Stronghold Fellowship Incorporated v Shenzhen Huangchao Apparel Co., Ltd

[2025] ATMO 19

TRADE MARKS ACT 1995

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

Re:Opposition by Stronghold Fellowship Incorporated to registration of trade mark application 2172143 (21) – BAIMEI – in the name of Shenzhen Huangchao Apparel Co., Ltd.

Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented Applicant: Admiral Trademarks & Patents Services
Decision:	2025 ATMO 19 Trade Marks Act 1995 (Cth) - section 52 opposition: s 44 considered and not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Stronghold Fellowship Incorporated (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Shenzhen Huangchao Apparel Co., Ltd. (‘Applicant’): 

Application Number:	2172143
Filing Date[1]:	19 April 2021
Goods:	Class 21: Cups; Brushes; Make-up sponges; Toothbrushes; Cosmetic utensils; Toilet sponges; Powder puffs; Shaving brush stands; Abrasive sponges for scrubbing the skin; Make-up removing appliances; Make-up brushes; Sponges for household purposes (‘Applicant’s Goods’)
Trade Mark:	BAIMEI	(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

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

2. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 6 December 2021.  The SGP raised a ground of opposition under s 44.  The Applicant filed a Notice of Intention to Defend on 3 March 2022. 

   Evidence

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
None filed
Evidence in answer
Che Wa So, administrator with Admiral Trademarks & Patent Services, the Applicant’s representative (‘So declaration’)	19 September 2022	A to D
Evidence in reply
Dan Li, representative of the Opponent[2] (‘Li declaration’)	21 November 2022

[2] It is unclear what Mr Li’s connection is with the Opponent, in particular whether he is an employee, external representative or office-holder. 

1. The entirety of the evidence filed by the Applicant, including publicly available information such as the public use of the Trade Mark or the contents of national trade mark registries, is claimed to be confidential.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[3]

   [3] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

2. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

3. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without a hearing.  The Applicant requested that the matter proceed to a decision without a hearing and paid the appropriate fee.  As a result, the matter has been allocated to a delegate of the Registrar of Trade Marks for a decision based on the written record.

4. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

5. The Opponent is the owner of the trade mark below (‘Opponent’s Trade Mark’).  The goods for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods’.  The Li declaration provides no other information about the Opponent; rather it simply makes the submission that the evidence filed by the Applicant indicates that the Applicant offers a facial massage device for sale under the Trade Mark.

Number	Trade Mark	Priority Date	Goods
2163464	BAIMEI	16 March2021	Class 10: Apparatus for use in massaging; Manual massage apparatus; Massaging apparatus; Esthetic massage apparatus

The Applicant

1. The Applicant is an entity that offers certain cosmetic goods for sale from its website at    

2. Much of the So declaration consists of submissions which are unnecessary to summarise.  The relevant claims/statements in the So declaration can be summarised as follows:

   ·     The Applicant has sold the Applicant’s Goods under the Trade Mark in Australia since 14 September 2017 through various distributors and through its website at It was not aware of the Opponent at the time the Trade Mark was applied for and has used the Trade Mark on its products, its website and its promotional material.

3. Many of the annexures to the So declaration postdate the relevant date, making them of limited use in this proceeding.  The Applicant provides evidence of it shipping one product described as a BAIMEI abrasive sponge to a client in Australia in September 2017.   The Applicant does not otherwise provide detailed evidence of number of sales or customers, amount spent on advertising, or any third-party measurement of the reputation held by the Applicant in the marketplace.

   Grounds of Opposition, Onus and Standard of Proof

4. As indicated above, in the SGP the Opponent nominated the s 44 ground of opposition.  To successfully oppose the application the Opponent needs to establish the s 44 ground.  

5. The onus of proof in an opposition rests upon the Opponent.[4]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[5]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44.[6]

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

   [5] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) (‘Southern Cross’), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

6. The relevant provisions of s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)            a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)           a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.
   Note 2: For similar goods see subsection 14(1).

   (2)…

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)            the similar goods or closely related services; or

   (ii)           the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

7. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered[7] by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

   [7] Or an international registration designating Australia protected or sought to be protected.

8. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, there are other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. 

9. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark which is identical to the Trade Mark and has a priority date that is earlier than the Trade Mark.  The first and third requirements being satisfied, it remains necessary to consider the second requirement.

   Similar goods

10. Section 14 relevantly provides:

    14Definition of similar goods and similar services

    (1)For the purposes of this Act, goods are similar to other goods:

    (a)if they are the same as the other goods; or

    (b)if they are of the same description as that of the other goods.

11. McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods for which the Opponent’s Trade Mark is registered are goods of the same description as the Applicant’s Goods as follows:

    Whether the relevant goods are of the same description is essentially a question of fact.

    The authorities establish that there are three principal factors to be considered in this regard.  They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.  As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade:  see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden; [1945] HCA 12 (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

    The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive.  Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods:  see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner:  ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.  In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.  No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’:  Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.

    On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [8] 

    [8] [2000] FCA 1335, [17]-[19] (Kenny J).

12. I fail to identify any of goods for which the Opponent’s Trade Mark is registered that are similar the Applicant’s Goods.  The Applicant’s Goods are broadly categorised as cosmetic utensils.  The Opponent’s Goods are massaging apparatus.  They are goods that are used for an entirely different purpose; one having a cosmetic purpose (often to apply or remove make-up or perform related tasks) one having a therapeutic purpose.  They are of a different nature, being composed of different materials and manufactured by different entities.  In particular, the Applicant’s Goods are often manufactured by specialist entities associated with make-up manufacturers and sold through different trade channels.

13. I note that the Opponent appears to suggest that the Applicant’s Goods and the Opponent’s Goods are similar because the Applicant sells what it characterises as a massage apparatus.  Firstly, on its face the good that the Applicant sells appears to be a roller used to remove make-up, not a massage apparatus.  Secondly for the purpose of considering whether a particular set of goods are similar to another set of goods under the requirements of s 44(1), I must consider the nature of the Applicant’s Goods in an abstract sense, not whether an applicant applies a mark to a particular product.  Even if the Applicant had offered a massage apparatus for sale under the Trade Mark, this does not change the fact that the Applicant is not seeking to register the Trade Mark for massage apparatus; but for a different set of goods.

1. The Applicant’s Goods are goods of a different nature for a different purpose and in some cases sold in different channels to the Opponent’s Goods.  The second requirement not being satisfied, I find that the Opponent has failed to establish the ground of opposition under s 44.

   Decision and Costs

2. The Opponent has failed to establish the ground of opposition it nominated in the SGP.  Trade mark application number 2172143 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

3. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   29 January 2025