 10 July 2024.  The Applicant filed a Notice of Intention to Defend on 18 July 2024.

2. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed its evidence in support (‘EIS’) on 20 August 2024 consisting of a Declaration of Janice Lai, Marketing Manager of the Opponent, made on 16 August 2024 with Exhibits JL-1 to JL-31 (‘Lai’). The Applicant did not file any evidence in answer.

3. Once the evidence stage concluded, the parties had the opportunity to request a hearing.  Neither party asked to be heard and the Opponent requested a decision without a hearing.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks and I do so based on the aforementioned materials.

Grounds, onus and Relevant Date

1. The Opponent’s SGP nominates grounds of opposition under ss 58, 59 and 62A.

2. The onus of proof in an opposition rests upon the Opponent.[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 2 January 2024, being the filing date of the application (‘Relevant Date’).[4]

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

   [3] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

Evidence

1. The Opponent, a Chinese company founded in 2016, specialises in retailing high quality skin care products, particularly Gua Sha tools and skin care devices (‘Opponent’s Goods’).  Gua Sha is a traditional Chinese skin scraping therapy. 

2. Lai claims that in 2021, the Opponent decided to introduce a global line of Gua Sha products under the mark SAEEYCUE through online platforms such as Amazon. 

3. The Opponent first used the mark SAEEYCUE for the Opponent’s Goods in the United States of America (‘US’) in 2021, primarily selling its products on Amazon US.  Screenshots of the Opponent’s Amazon SAEEYCUE store page are provided showing that the products were available from 5 April 2021. 

4. The Opponent’s Goods are also available for sale on Amazon AU and screenshots of sales of the Opponent’s Goods to Australian consumers dated from 7 September 2022 are provided. Lai also includes screenshots from Amazon AU showing that it first offered for sale products under the Trade Mark in Australia on 5 April 2021.

5. In addition to Amazon’s platforms, the Opponent sells its SAEEYCUE products through its website at (‘Opponent’s Website’).  Lai provides extracts from this website and evidence of sales through the Opponent’s Website to an Australian customer on 21 April 2021.  Analytics for Australian visitors to the Opponent’s Website are provided in Confidential Exhibit JL-24. Posts from the Opponent’s Instagram account illustrating use of the Trade Mark for the Opponent’s Goods before the Relevant Date are also exhibited.

6. Lai provides details of the Opponent’s US registration for the Trade Mark which was filed on 8 May 2021 and claims a date of first use in commerce of 12 April 2021.  The Opponent has also registered the Trade Mark in Canada and applied to register SAEEYCUE in the United Kingdom and Australia. 

7. Lai declares that it became aware of the Application through applying to register SAEEYCUE in Australia.  According to Lai, the Applicant has applied to register 55 trade marks in Australia ‘across various categories in a short period, many of which were already registered by others in the US’.  Lai provides a comparison of the first 20 marks of the 55 applications filed by the Applicant in Australia with the database records of the US Trade Marks Office which in each case shows an identical US trade mark in the name of another party with an earlier application date.

Discussion

Section 58

1. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

2. The term ‘owner’ is not defined in the Act. However, it is well established that the owner of a trade mark is the person who first uses it in Australia, or first files a trade mark for it in Australia, whichever is the earlier.

3. Therefore, to establish this ground of opposition, the Opponent must show that:

• the Trade Mark is identical or substantially identical to the mark relied on by the Opponent;[5]

• the Applicant’s Goods  are the same as the goods for which the Opponent claims to have used its mark;[6] and

• a person other than the Applicant has an earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to either (a) the application to register the Trade Mark or (b) any use of the Trade Mark by the Applicant in Australia, whichever is the earlier.[7]

  [5] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

  [6] Re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

  [7] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

1. In its SGP, the Opponent claims to have used the identical mark SAEEYCUE in Australia since before the Relevant Date for Gua Sha Scraping Tools, Lymphatic Drainage Massagers, Facial Energy Beauty Tools and Terahertz Stones.  I find that this claim is supported by the evidence in Lai which demonstrates use of the Trade Mark in Australia since April 2021 for the Opponent’s Goods.  There are a number of documented sales of the Opponent’s Goods to Australian consumers before the Relevant Date.  The mark used by the Opponent is identical to the Trade Mark and the goods sold by the Opponent are the same as the ‘Facial gua sha tools’ claimed in the Application.  The Applicant has not filed any evidence that it has used the Trade Mark in Australia.  Accordingly, I am satisfied on the evidence that the Applicant is not the owner of the Trade Mark for ‘Facial gua sha tools’.

2. However, the Application covers a range of other items and I must consider whether the Opponent’s Goods are the ‘same kind of thing’ as ‘Toilet paper holders; Non-electric kitchen devices for scraping; Clothing stretchers; Lint removers, electric or non-electric; Pestles for kitchen use; Covers for tissue boxes; Fruit bowls; Mug sleeves; Baking cases of silicone; Mop wringers; Rails and rings for towels; Trivets (table utensils); Containers for household or kitchen use; Drying racks for laundry’ (‘Applicant’s Other Goods’).

3. In relation to whether the goods are the ‘same kind of thing’, the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews[8] stated:

   The “same kind of thing” in respect of the goods or services of the parties does not equate to goods or services which may be “of the same description” (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership.[9]

   [8] Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14] (Hearing Officer N. Worth).

   [9] Colorado Group Limited v Strandbags Group Pty Ltd (‘Colorado’) [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) [1996] ATMO 16; (1996) 34 IPR 340.

4. To be the ‘same kind of thing’, the goods in relation to which the Trade Mark has been used must be ‘essentially the same’ as the Applicant’s Other Goods, though they may differ in size, shape and name.[10]   It is apparent that none of the Applicant’s Other Goods are the same kind of thing as the Opponent’s Goods.  The Opponent’s Goods are skin care and beauty tools whereas the Applicant’s Other Goods are products for use in the home, laundry and/or kitchen.  There is no similarity or nexus between these two sets of goods.

   [10] Colorado (n 9), [14] (Kenny J).

5. The s 58 ground of opposition is established for ‘Facial gua sha tools’ but is unsuccessful with respect to the Applicant’s Other Goods.

Section 62A

1. Pursuant to s 62A, registration of a trade mark may be opposed on the ground that the application was filed in bad faith.

2. The term ‘bad faith’ is not defined in the Act but 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.

1. There have been two Federal Court decisions that substantively considered s 62A: Fry Consulting v Sports Warehouse Inc (No 2)[11] and DC Comics v Cheqout Pty Ltd[12] (DC Comics). The following propositions emerge from each of these two decisions relevant to the present opposition:

   [11] [2012] FCA 81 (‘Dodds-Streeton J) (Fry Consulting).

   [12] [2013] FCA 478 (Bennett J) (DC Comics).

   (a)Bad faith for the purposes of s 62A must be [as at the priority date] and must relate to the making of the subject of the application:[13]

   (b)Section 62A does not require the opponent to establish that the trade mark’s use would result in deception or confusion. However, evidence to that effect may be persuasive in considering whether the application to register a mark was in bad faith:[14]

   (c)       The onus of proving bad faith rests upon the opponent:[15]

   (d)All of the circumstances surrounding the application to register the mark are relevant:[16]

   (e)The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading:[17]

   (f)While the seriousness of an allegation of bad faith that “impugns the character of an individual or collective character of a business” requires correspondingly cogent evidence, the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt[18]

   (g)Conduct which falls “short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area” is sufficient. Dishonesty is not required. Bad faith requires both subjective and objective elements; it is a combined test[19]

   (h)Subjective naivety does not exclude a determination of bad faith for the purposes of s 62A.

   [13] Fry Consulting (n 11), [145].

   [14] DC Comics (n 12), [76].

   [15] Fry Consulting (n 11), [145].

   [16] DC Comics (n 12), [62].

   [17] Ibid.

   [18] Fry Consulting (n 11). [145].

   [19] Ibid [147], [148] and [165].

2. In its SGP, the Opponent states:

   The applicant has filed 55 Australian trade mark applications between 28th August 2023 and 3rd June 2024. The applications were made across a range of classes. Several of these applications have been opposed. It is fanciful to believe that the applicant filed the application with legitimate commercial motive. Accordingly, the application was filed in bad faith.

3. Lai supports this claim by providing evidence that each of the first 20 trade marks filed by the Applicant in Australia is registered in the US in the name of another trader.  The Applicant has not filed any evidence or submissions to explain its adoption of the Trade Mark, what business connections the Applicant has to produce and/or sell goods across the wide variety of classes applied for nor has the Applicant contested 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, the Opponent has established a prima facie case that the Application was filed in bad faith and in the absence of any response from the Applicant, the only reasonable conclusion is that the Applicant’s motivations in filing the Application were unscrupulous and fall short of acceptable commercial behaviour.

4. The Applicant has established a ground of opposition under s 62A for the Applicant’s Other Goods.

Decision

1. Section 55 provides:

55  Decision

(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.

1. I have found that the Opponent has established grounds of opposition under ss 58 and 62A.  I therefore refuse to register the Trade Mark. 

2. If the Registrar is served with a notice of appeal, I direct that the refusal of the Trade Mark shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

3. The Opponent sought an award of costs. As the Opponent has succeeded in its opposition, I award costs against the Applicant under s 221 in the amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

7 February 2025