The Stanley Works v You Lizhong

[2010] ATMO 3

TRADE MARKS ACT 1995

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

Re:Opposition by THE STANLEY WORKS to protection of International Registration Designating Australia 1164050 (International Registraion 913047) (7) - MEIJIA AND DEVICE - in the name of YOU LIZHONG.

Delegate:

Terry Williams

Representation:

Opponent: James Maxwell, solicitor, Peter Maxwell & Associates, patent attorney

Holder: no appearance

Decision:

2010 ATMO 3

Regulation 17A.29 opposition: section 59 established – protection refused.

Background

1. You Lizhong (“the holder”) has requested protection in Australia for an international registration, under the Madrid Protocol, designating Australia (“the IRDA”).  The subject of the international registration is the following trade mark (“the holder’s trade mark”) which I note, for the assistance of those reading this decision in black and white form, is rendered in black and yellow:

1. The international registration number is 913047 and the IRDA has been given the Australian application number 1164050.  It has a priority date of 6 November 2006.  The IRDA has been advertised as having been accepted for protection in class 7 in respect of “Electric portable drills, excluding electric coal borer; electric wrench”.

2. Protection of the holder’s trade mark in Australia is opposed by The Stanley Works (“the opponent”).

Madrid Protocol – Opposition framework

1. Section 189A of the Trade Marks Act 1995 (“the Act”) empowers the more detailed workings of the regulations giving effect to Australia’s obligations under the Madrid Protocol.  Regulation 17A of the Trade Mark Regulations 1995 is the most obvious consequence of these. Reg 17A.29 provides for opposition to the extension of protection in Australia to a trade mark that is the subject of the IRDA. Regulation 17A.31 imports, as grounds of opposition various grounds - of rejection or opposition as the case may be - set out elsewhere in the Act. These are sections 39 and 41 to 44 in Part 4 of the Act and sections 58 to 61, and 62A, in Part 5.

2. Finally, regulation 17A.34(1) provides:

   Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

3. Within that broad framework, familiar parts of the Trade Mark Regulations are imported by reg 17A.33, which provides:

   (1) The Registrar must give to the opponent and to the holder of the IRDA an opportunity of being heard on the opposition.

   (2) Regulations 5.7 to 5.17 apply, with the necessary modifications, for the purposes of the opposition.

   (3) Despite subregulations (1) and (2), a requirement to serve a document on the holder, or to give the holder an opportunity to make written representations or to be heard, does not apply unless, within 3 months after the notice of opposition is filed, the holder has notified the Registrar, in writing, of the holder’s address for service in Australia.

Evidence and hearing

1. The opponent filed evidence in support of its opposition.  I will not list this but will refer to it as necessary in the discussion below. As the holder has not notified the Registrar of Trade Marks of an address for service in Australia, the opponent’s evidence has not been served upon him. 

2. The opponent requested a hearing and I was assigned to hear and decide the matter, under delegation from the registrar.  At the hearing, the opponent was represented by James Maxwell, solicitor, of the attorney firm of Peter Maxwell & Associates, patent attorneys.

Issues

1. The opponent is the owner of a trade mark (“the opponent’s trade mark”) as follows:

1. The opponent’s trade mark has been registered, as registration 177914, for over 40 years in respect of the following goods in class 7:

   Woodworking tools, drills, sheet metal cutting tools, grinders and sanders, all being power tools, and accessories for use with the foregoing.

2. The opponent’s trade mark, from the evidence and from my own observation, is fairly well know to tradesmen and to anyone who has spent more than a bare minimum of time in a hardware store.  Equally well-known is the fact that the opponent’s trade mark is typically rendered, on the goods in respect of which it is used, in the colours black and yellow.

3. In its notice of opposition, the opponent originally listed a broad range of grounds.  However, Mr Maxwell, at the hearing, relied on only the grounds of opposition under sections 44, 60, 59 and 42.  These may be very broadly summarized as hinging on, respectively:

   • deceptive similarity between the opponent’s and holder’s trade marks
   • likelihood of deception or confusion in view of the reputation of the opponent’s trade mark
   • lack of intention to use the holder’s mark in Australia
   • breach of, inter alia, the (Commonwealth) Copyright Act1968, of the fair trading legislation of the various States and Territories, and of the comparable provisions of the Trade Practices Act 1974 (Cth).

4. For reasons which I will set out below, the opposition succeeds on the second-last of those grounds.  It will thus not be necessary to consider the remaining grounds.

Intention to use

1. Section 59 provides:

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

1. The Registrar’s current practice is to accept that, since the identity of the applicant may change if the application is assigned after it is filed, s 59 has an ongoing action.  Hearing Officer Lyons reviewed a number of delegates’ decisions on the issue of intention to use in Americana International Limited v Suyen Corporation (2008) 75 IPR 596. As he put it at [27]:

   What is clear is that the intention of the applicant is an ongoing intention not limited by its state of mind at the filing date of the application. Less clear is the proposition that the relevant date is the date the Notice of Opposition was filed. Other cases, some of which are referred to later, suggest that the relevant date is the date of the hearing, but it seems to me that the correct "cut-off" date is when the last evidence is filed.

2. In his submission, Mr Maxwell brought together several strands of the opponent’s evidence in support.  It appears from the evidence that the holder is, or was in August 2008, the president of a Chinese company, Ningbo Meijia Tool Co Ltd (“the company”).  The opponent has previously come into conflict with the company, a manufacturer of metal goods, about the sale of toolboxes “that have similar or identical designs” to those sold by the opponent.  Exhibit 8 of the Sherer declaration in the evidence in support shows that the company apologised to the opponent in 2002 over this perceived conflict but other exhibits show that the production of yellow and black toolboxes, presumably of different designs, has continued.  A page extracted from the company’s website in 2008 is in evidence.  It shows the holder’s trade mark, used in conjunction with the sale of such toolboxes.  It appears that the company offers these toolboxes for sale in commercial quantities, available for export from China.

3. Mr Maxwell argued that the holder was not a novice player and that I could and should take note of both his stance in the present opposition matter and of the outcome of the protection process in other jurisdictions specified in the international registration.  Here, Mr Maxwell noted that the international registration designates Australia, Japan, the USA, The Republic of Korea, Office for Harmonization in the Internal Market (Trade Marks And Designs) (OHIM), and Georgia.  Of these, protection had already been refused in Japan, OHIM, the USA and Korea.  While Mr Maxwell conceded, quite properly, that the holder’s trade mark was now protected in Georgia, he invited me to infer that the holder’s failure to nominate an Australian address for service in the face of the present opposition should, in the circumstances of the present case, be fatal.  This was a case, he said, where there was more than a simple failure on the part of an international registrant to respond to opposition proceedings in this jurisdiction, perhaps for some reason entirely unconnected with a lack of intention to use.  The evidence shows that, in the USA, the holder was required to answer the opposition and failed to do so.  In itself, this might also be attributable to some innocent failure unrelated to a lack of intention to use.  However, I note that the holder had a legal representative in China at the time of filing the basic application which gave rise to the international registration.  He had, therefore, access to professional assistance in dealing with any difficulties or inadvertent oversights that might arise in the process.  None the less, the holder failed to contest the matter in the USA. 

4. To this I add the previous dealings between the opponent and the company, of which the holder is the president, and the holder’s lack of success, for whatever reason, in other jurisdictions.  It seems to me, therefore, that the holder’s intention to use, internationally, might perhaps be crudely described as an intention to use only in those places where there is no opposition.  That, of course, is only a prima-facie assessment.  It was open to the holder to take part in proceedings in Australia and put its own controverting evidence but he has not done so. 

5. Accordingly, I find that the section 59 ground is established.

Conclusion

1. In terms of s 17A34(1), I refuse to extend protection in Australia in respect of any of the goods listed in this IRDA.  The International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with Regulation 17A.34(2).

T. E. Williams

Hearing Officer

Trade Marks Hearings

13 January 2010