Smartchannel Pty Ltd v Zhicheng Chen

[2016] ATMO 2

TRADE MARKS ACT 1995

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

Re:Opposition by Smartchannel Pty Ltd to registration of trade mark application 1567491(7) - GENTRAX - filed in the name of Zhicheng Chen.

Delegate:	Jock McDonagh
Representation:	Opponent: Francesca Colubriale of Spruson and Ferguson, Patent and Trade Mark Attorneys Applicant: David Mills, business associate of the Applicant
Decision:	2016 ATMO 2 Section 52 opposition – ground pursuant to s 58 established - application refused

Background

1. This is an opposition brought by Smartchannel Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Zhicheng Chen (“the Applicant”):

Application Number:                1567491

Trade Mark:  GENTRAX                  (“the Opposed Mark”)

Priority Date:      9 July 2013                 (“the Priority Date”)

Goods:Class 7: Alternating current generators; Brushes being parts of generators; Current generators; Diesel electric generators; Direct current generators; Electric alternating current generators; Electric current generators; Electric current generators for use with telecommunications apparatus; Electric generators; Electric generators in combination with steam engines; Electric power generators; Electric power supplies (generators); Electric power supply apparatus being generators; Electricity generators; Emergency power generators; Emergency power supply generators; Engine driven generators; Gas operated power generators; Generators; Generators of electricity; Inert gas generators (machines); Mobile electric power generators; Power generators for vehicles; Power installations (generators); Power sources (generators); Power supply apparatus (generators); Power supply devices (generators); Power supply units (generators); Power units (generators); Protection gas generators; Reserve Electric power supply apparatus (generators); Steam operated power generators; Tacheometric generators; Tachometer generators; Vacuum generators; Welding current generators

(“the Claimed Goods”)

1. The application (‘the Trade Mark’) was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 5 December 2013. The Opponent filed Notice of Intention to Oppose the registration of the Trade Mark on 4 February 2014, followed by a Statement of Grounds and Particulars (‘the Statement’) on 4 March 2014.  Thereafter the Applicant filed Notice of Intention to Defend on 30 April 2014. The Opponent filed evidence in support as provided by the Trade Mark Regulations 1995 (‘the Regulations’). No evidence was filed by the Applicant.

2. I heard the matter as one hearing in Sydney on 12 October 2015 as a delegate of the Registrar of Trade Marks. Francesca Colubriale of Spruson and Ferguson, Patent and Trade Mark Attorneys, represented the Opponent. The Applicant was represented at the hearing by a business associate, Mr David Mills.

Grounds of Opposition

1. The Opponent nominated five grounds of opposition in the Statement: under sections 42, 58, 59, 60 and 62A of the Act. At the hearing, the Opponent only pressed the section 58 ground. The onus is upon the Opponent to establish this ground on the ‘balance of probabilities’.[1]

   [1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 (4 November 2015), following Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39], Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, (2009) 82 IPR 13 at [22] – [27] and Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

2. The time at which the grounds of opposition must be established is the date of filing of the application[2].

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

Evidence

1. The evidence consists of the following declarations:

Declarant	Position	Date Made	Annexures
Evidence in Support
Feng Wei (‘Wei 1’)	Director of Opponent	1.08.14	FW-1 to FW-4
Evidence in Answer
Zhicheng Chen (‘Chen’)	Applicant	27.10.14
Evidence in Reply
Feng Wei (‘Wei 2’)	Director of Opponent	30.01.15	FW-5

Discussion

1. On 15 September 2015, by email I directed the parties to file any written submissions to be relied upon prior to the hearing; the Opponent by 25 September 2015, and the Applicant by 2 October 2015. Upon request by the Opponent’s attorneys, I allowed the parties an additional week for filing the submissions.

2. I received the Applicant’s submission on 8 October 2015. The submissions also included attachments that appeared to be intended to be used as further evidence in these proceedings. Further, the attachments appear to be derived from Mills International Trading Pty Ltd, a different legal entity from the Applicant. There is no evidence in these proceedings to explain the relationship between these separate legal entities.

3. I immediately advised the parties of my conclusion and that I would not be taking the attachments into consideration at the hearing, nor in exercising the delegation of the Registrar in deciding the matter.

4. At the hearing, Mr Mills submitted that he was the employer of the Applicant. He also submitted that he had originally taken the opposition to be some sort of ‘joke’ by the Opponent, about whom he made uncomplimentary allegations regarding the Opponent’s business activities in competition to his own. As a result, the selection of Evidence in Answer had been perfunctory and not considered as carefully as it should have been.

5. At the hearing, I confirmed that only the evidence that had been properly filed in time would be taken into consideration.

6. Section 58 of the Act is reproduced below:

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

7. The applicable law regarding ownership of a trade mark in Australia is well known.  As eloquently put by Hearing Officer Michael Kirov it in L.T. Overseas Limited v Chemico Pty Ltd [2008] ATMO 44 at [18]:

   The word “owner” is not defined in the Act, although there are numerous decisions where courts have considered its meaning. It is well established that in the absence of fraud the owner of a trade mark in Australia for particular goods is taken to be the first person to use it in the course of trade in Australia in relation to those goods[3] (or in relation to goods considered to be “the same kind of thing”).[4]

   [3] Seven Up Co v OT Ltd (1947) 75 CLR 203.

   [4] Re Hicks’ Trade Mark (1897) 22 VLR 636.

8. The reference to a trade mark includes one that is at least substantially identical to it[5]. Obviously, the Opponent’s trade mark and the Opposed mark are the same.

   [5] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049

9. The Opponent’s evidence establishes that it used GENTRAX as a trade mark in Australia in connection with the sale and promotion of inverter generators before the Priority Date of the Opposed Mark. The facts of this prior use may be summarized as follows:

• The Opponent first sold inverter generators under or by reference to its GENTRAX trade mark in Australia in April 2013: Wei 1, [7], [8].

• The Opponent has adduced evidence of copies of sales receipts relating to the supply of GENTRAX generators, the earliest of which is dated 8 April 2013: Wei 1, Exhibit FW-4.

• The Opponent has also adduced evidence of copies of emails confirming the sale of GENTRAX branded generators by the Opponent on e-Bay, the earliest of which is dated 7 April 2013; Wei 1, Exhibit FW-1.

• The number of units of GENTRAX branded generators sold by the Opponent in Australia from April 2013 and up to the Priority Date is substantial and detailed in We1 1, Confidential Exhibit FW-3.

1. I am satisfied that the generators sold by the Opponent are the same kind of thing as the Claimed Goods.

2. The Applicant’s Evidence in Answer comprised an 18 page “list of sales records exported from one of our systems showing a range of sales of Gentrax branded items”. While the list does refer to product descriptions including the Opposed mark and ‘generators’, the earliest sale date is 22 January 2014, which is well after the first date established by the Opponent.

3. The Opponent has established to my satisfaction that it has been the first person to use the Opposed Mark in the course of trade in Australia in relation to the same, or the same kind of, goods as the Claimed Goods before the Priority Date of the Opposed mark. This ground of opposition has been established.

Decision

1. Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:

   …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.

   Note: For limitations see section 6.

2. I have found the opposition to be successful on the ground raised pursuant to s 58 of the Act. Therefore, subject to any appeal from my decision, I refuse to register trade mark application number 1567491.

Costs

1. In the event of success Ms Colubriale sought an award of costs in the Opponent’s favour.  As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Regulations.

Jock McDonagh
Hearings Officer
Trade Marks Hearings

7 January 2016