Southcorp Brands Pty Limited v Feng Wang and Feng Wang

[2022] ATMO 102

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 2077556 (33) - WeWine - in the name of Feng Wang and Feng Wang

Delegate:	Louise Tuohy
Representation:	Opponent: Self Represented Applicant: Self Represented
Decision:	2022 ATMO 102 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42, 60, 62A and 62 – sections 60, 62A and 62 pressed – none established – trade mark to proceed to registration.

Background

1. This opposition is brought by Southcorp Brands Pty Limited (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark in the name of Feng Wang and Feng Wang (‘Applicants’0F0F[1]):

   Application Number:             2077556

   Trade Mark:  (‘Trade Mark’)

   Filing Date:  24 March 2020

   Specification:  Class 33: Alcoholic beverages containing wine (‘Goods’)

   [1] The Wang declaration states that Feng Wang and Feng Wang are the same person and all references to the Applicants in this decision will read Applicant (‘Applicant’).

2. The trade mark application was examined as required by s 31 of the Act and advertised as having been accepted for possible registration on 25 August 2020.

3. On 22 October 2020 the Opponent filed a Notice of Intention to Oppose the registration of the Trade Mark, followed by its Statement of Grounds and Particulars (‘SGP’) on 20 November 2020. On 23 December 2020 the Applicant filed a Notice of Intention to Defend the opposition of the Trade Mark.

4. Thereafter the Opponent and the Applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) as follows:

   Evidence in Support

   • Declaration of Anna Gabrielle Gibson, Director of Intellectual Property of Treasury Wines Estates Limited, made on 12 April 2021 with Exhibits AGG-1 to AGG-8 (‘Gibson declaration’).

   Evidence in Answer

   • Declaration of Feng Wang, the Applicant made on 1 July 2021 (‘Wang declaration’).

5. No evidence in reply was filed by the Opponent.

6. Once the time for filing evidence ended, the parties were given an opportunity to request a hearing. The Opponent requested to be heard by way of written submissions. Both parties filed written submissions. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the SGP, the evidence filed and written submissions.

   Grounds of Opposition, Relevant Date and Onus

7. In the SGP the Opponent nominated grounds of opposition under ss 42, 60, 62A and 62 of the Act. In the Opponent’s written submissions it only pressed the grounds under ss 60, 62A and 62. The Opponent did not pursue the ground of opposition under s 42, which I treat as abandoned and have not considered.

8. The date at which the rights of the parties are to be determined is 24 March 2020 (‘Relevant Date’) being both the filing and priority dates of the Trade Mark.

9. The Opponent bears the onus of establishing at least one of the grounds of opposition.0F1F1F[2] The standard of proof is the ordinary civil standard of the balance of probabilities.1F2F2F[3]

   Discussion

   [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 Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

   Section 60

10. Section 60 of the Act provides:

    60  Trade mark similar to trade mark that has acquired a reputation in Australia

    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.

11. In the SGP the Opponent particularises the s 60 ground of opposition as follows:

    The Treasury Wine Estates group including the Opponent (the TWE Group), had a reputation in Australia in “TWE” in relation to wine prior to the filing date of the opposed application.

    This reputation has been acquired through extensive use of “TWE” in Australia over many years, since before the priority date of the opposed application. “TWE” has been used in Australia since at least as early as 2011.

    Given the reputation in “TWE” of the TWE Group which existed in Australia at the priority date of the opposed application, use of the opposed application would be likely to deceive or cause confusion in respect of the designated goods.

12. To satisfy s 60 of the Act the Opponent must establish that the trade mark upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation use of the Trade Mark would deceive or cause confusion.

13. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F3F3F[4] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…13F10F4F4F[5]

    [4] [2000] FCA 1335, [81].

    [5] [1992] FCA 159, [118].

14. Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F5F5F[6]

    [6] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG [1999] ATMO 23; (1999) 47 IPR 423, 436.

15. What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltd (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)) provided some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient …15F12F6F6F[7]

    [7] [2000] FCA 1587, [91].

16. In the present case, the Opponent relies on its TWE trade mark for the purposes of s 60. The Gibson declaration states that the Opponent is a subsidiary of the Treasury Wine Estates Limited (‘TWE’). TWE is a wine producer which has an extensive wine portfolio of more than 80 brands servicing markets across 5 continents. TWE was formally the wine division of the Foster’s Group and officially became a separate company and listed on the Australian Stock Exchange (‘ASX’) in May 2011 under the ASX code TWE (my own search of the ASX website confirms this). TWE has been referred to by the acronym TWE since the company’s inception in 2011.   

17. Exhibit AGG-1 is excerpts of TWE’s 2020 Annual Report (‘Report’) for the year ended 30 June 2020. The TWE business is referred to by its acronym throughout the Report. The financial metrics in the Report for the year ended 30 June 2020 indicates TWE’s global revenue was AU$533 million and AU$133 million for the Australia/New Zealand region. The Report also provides financial metrics for the financial years 2016 to 2019. Further, the Report outlines TWE’s three principle activities as being: grape growing and sourcing; wine production and wine marketing, sales and distribution.

18. Exhibit AGG-2 is a screenshot from the TWE website ‘ dated 5 April 2021. The screenshot shows the acronym TWE is used to refer to TWE throughout the ‘About Us’ page.

19. Exhibit AGG-3 is copies of media releases issued by ‘Treasury Wine Estates’ titled: TWE’s Gold Month Continues, dated 22 May 2012; TWE to move wine production from Ryecroft winery, dated 10 November 2014; TWE advances next stage of supply chain optimisation as sales and earnings momentum accelerates, dated 6 October 2015; TWE appoints new Group General Counsel, dated 11 August 2016; TWE drives consumer engagement to wine brands through innovative use of Augmented Reality technology, dated 30 April 2018; and TWE proudly releases its 2019 Sustainability Report, dated 28 August 2019

20. Exhibit AGG-3 also includes copies of articles published by: ‘Food & Beverage Industry News’ titled TWE reworks supply chain, dated 31 March 2015; ‘The Drinks Business’ titled TWE rebounds in ‘re-set year’ dated 19 August 2015; ‘The Drink Business’ titled TWE adds French wine portfolio dated 10 March 2017; ‘National Liquor News’ titled TWE explores new wine drinking occasions, dated 14 September 2018; ‘The Shout’ titled TWE records strongest organic growth in its history, dated 15 February 2019; ‘The Drinks Business’ titled TWE profits rise 16% as it announces big spend on Wolf Blass winery, dated 15 August 2019; and ‘The Shout’ titled TWE lines up $215m Wolf Blass expansion, dated 19 August 2019.

21. Exhibit AGG-4 is an extract of the first page from a Google search for the term ‘TWE Wines’ dated 5 April 2021. The extract shows TWE’s business as the first result.

22. In my assessment of the evidence, the Opponent’s TWE trade mark has been used in relation to grape growing and sourcing; wine production and wine marketing, sales and distribution. I would describe the revenue generated under the TWE trade mark as significant. Examples of the promotion of the TWE trade mark is limited to the TWE website and media releases, however consumer awareness of the TWE trade mark is evident through an array of articles published by third parties.

23. I am satisfied that the evidence is sufficient to demonstrate a considerable reputation in the TWE trade mark in Australia in relation to grape growing and sourcing; wine production and wine marketing, sales and distribution.

24. I now need to determine whether, in light of the reputation of the TWE trade mark, use of the Trade Mark for the Goods would be likely to deceive or cause confusion.

25. The notions of ‘deceive’ and ‘confuse’ were articulated in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd, where Richardson J said:

    ‘Deceived’ implies the creation of an incorrect belief or mental impression and causing ‘confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.7F7F[8]

    [8] [1979] RPC 410, 423 (citation omitted).

26. In this matter the Opponent is concerned that the word WE in the Trade Mark is aurally and visually similar to the TWE trade mark. The Opponent submits that TWE is pronounced and referred to in the Australian community as ‘twee’. Furthermore, a Google search on ‘WeWines’ returns TWE as the third result.8F8F[9]

    [9] Gibson Declaration [19], [Exhibit AGG-5].

27. I consider that the elements of the Trade Mark do not show such marked similarities with the TWE trade mark. The TWE trade mark starts with the letter T which reinforces its comprehension with consumers as forming a unique acronym. In comparison the Trade Mark, considered as a whole, is for the word term WE WINE which consists of two common words. 

28. In regard to the Opponent’s submissions that the word WE in the Trade Mark is aurally similar to TWE, by arguing that TWE is pronounced as ‘twee’, I consider this pronunciation forms a word which has a different sound and meaning to the word WE.

29. Further, the Opponent has provided a Google search showing that TWE appears as a third result in a search for ‘WeWines’, however there is no evidence of consumer confusion between the trade marks.

30. Taking into account the extent of the Opponent’s reputation as a wine producer it is important to recognise that reputation can be a double-edged sword which either reinforces or mitigates differences between the trade marks under comparison.9F9F[10] Due to the consumer awareness of the Opponent’s TWE trade mark and the marked differences between the trade marks, I am satisfied on the balance of probabilities that no such deception or confusion would eventuate if the Trade Mark was used in relation to the Goods.

    [10] Flight Centre v World Flight Centre [2003] ATMO 60, [22] (Delegate Williams).

31. The ground of opposition under s 60 is not established.

    Section 62A

32. 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.

33. In the SGP the Opponent particularises the s 62A ground of opposition as follows:

    The Applicant is associated with the entity We Wines Pty Ltd and is either currently, or previously was, the CEO. We Wines Pty Ltd is a former customer of the Opponent.

    When We Wines Pty Ltd was a customer of the Opponent, the Opponent issued to it a letter stating that it was a customer selling authentic product from the TWE wines portfolio (authorisation letter). Since that time, We Wines Pty Ltd has ceased to be a customer of the Opponent, yet We Wines Pty Ltd is still using the authorisation letter on social media and elsewhere to mislead people into thinking that it is still a customer of the Opponent and selling authentic product.

    The Opponent sent a letter to We Wines Pty Ltd on 12 February 2020 demanding that it cease to use the authorisation letter since it is no longer accurate or valid. The Opponent called We Wines Pty Ltd a number of times to deliver the same message. No response was received from We Wines Pty Ltd and it continues to use the now revoked authorisation letter to mislead consumers.

    The opposed application was filed on 24 March 2020, immediately following the above described contact with We Wines Pty Ltd.

    It is also notable that the opposed application was filed in the name of an individual (feng wang), being the CEO of We Wines Pty Ltd, rather than in the name of the company. Further, feng wang appears to be the Chinese name of the CEO of We Wines Pty Ltd, David Wang, to whom the abovementioned correspondence was addressed and with whom the Opponent has had dealings. This suggests that We Wines Pty Ltd may have been seeking to avoid the scrutiny of the Opponent by seeking to anonymise the identity of the Applicant.

    The circumstances surrounding the filing of opposed application constitute bad faith activity. The Applicant’s conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.

34. The phrase ‘bad faith’ is not defined in the Act. In DC Comics v Cheqout Pty Ltd, Bennett J explained:

    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 falls 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.10F10F[11]

    [11] [2013] FCA 478 [62].

35. In Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited, the Registrar’s delegate stated:

    The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly. 11F11F[12]

    [12] [2009] ATMO 26 [12].

36. Exhibit AGG-6 in the Gibson declaration is a copy of an Australian Securities & Investment Commission (‘ASIC’) company extract for We Wines Pty Ltd (‘We Wines’) and the Applicant is listed as the company Director and Secretary. The Gibson declaration states that TWE had a commercial relationship with We Wines. On 15 July 2015 TWE issued We Wines an authorisation letter stating that it was a customer selling authentic product from the TWE wine portfolio. However, the Gibson declaration states that We Wines is no longer a customer of TWE and on 12 February 2020, TWE sent a letter to We Wines demanding that it cease using the authorisation letter since it is no longer accurate or valid. Exhibits AGG-7 provides a copy of a letter of demand dated 12 February 2020 from TWE to David Wang of We Wines Pty Ltd and a copy of the authorisation letter dated 15 July 2015 from TWE to David Wang of We Wines Pty Ltd. Exhibit AGG-8 is a copy of the authorisation letter that the Gibson declaration claims We Wines uses on JD.com to authorise Banalasta Farming Pty Ltd to sell TWE’s Penfolds products. 

37. The Wang declaration states that We Wines runs a resource sharing business and represents small industry workers in the wine industry including grape growers, winemakers, in house bottling workers and transport companies to service the demand for Australian wine products. 

38. The Opponent submits that the Applicant’s deliberate act of filing the application for the Trade Mark in the name of Feng Wang rather than We Wines was to purposely avoid detection and scrutiny by the Opponent and that the Applicant continues to use the revoked authorisation letter to falsely represent to consumers that We Wines is connected with, or in some way affiliated with TWE.  

39. The evidence is somewhat sparse regarding what We Wines actually does. However, it appears that We Wines is a provider of services, including retailing of third party goods (such as those of TWE) and assisting and facilitating small winemakers and growers. Presumably any use it makes of the Trade Mark is for those services. The Trade Mark’s specification is for goods being alcoholic beverages containing wine and there is no evidence that indicates that We Wines ever sold its own wine products under the Trade Mark. As such, I am not satisfied that We Wines is the proprietor of the Trade Mark in relation to the Goods. Moreover, based on the evidence provided there is no evidence that in filing the application, the Applicant did not intend to personally use the Trade Mark in relation to the Goods, or to authorise such use by We Wines. In addition, there is no evidence that in filing the application in his personal name that the Applicant was acting inconsistently with the duties that he owned to We Wines as its Director and Secretary. 

1. Further, in response to the Opponent’s evidence and allegation that the Applicant deceptively used and continues to use, the revoked authorisation letter, this has no apparent relevance to the question of whether the Trade Mark was filed in bad faith. It would seem more appropriate that any such allegation be ligated via an action under the Australian Consumer Law.

2. As such I cannot be satisfied that the trade mark application was made in bad faith.

3. The ground of opposition under s 62A is not established.

   Section 62

4. Section 62 of the Act provides:

   62  Application etc. defective etc.

   The registration of a trade mark may be opposed on any of the following grounds:

   (a)  that the application, or a document filed in support of the application, was amended contrary to this Act;

   (b)  that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

5. In the SGP the Opponent particularises the s 62 ground of opposition as follows:

   The application is defective since the Applicant has falsely represented to be the owner of the trade mark, which it is not.

   We Wines Pty Ltd previously had a commercial relationship with the Opponent. That relationship has broken down, yet as described under the section 62A ground, We Wines Pty Ltd continues to use a revoked authorisation letter to sell product.

   It appears that the filing of the opposed mark in the name of feng wang, which is the Chinese name of the CEO of We Wines Pty Ltd, was intended to hide the identity of the entity truly behind the application, being We Wines Pty Ltd.

   In addition, the application is jointly held by “feng wang” and “feng wang”, which is the same individual. It is not possible for one individual to jointly own one trade mark by itself.

   Per Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd, a defect in the applicant name at the time of filing cannot be remedied and the application is therefore invalid ab initio. For both of the above reasons, there is a defect in the applicant name at the time of filing and therefore the application is defective and invalid ab initio.

6. The Opponent submits that filing the application in the name of the Applicant’s was intended to hide the identity of the entity truly behind the application, being We Wines. However, I have already found that the application was not made in bad faith under s 62A of the Act and I consider that my reasoning at paragraph [39] equally applies to the ground under s 62.

7. The Opponent also submits that the Trade Mark application is jointly held by Feng Wang and Feng Wang which is the same individual, and that a defect in the Applicant’s name at the time of filing cannot be remedied. However, it is obvious there is only one owner of the Trade Mark and s 65(7) of the Act allows amendments to particulars in an application, after the application has been published, provided the Applicant’s prospective rights in the application are not thereby extended.

8. I am satisfied that there have been no representations that were false in material particulars that give rise to a ground under s 62.

9. The ground of opposition under s 62 is not established.

   Decision

10. Section 55 of the Act 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.

11. On 16 June 2022 I informed the Applicant that given it was obvious there is only one owner of the Trade Mark the application could be amended under s 65(7) of the Act to remove the second reference to the owner. On 16 June 2022 the Applicant agreed to an amendment and the ownership details have been updated.

12. The Opponent has not established a ground of opposition. Accordingly, I decide that trade mark number 2077556 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the applications should be in accordance with the Court’s order or direction.

    Costs

13. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 of the Act in line with Schedule 8 of the Regulations.

    Louise Tuohy
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    17 June 2022