Southcorp Brands Pty Limited v Eastern Tomorrow (Jinjiang) Import & Export Co Ltd

[2020] ATMO 59

TRADE MARKS ACT 1995

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

Re:Opposition by Southcorp Brands Pty Limited to registration of trade mark application number 1858413 (class 33) – R & R ESTATE (Figurative) - in the name of EASTERN TOMORROW (JINJIANG) IMPORT & EXPORT CO., LTD.

Delegate:	Kate Doherty
Representation:	Opponent: Herbert Smith Freehills Applicant: Yunpeng Teng
Decision:	2020 ATMO 59 Trade Marks Act 1995 (Cth) – opposition under section 52 – Grounds of opposition pursued ss 59 and 62A; s 62A stablished; trade mark will not proceed to registration.

Background

1. This is an opposition decision after an oral hearing in Canberra on 7 February 2020. I heard the matter as Delegate of the Registrar of Trade Marks in relation to the following trade mark under the Trade Marks Act 1995 (‘the Act’):

Trade Mark No:               1858413

Trade Mark:    (‘Trade Mark’)

Words:  R & R ESTATE

Filing date:   12 July 2017

Applicant:  EASTERN TOMORROW (JINJIANG) IMPORT & EXPORT CO., LTD.

Specification of Goods: (at time of filing):  Class 33

1. The Trade Mark was advertised accepted on 5 July 2018.  A Notice of Opposition was filed on 14 August 2018 by TREASURY WINE ESTATES AUSTRALIA LIMITED (‘The Opponent’).  Southcorp Brands Pty Ltd is a subsidiary of Treasury Wine Estates Limited.[1]  On 15 October 2018, the Applicant filed a Notice of Intention to Defend the Opposition. The Statement of Grounds and Particulars (‘SGP’) nominates grounds of opposition under ss 59 and 62A.

[1] Gibson Declaration, [1].

Evidence

1. Summary of evidence received from the Opponent.

Declarant	Party	Evidence Stage	Date	Annexures	Decision Reference
A Gibson	Opponent	EIS	22 January 2019	AGG 1-42	Gibson Declaration
A Gibson	Opponent	EIS	22 January 2019	AGG 43-45	Second Gibson Declaration

The declarations annex evidence which includes copies of: product images, confidential sales figures, magazine articles, material associated with industry awards, as well as product images of goods for sale in situ.

1. The Opponent is the owner of a number of trade marks including the following registered trade mark:

Words:        Penfolds

Image description:  (‘Opponent’s Mark’)
Kind: Fancy
Trade Mark No: 1061216
Filing date: 20 June 2005

Class 33:      Alcoholic beverages
Endorsement: The Mandarin transliteration is ‘Ben Fu’.

1. The Applicant has previously made an Australian trade mark application for the following mark, which was refused by the Registrar following a defended Opposition hearing.  Importantly, one of the findings by the Delegate was that the term ‘Rush Rich’ is an approximate translation of the Opponent’s Mark in the Mandarin characters:[2]

Words:        RUSH RICH

Image description:    (‘Refused Mark’)

Kind:   Fancy
Trade Mark No:       1757197
Filing date:                7 March 2016

Class 33:  Fruit extracts (alcoholic); Baijiu (Chinese distilled alcoholic beverage); Vodka; Brandy; Spirits (beverages); Digesters (liqueurs and spirits); Liqueurs; Rice alcohol; Aperitifs; Wine

[2] SouthCorp Brands Pty Limited v Eastern Tomorrow Jinjiang Import and Export Co Ltd [2018] ATMO 38; 135 IPR 271 [28].

1. Written submissions were received from the Opponent only.  The Applicant took no action in the proceedings other than to file a Notice of Intention to Defend.  Only the s 62A ground was pressed at the hearing.

Onus and Standard of Proof

1. The relevant standard of proof is the civil standard, or “on the balance of probabilities”.[3] 

   [3] Pfizer Products Inc v Karam (2006) FCA 1663 per Gyles J at [6] to [26].

2. The Opponent bears the onus of proof in an Opposition Hearing.[4]  The application will succeed if the nominated ground is established.  The rights of the parties are determined at the date of filing the application, the relevant date is 12 July 2017.

Grounds of Opposition

[4] Food Channel Network Pty Ltd v Television Food Network GP (2010) FCAFC 58 [32].

Section 62A – Application made in bad faith

1. Section 62A of the Act provides:

   62A Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. The s 62A ground is nominated by parties in trade mark hearing disputes reasonably frequently but the ground is rarely successfully established.[5]  The reason for this is often that only bad faith in connection with the application process can be assessed.  Bad faith, fraud, misconduct or deception alleged to have occurred in relation to other business practices or agreements is not automatically relevant to an assessment of s 62A.   This ground is not a catch-all provision for any dispute which may have occurred between the parties.

   [5] Section 62A was introduced by the Trade Marks Amendment Act 2006, prior to this the Registrar was not empowered to refuse or remove marks on a ground of bad faith; see also: DC Comics v Cheqout Pty Ltd[2013] FCA 478 at [62]. 

3. Section 62A is discussed in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) per Kenny J:3F[6]

   By September 2004, Mr Fry, a director of Fry Consulting, was well aware of Sports Warehouse’s online retail store and the fact that Sports Warehouse sold goods to Australia through that website.  His visits to that online retail store led him to cause Fry Consulting, in September 2004, to register the business name “Tennis Warehouse”; to register the domain name and to set up an online tennis retail store at that domain name in competition with Sports Warehouse.  Mr Fry adopted the name knowing that it would cause confusion between Fry Consulting’s and Sports Warehouse’s online stores.  Indeed, the potential for such confusion was why he chose the name.  Furthermore, in developing the Fry Consulting website, Mr Fry took images from the Sports Warehouse website.

The Opponent’s Mark appeared on the Register many years before the Trade Mark.[7]

[6] [2012] FCA 81 [62].

[7] See [1] and [4] above.

Company Structure

1. A substantial amount of evidence was filed in relation to company structures and the identity and positions of various officers binding those companies in Australia and overseas. [8]  It is not relevant to vicariously consider the actions of other companies, or third-party bad faith in relation to the application before me.  Once the non-use ground was abandoned, a large amount of the evidence filed by the Opponent was not relevant to this opposition.

   [8] Gibson Declaration, [7]-[33], [38], [43]-[46], [51], [58], [59] – [60], [91] – [92], Second Gibson Declaration.

2. I do not find that the company structure is relevant pursuant to the s 62A ground. 

Residual Reputation of Refused Mark

1. The Trade Mark and the Refused Mark both share the same image and composition, similar capitalised font and share alliteration with two prominent letter ‘R’s.  The dominant cognitive clues are the same shadowed outlines of structures which resemble the chess piece known as a ‘Rook’, with an additional prominent feature of identical graduated arches.[9]  There are differences in font and text.  Despite the addition of the word ‘Estate’ in the Trade Mark the two marks are substantially identical.[10]  The word ‘Estate’ is synonymous with the wine industry and is unlikely to be a memorable feature.

Refused Trade Mark  Trade Mark

[9] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) FCAFC 83.

[10] Without conflating the s 44 ground, I find it is appropriate on these facts to apply test for substantially identical pursuant to The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) HCA 66 [12].

1. The Trade Mark is strikingly similar to the Refused Trade Mark which has already been removed pursuant to the s 62A ground of bad faith for the same class of goods.[11]  The evidence shows that the Refused Mark was in widespread use.[12]  The risk that the reputation of the Refused Mark has endured is too great to entertain registration of the Trade Mark. [13] Any finding of similarity is not necessary pursuant to s 62A, but on these facts and where significant use of the Refused Mark is apparent the consequence of the Trade Mark being so similar to the Refused Trade Mark is insurmountable. 

   [11] SouthCorp Brands Pty Limited v Eastern Tomorrow Jinjiang Import and Export Co Ltd [2018] ATMO 38.

   [12] Gibson Declaration, [34] AGG12-AGG16.

   [13] Trade Mark 1757197, filed 7 March 2016 for Class 33 Fruit extracts (alcoholic); Baijiu (Chinese distilled alcoholic beverage); Vodka; Brandy; Spirits (beverages); Digesters (liqueurs and spirits); Liqueurs; Rice alcohol; Aperitifs; Wine.

2. It would not necessarily follow that any application containing the words ‘R & R Estate’ would be refused, only that the Trade Mark in this application is too similar to the Refused Mark.   I do not find the plain words ‘R and R Estate’ similar to ‘Rush Rich’ or the Opponent’s other mark, Rawson’s Retreat.[14]   However, there is evidence of the terms ‘Rush Rich’ and ‘R & R Estate’ both subsisting together in another discrete trademark application which would provide a challenge for any future applications which included those terms.[15]    

   [14] Gibson Declaration, [6].

   [15] Gibson Declaration, [61](d), [63].

3. I find the Trade Mark is substantially identical to the Refused Mark.[16]  On the facts significant evidence of use for the Refused Mark has been provided and the risk that the reputation would survive in that mark and lead to confusion with the Trade Mark is overwhelming.[17]   

[16] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; 109 CLR 407 [12].

[17] Gibson Declaration [68] – [69], [79] – [88].

Failure to File Evidence

1. Accepting the Applicant’s Trade Mark at the highest, an intention for a rebranding strategy giving a legitimate purpose to their business might be implied. [18]  Even where a bona fide attempt to legitimise the business is assumed, the substantially identical appearance of the Trade Mark with the Refused Mark does not permit this imputation to stand.[19]

   [18] Gibson Declaration, [43].

   [19] Pfennig v The Queen (1995) 182 CLR 461, 481, although this test has been distinguished in litigation I find it is unnecessary to consider any modifications in an administrative context as the high threshold has been met.

2. The Applicant failed to respond to the SGP in any way.  Much of the evidence required to mitigate the Opponent’s submissions could have expected to have been in the knowledge of the Applicant. While no adverse implication flows from this it can be assumed that any information would not have assisted the Applicant’s case. [20]

   [20] Jones v Dunkel [1959] HCA 8; 101 CLR 298 per Kitto J [1]; Evidence Act 1995 (Commonwealth), ss 6 and 20.

3. I am satisfied that at the date of application for the Trade Mark, the Applicant’s conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.[21]  I find that the s 62A ground of opposition is established.

[21] DC Comics v Cheqout Pty Ltd [2013] FCA 478; 212 FCR 194 [77].

Decision

1. The Opponent has established the s 62A ground of opposition.  Pursuant to section 55(1), the Trade Mark number 1858413 will not proceed to registration. 

2. The parties may appeal this decision to the Federal Court in accordance with s 56 of the Act. If the Registrar has been served with notice of appeal, I direct that the Trade Mark shall not be removed from the Register until the appeal has been decided or discontinued.

Costs

1. Costs ordinarily follow the event for an Opposition Hearing.  Although the Opponent has been successful, I find that the matter was dispatched with some unnecessary complication.[22]  More than 2000 pages of evidence were filed, one ground was abandoned, and a new paginated version of the evidence was filed with the thirty five pages of submissions close to the hearing.

   [22] Cranbrook School v Wylie (2004) 63 IPR 222; [2004] ATMO 49 (Reg).

2. I therefore decline to make a direction under s 221 of the Act for any costs in the relevant amounts prescribed by Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Kate Doherty
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
21 April 2020