TWG Tea Company Pte. Ltd v Tsit Wing International Company Limited

[2015] ATMO 64

TRADE MARKS ACT 1995

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

Re:Opposition by TWG Tea Company Pte. Ltd to registration of trade mark application 1350518 (30) – TWG and ovals device - in the name of Tsit Wing International Company Limited

and

Opposition by to application under section 92 of the Act by TWG Tea Company Pte. Ltd to partially remove trade mark registration 1099209 (30, 32) - TWG and ovals device and Chinese characters - in the name of Tsit Wing International Company Limited

Delegate:	Claudia Murray
Representation:	Opponent to registration and removal applicant: Ms Siobhan Ryan of Counsel, instructed by Davies Collison Cave, Intellectual Property Specialists, Sydney. Trade mark applicant and removal opponent: Not represented at the hearing and did not provide written submissions.
Decision:	2015 ATMO 64 Section 52 opposition: reg 4.15A and s 62(b) grounds pressed at hearing – opposition unsuccessful – application to proceed to registration. Section 92 opposition: partial removal application made on basis of s 92(4)(a) and (b) – use established within relevant period of trade mark with substantial addition – evidence under reg 21.19 not allowed – Registrar’s discretion exercised under s 101 - trade mark to remain on the Register.

Background

1.     This decision relates to two opposition matters between Tsit Wing International Company Limited and TWG Tea Company Pte. Ltd. It is convenient to deal with the matters together as the issues and evidence are related and were the subject of a single hearing before me, as a delegate of the Registrar, in Canberra on 13 March 2015. Ms Siobhan Ryan of Counsel, instructed by Davies Collison Cave, Intellectual Property Specialists, Sydney, represented TWG Tea Company Pte. Ltd. Tsit Wing International Company Limited decided to rely on the material it had provided up to that point, was not represented at the hearing and did not file written submissions. However, it was otherwise represented by Herbert Smith Freehills of Melbourne. I will deal with the respective oppositions here in the chronological order in which the actions were initiated.

2.     Application number 1350518 was filed by Hong Kong based company Tsit Wing International Company Limited (‘Tsit Wing’) on 12 March 2010, for the series of trade marks:

3.     The application now covers the following goods in Class 30 of the Nice Classification of Goods and Services:

Tea; black tea (fermented); partly fermented tea; coffee; coffee, roasted or non-roasted, not decaffeinated, either ground or in bean form; coffee beans; instant coffee; canned coffee; loose tea leaf; tea bag; instant tea; organic coffee and tea; coffee substitutes; coffee essence; coffee extracts; flavorings of tea; tea extracts; fruit tea; cakes; sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, cereal based snack food; breakfast cereals; bread; pastry; ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; condiments; noodles; pasta; pizzas; sandwiches; spaghetti

4. Grounds for rejection under section 44 of the Trade Marks Act 1995 (‘the Act’) were raised against the application during examination. However, the applicant agreed to amend its statement of goods to exclude certain items and it was advertised as accepted for possible registration, (with the statement of goods which appears above), in the Australian Official Journal of Trade Marks on 8 September 2011.

5.     Singapore company TWG Tea Company Pte. Ltd (‘TWG’) filed notice of opposition to registration on 6 December 2011. Sixteen grounds of opposition were originally listed in the notice. However, almost twelve months later, on 28 November 2012, the opponent successfully requested that the notice be amended to exclude seven of those grounds. I will return to this unusual development a little later.

6.     Registration number 1099209 is registered for the trade mark:

7.     The registration covers the following goods in the Nice Classification of Goods and Services:

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery; ices; honey, treacle; yeast, baking powder; salt, mustard, vinegar, sauces (condiments), spices; ice

Class 32: Beers; mineral and aerated waters; syrups and other preparations for making beverages

8.     The trade mark was registered from 16 February 2006 and the trade mark owner is Tsit Wing. The same citation (unrelated to the present oppositions) that was raised against trade mark no. 1350518 was also raised against trade mark no. 1099209 during examination, and its goods were also subsequently amended to allow acceptance for possible registration. The registration is subject to the following endorsements:

The applicant has advised that the Chinese character mark translates into English as TSIT WING GROUP.

The colours are part of the Trade Mark.

9. TWG made application under section 92 of the Act for partial removal of trade mark no. 1099209 from the Register, on 12 January 2012. The removal application sought removal for all of the goods covered by the subject registration in class 30 only and cited grounds for removal under paragraphs 92(4)(a) and (b) of the Act. For the purposes of paragraph 92(4)(b), the relevant three-year period ends on 12 December 2011.

10.     Notice of opposition to the removal application was filed by Tsit Wing on 2 May 2012.

Evidence

11.     The evidence for the opposition proceedings regarding registration of trade mark number 1350518 comprises:

Evidence in support

ØStatutory declaration of Gary Law Beng Chong, with Exhibits TWG-1 to TWG-8, dated 3 December 2012.

Evidence in answer

ØStatutory declaration of Law Ying Chee, with Exhibits LC-1 and LC-2, dated 6 September 2013.

ØStatutory declaration of Wu Kam On, Keith, with Confidential Annexures A to J and Exhibits WKOK-1 to WKOK-34, dated 6 December 2013.

Evidence in reply

ØDeclaration of Marion Heathcote, with Exhibit MH-1, dated 11 March 2014.

ØDeclaration of Tang Wai Shang, Alice, dated 11 March 2014.

12.     The evidence in relation to opposition proceedings regarding removal of trade mark number 1099209 comprises:

Evidence in support

ØStatutory declaration of Wu Kam On, Keith, with Confidential Annexures A to C and Exhibits WKOK-1 to WKOK-6, dated 27 February 2013.

Evidence in answer

ØDeclaration of Marion Heathcote, with Exhibit MH-1, dated 28 February 2014.

Evidence in reply

ØStatutory declaration of Wu Kam On, Keith, with Exhibits WKOK-7 to WKOK-16, dated 4 June 2014.

13.     The evidence shows that the parties’ bitter dispute over use of the letters ‘TWG’, used primarily in relation to tea, coffee and the places where such beverages are enjoyed, has been stewing for several years and across several jurisdictions.

14.     Mr Keith Wu Kam On holds several titles, including Executive Director, in Tsit Wing International Holdings Limited, a company responsible for the growth and development strategies of Tsit Wing and also a member of a group of related companies known collectively as the ‘TWG Group’. In his declaration dated 6 December 2013, in support of Tsit Wing’s trade mark application number 1350518, he describes Tsit Wing’s history in the business thus:

The origins of TWG Group's business can be traced back to 1932 (more than 80 years ago) when the Applicant's predecessor first engaged in, inter alia, coffee roasting, coffee and tea trading. It subsequently expanded its business to supply tea and coffee to hotels, restaurants, cafes, eateries and business corporations, etc.

In 1956, Tsit Wing (Hong Kong) Company Limited (formerly known as Tsit Wing Coffee Company, Limited) (‘TW Hong Kong’) was incorporated as a limited liability company and has since developed into the largest and most well-known coffee and tea manufacturer, supplier and distributor in Hong Kong with thousands of tea and coffee formulas and serving over 4,200 wholesale customers in over 10,000 food services outlets, as well as hundreds of thousands of retail customers in Hong Kong. As of 2009, about 39% of the total coffee import and about 38% of the total Sri Lanka Black tea import in Hong Kong were imported by TWG Group. Since the 1990s, TWG Group's business in Hong Kong has been operated by TW Hong Kong's subsidiaries (a) Tsit Wing Coffee Company, Limited (‘Tsit Wing Coffee’) which is mainly responsible for coffee roasting, tea blending, distribution and sales of TWG Group's products and (b) Tsit Wing Beverage Machine Company Limited (former name being TW Cafe Ltd.) which is responsible for operation of cafes and the sale of beverage machines in Hong Kong. …

Tea and coffee are popular beverages across different cultural, religious and racial backgrounds. In particular, Hong Kong-style milk tea and Hong Kong-style Yuanyang (i.e. coffee mixed with tea) were created in Hong Kong following influx of western influence, becoming part of a unique and diversified Asian tea and coffee culture. … Hong Kong-style coffee and tea populates throughout the Asian community both within and outside of Hong Kong, including those in Australia. In early years, TWG Group focused on the supply and distribution of coffee, tea and related products and it later expanded to provide cafe services in addition. …

The Subject Application was filed on 12 March 2010. Indeed, even before and/or around the time the Opponent [TWG] devised its ‘TWG’ mark in 2007, the Applicant [Tsit Wing] had already applied to register and/or obtained registration for some of the TWG Marks in Australia, Hong Kong, the PRC, Taiwan, Singapore, United States, Canada and Sri Lanka. …

Since as early as 2009, the Opponent encountered citation objections based on one or more of the Applicant's TWG Marks from trade mark registries of various jurisdictions around the world such as Australia, Hong Kong, South Korea, the U.S., Philippines and Singapore. …

TWG Group entered into the beverage market in Australia in 2000. TWG Group's subsidiary, Tsit Wing Australia Pty Ltd., assisted to develop its business in Australia at that time. Various lines of coffee and tea products bearing one or a combination of the TW Marks were distributed to two distributors [translated as ‘Eko (Aust) Pty Ltd’ and ‘Ettason Pty Ltd’] in Australia from 2000 to 2001.

Since 2002, TWG Group has engaged Rockman Company, Limited (‘Rockman HK’) and Rockman Australia Pty Ltd (‘Rockman Australia’) as its distributors of the Goods in Australia. Rockman HK is a Hong Kong based company whereas Rockman Australia is an Australian based company, and they are related to each other. Since April 2012, TWG Group has conducted overseas trading (including Australia) via Cadiz Enterprises Ltd, which is part of the TWG Group.

Rockman HK and Rockman Australia distribute the Goods mainly to cafes, restaurants and supermarkets throughout Sydney and Melbourne, being the top two most populous cities in Australia. Rockman Australia has its own distribution channels throughout Australia extending beyond New South Wales, Victoria and Queensland. In addition to other direct marketing efforts, Rockman Australia also promotes the Goods via its website .com.au.[1]

[1] Statutory declaration of Wu Kam On, Keith, dated 6 December 2013, paras 11, 12, 18, 27, 28, 52, 53, 57.

15.     Details of the trade mark application belonging to TWG, as described above by Mr Wu, are:

TM No.	Filing Date	Goods/Services	Status	Trade Mark
1362479 (IR No. 1021281)	12 March2010	Class 21: Teapots, teacups and saucers, plates, containers for foodstuffs, bowls, tea balls, tea caddies, tea infusers, tea services, tea strainers Class 30: Beverages made of tea, black tea (English tea), flavoring of tea, fruit tea, chai tea, aromatic teas, fruit flavored tea, Rooibos tea, tea essence, green tea, herbal tea (for food purposes), Japanese green tea, Oolong tea (Chinese tea), tea, tea bags, tea extracts, tea for infusions, tea-based beverages, cakes, pastry, pastries, macaroons (pastry), aromatic preparations for pastries Class 43: Services for providing food and drink, cafes, restaurants, tea salons, tea house and tea room services, providing information about services for providing food and drink	Under Examin-ation – Deferred

16.     Despite the impression which might be gained by the date featured in its trade mark, TWG is a relative newcomer to the market, in comparison with Tsit Wing. Mr Gary Law Ben Chong is TWG’s Chief Operating Officer. He explains in his declaration that:

My Company has been operating under its current name ‘TWG Tea Company Pte Ltd’ in Singapore since 2008. My Company is a luxury tea company which operates exquisite tea rooms and retail outlets since 2008 and specialises in selling luxury tea related products including tea leaves, packaged tea, tea bags (hereinafter referred to as ‘tea products’) and pots for brewing tea, tea canisters and containers and tea scented candles (hereinafter referred to as ‘tea accessories’).

To make my Company's tea products my Company sources tea leaves from renowned tea estates throughout the world, many [of] which provide my Company exclusive access to their harvests. From these various sources my Company has access to more than 300 varieties of tea from which it has customised over 800 blends.

My Company sells its tea products and tea accessories in retail stores, via specialist boutiques and counters, by mail order as well as through its own operated tea rooms/salons. In the tea rooms/salons the tea products are also served to be consumed on site together with tea infused savoury and sweet dishes including the tea flavoured cakes, ice cream, chocolates and patisseries (hereinafter referred to as ‘tea accompaniments’).

My Company operates its tea boutiques/counters and salons in Singapore, Japan, Hong Kong, United Kingdom (within the internationally famous department store Harrods) and the United States of America (through the well known delicatessen chain store Dean & Deluca). Tea products and tea accessories are also available in retail outlets in Cambodia, Germany, Taipei, Russia and South Africa as well as throughout the world by mail order. …

Since 2009 my Company's tea products have also been served in Singapore Airlines first class and business class cabins on all flight routes (approximately 300 Singapore originating flights daily) as well as in the Singapore Airlines lounges at all airports. My Company's tea products are also available for purchase through the in-flight shopping guide of Singapore Airlines, KrisShop. This shows that my Company is one of the world's premier luxury tea retailers and suppliers.

Luxury and premier hotels throughout Singapore including the St Regis, Raffles Hotel, Fullerton Hotel and Shangri-La Hotel, serve my Company's tea products.

My Company also co-operates with other well-known entities such as Forbes, Takashimaya department store and Swissotel to produce bespoke tea blends.

My Company has quickly received extensive compliments shortly after it launched its impressive tea products and tea boutiques/counters and salons. I quote from the Reuters news section in August 2008 which featured a review of my Company in the following lines:

‘at Singapore's only luxury tea boutique and salon you'll be spoiled for choice, with 600 fragrant blends ranging from classic breakfast pick-me-ups to rare yellow varieties. Step into TWG Tea's salon in a modern downtown shopping centre and you'll be whisked away to a Paris tea room, complete with crystal chandeliers, wood panels and gilded mirrors.’ …

The brand image cultivated by my Company of tea products and tea salons are upscale, tasteful and exquisite. My Company does not cater to lower end markets or mass markets. …

The tea products of my Company featuring the TWG trade mark were first sold in Australia in May 2008 through mail order.

In May 2011 my Company entered into a distribution agreement with Darbo Australia at 57 Bond Street, Ringwood, Victoria 3134 to enable direct retail sales.[2]

[2] Statutory declaration of Gary Law Beng Chong, dated 3 December 2012, paras 3-9, 11, 14, 15-16.

Opposition to registration - TM No. 1350518

Onus and grounds of opposition

17.     The onus is upon an opponent to registration of a trade mark to establish one or more grounds of opposition, according to the balance of probabilities.[3] The point in time at which the grounds of opposition must be established is the date of filing of the application for registrationhttp:// - .[4]

[3] Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12].

[4] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595; E & J Gallo Winery v Lion Nathan Australia [2009] FCAFC 27.

18.     Prior to the hearing, TWG indicated that the grounds of opposition it wished to press were those under regulation 4.15A(1) of the Trade Marks Regulations 1995 (‘the Regulations’) (at the Registrar’s discretion, as explained below) and section 62(b) of the Act.

Regulation 4.15A - Trade mark identical etc to trade mark protected under Madrid Protocol

19.     Subregulation (1) of regulation 4.15A provides:

(1) For section 189A of the Act, and subject to subregulations (3) and (5), 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) the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i) a protected international trade mark; or

(ii) a trade mark in respect of which the Registrar has received notification of an IRDA;

held by another person in respect of similar goods or closely related services; 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 other trade mark in respect of the similar goods or closely related services.

Note: Under subsection 189A(3) of the Act, regulations made for the purposes of section 189A:

(a) may be inconsistent with the Act; and

(b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.

20.     As mentioned earlier, TWG originally included sixteen grounds in its notice of opposition. However, almost twelve months after the notice was filed, (but before filing its evidence in support), the opponent requested a deletion of seven of those grounds, including a ground under regulation 4.15A. According to Tsit Wing’s evidence, which was not contradicted by TWG, the background to this deletion was the instigation of court proceedings in Hong Kong, coinciding with other trade mark disputes between the parties in South Korea, China and Macau, in addition to Australia. At the time, TWG attempted to remove obvious contradictions that had arisen in the other jurisdictions to its main defence against Tsit Wing’s trade mark infringement and passing off actions in Hong Kong. This was the (ultimately unsuccessful) argument that there was, in reality, ‘dissimilarity and lack of confusion between the parties’ respective marks’. In Australia, these attempts took the form of deleting almost half of its grounds of opposition to trade mark number 1350518. [5]

[5] Statutory declaration of Wu Kam On, Keith, dated 6 December 2013, paras 31-39.

21.     At the hearing, Ms Ryan conceded that her client’s notice of opposition was amended subsequent to a dispute between the parties in Hong Kong, although she suggested that this background was ‘not particularly relevant’. Ms Ryan then went on to argue that, despite the deliberate removal of her client’s ground of opposition under regulation 4.15A, the Registrar should nevertheless find the opposition successful under that ground. She pointed to the fact that there still remained in the notice of opposition the following ground:

10. Registration of the trade mark ought to be refused in the exercise of the Registrar's discretion, by reason of the conduct of the applicant and/or the nature of the mark and/or of its use and/or on such other grounds as the Registrar or the court, on appeal, may see fit to allow.

22.     Ms Ryan then submitted that a procedural anomaly appeared to have occurred during the examination of Tsit Wing’s application as it was filed on the same day as TWG’s application no. 1362479 (IR No. 1021281), the details of which appear above. Ms Ryan quoted the Trade Marks Office Manual of Practice and Procedure, at Part 26 – ‘Section 44 and regulation 4.15A - Conflict with other signs’, as setting out the proper procedure to be followed in such circumstances:

Section 44 applies where the priority date for the application being examined is not earlier than that of the other trade mark. Therefore, if conflicting trade marks have the same priority date they must be cited against each other. The following practice should be followed. The same examiner should deal with both cases and each applicant should be advised of the citation in the examination report. They should also be informed that the Registrar does not intend to take any further action until the conflict is resolved by the parties concerned.[6]

[6] Trade Marks Office Manual of Practice and Procedure, Part 26, section 7.

23.     What actually happened here was that, while Tsit Wing’s trade mark was cited as a barrier to acceptance of TWG’s trade mark, the same examiner did not examine Tsit Wing’s trade mark, and the reciprocal citation was not raised. Ms Ryan observed:

It should be noted that, for the purpose of this opposition, TWG itself takes no position as to the similarity of the Tsit Wing’s and TWG’s respective marks. However, the fact that [the examiner of trade mark no. 1362479] identified them as being subject to s44 indicates an Office view that they are substantially identical or deceptively similar and applied for in respect of similar goods. The procedure [quoted] above should have been instituted and was not. …

It was clearly the examiner’s view that the Opposed Mark was required to be cited against TWG’s Application pursuant to s44. The directions in Part 26 of the Examiner’s Manual likewise required the equivalent objection under Reg 4.15A to be cited against the Opposed Application. There are public interest considerations compelling this, including that:

a. The Register should reflect compliance with the provisions of Act

b. There should be comity in examination;

c. One party should not be disadvantaged by internal TMO procedures, such as the issuing of trade mark application numbers.

24.     Ms Ryan quoted TV Shopping Network Ltd v Home Shopping Network Inc[7] and Danjaq LLC v Resource Capital Australia Pty Ltd[8] as authority for her proposal that, notwithstanding the onus upon the opponent, the public interest considerations she had set out were of such paramount significance that I should be obliged to invoke the Registrar’s discretion, implicit in section 55 of the Act, to refuse to register Tsit Wing’s trade mark even if the opponent had not made its case.

[7] (1998) 40 IPR 639 at 645.

[8] (2004) 61 IPR 651 at [26] – [27].

25.     Both the cases quoted by Ms Ryan emphasise the necessity to ensure that natural justice and procedural fairness be afforded the applicant under such circumstances. Ms Ryan submitted that:

As to procedural fairness, the impugned Examiner’s Report issued in respect of the Opposed Application and is known to Tsit Wing. In the circumstances, it is submitted that Reg 4.15A is properly raised by ground 10 of the Amended Notice of Opposition.

26.     I cannot agree with the logic behind this suggestion. Simply because Tsit Wing had received an examiner’s report that did not contain reference to TWG’s co-pending application, the absence of this information at that point – five years ago – is supposed to have alerted it to the possibility that TWG may ultimately call upon the Registrar to refuse registration based upon that omission. And this not as a result of a third party approach to the Registrar to revoke acceptance, but rather in the circumstances of the final hearing of a fully contested opposition, where the relevant ground of opposition had initially been raised, but then voluntarily withdrawn by TWG.

27.     I am certainly willing to concede the divergence that occurred here between the examinations of the co-pending applications was unfortunate and undesirable. However, I cannot accept, in the circumstances under which this opposition has developed, that this divergence, without more, deserves to become the instrument by which TWG might succeed. In my view, such success would represent a perfect ambush of Tsit Wing, and a complete denial of its entitlement to the natural justice and procedural fairness that ideally runs like a unifying thread through every opposition process.

28.     TWG has willingly abrogated the onus which should have been upon it in order to succeed under a ground of opposition in terms of regulation 4.15A. I decline to exercise the Registrar’s discretion to refuse registration in these circumstances.

Section 62 - Application etc. defective etc.

29.     Section 62 provides:

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.

Note: For file see section 6.

30.     Ms Ryan next referred to ground number 7 of the opponent’s grounds of opposition, which had survived the voluntary purge of grounds I have discussed above. That ground set out:

The Registrar accepted the application on the basis of evidence or representations that were false in material particulars and registration of the trade mark would be contrary to Subsection 62(b) of the Act.

31.     In respect of this ground, Ms Ryan submitted:

S 62(b) requires a causal connection between the false representation and the acceptance of the application.[9] Here, the Examiner did not cite the TWG Application against the Opposed Application and the Opposed Application was accepted on 8 September 2011. Had the TWG Application been cited, the Opposed Application would not have been accepted in the circumstances it was. Thus there is a causal connection between the failure to cite the TWG Application and the acceptance of the Opposed Application.

The acceptance of the Opposed Application proceeded on a false premise because the TWG Mark was not cited. That option was not viable because of the view taken by the examiner of the TWG Application and because of the procedure mandated by the Examiner’s Manual. In this sense, the TWG Examiner’s Report conveyed a representation that was false because it lacked a material particular bearing [on the fate of the application], namely the TWG Application.

Further, there is no requirement under s 62(b) that false representation emanate from the Applicant. Nor that it be intentional.[10] Section 62(b) is simply concerned with the correctness of the acceptance of an application. Here, the acceptance was clearly incorrect.

[9] Mars Australia Pty Ltd v Societe Des Produits Nestle (2010) 86 IPR at [20].

[10] Link Recruitment Pty Ltd v Link Employment Training Inc (2006) 69 IPR 614 at [32].

32. Ms Ryan explained further that she had established, from her consideration of the history records of the applications, available online from the trade marks database, that the TWG application was not indexed until 24 May 2010, which was also the day on which the Tsit Wing examiner’s report issued and therefore presumably subsequent to the examiner of the latter application conducting her search for prior trade marks. Due to the manner in which International Registrations Designating Australia are firstly processed at the International Bureau in Geneva before being notified to IP Australia, a delay in their subsequent processing in this office, such as has apparently occurred in here, is not unusual. TWG’s application would not have been visible as a prior application and potential citation to the examiner of Tsit Wing’s application. When the TWG application was examined 3 weeks later on 17 June 2010 and Tsit Wing’s application was cited under section 44, the (different) examiner should have acknowledged the common priority date and steps should have been taken to cite TWG’s application against Tsit Wing’s application as a late ground for rejection under regulation 4.15A. For whatever reason, this did not occur.

33. I have considered Ms Ryan’s submissions in support of this ground of opposition, in light of the precedent she referred to. Section 62(b) is a ground of opposition seldom relied upon by opponents. Both the cases relied upon deal with circumstances where it was established that there were representations before the decision maker at the time the relevant trade marks were accepted for possible registration, that were later determined to be false in some way. However, in Mars Australia Pty Ltd v Societe Des Produits Nestle,[11] Bennett J concluded on appeal that there had been many documents before the delegate at that time, that an appropriate causal link between the relevant representation and the delegate’s decision had not been established and accordingly a ground of opposition under section 62(b) did not apply. She observed:

Also before the first Hearing Officer was the report from the Examiner who rejected the application. That report stated that ‘research demonstrates that other manufacture[r]s within the cat food industry do typically colour the packaging of their products and are using the colour purple on the packaging of their similar products’. That is, even if the Steele declaration represented that no other manufacturers used purple for pet food, that was not all of the evidence before the first Hearing Officer. The Examiner’s report and rejection of the application were before the first Hearing Officer, as were two other declarations, one of which referred to the use of the colour purple on pet care products sold in supermarkets. Upon considering all of this evidence and submissions, the first Hearing Officer accepted the application.

Section 62(b) requires a causal connection between the suggested false statement and the acceptance of the application. I accept Mars’ submission that it cannot be concluded that the examining Delegate accepted the application on the basis of the representations in the Steele declaration, even if they were false in a material particular.[12]

[11] (2010) 86 IPR 581.

[12] Mars Australia Pty Ltd v Societe Des Produits Nestle, op. cit. [19]-[20].

34. I agree with Ms Ryan that section 62(b) does not require that the false representations emanated from the applicant, or even that they were intentionally false. However, I think the quote from Bennett J above points to the importance of being able to establish a causal link between the existence of evidence or representations of some kind that were also false in some way, upon which the decision maker relied when making their decision. Here, the issue is what was presumably not before the examiner at the time the application was accepted. It is not possible to identify any relevant document in the nature of evidence or a representation that was both, a) before the examiner at the time she accepted the application, and b) false in some definable aspect.

35. It makes perfect sense that section 62(b), as a ground of opposition, requires some kind of demonstrably false intervention to have occurred in the process, resulting in a wrong acceptance. I do not agree that ‘section 62(b) is simply concerned with the correctness of the acceptance of an application’, as Ms Ryan has suggested. That is the kind of enquiry about a sin of omission that is put when revocation of acceptance in terms of section 38 is proposed. A successful opposition under section 62(b), resulting in refusal of registration, requires more. TWG has not made its case under this provision.

Opposition to removal for non-use - TM No. 1099209

Removal application and onus on the opponent

36. As I have described above, TWG made application under section 92 of the Act for partial removal of the trade mark from the Register for non-use, on 12 January 2012. The removal application sought removal for all of the goods covered in class 30 by the subject registration, (leaving in the registration those items that were specified in class 32), and cited grounds for removal under paragraphs 92(4)(a) and (b) of the Act.

37.     These grounds provide:

(4)     An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

(a)     that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)     to use the trade mark in Australia; or

(ii)     to authorise the use of the trade mark in Australia; or

(iii)    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 to which the non‑use application relates and that the registered owner:

(iv)    has not used the trade mark in Australia; or

(v)     has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

(b)     that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)     used the trade mark in Australia; or

(ii)     used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

Note 1: For file and month see section 6.

Note 2: If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

38.     For the purposes of paragraph 92(4)(b), the relevant three-year period ended on 12 December 2011. Notice of opposition to the removal application was filed by Tsit Wing on 2 May 2012.

39. Section 100 places the burden squarely upon an opponent to rebut a removal applicant’s allegations made under section 92(4)(a) and/or (b). Section 101 provides for the Registrar’s delegate, should they find they have been convinced by the opponent’s evidence that circumstances exist making this reasonable, to decide not to remove the trade mark from the Register, even though the ground on which the removal application was made has been established.

Evidence under regulation 21.19

40. Before discussing in detail the opponent’s case, I must firstly settle some outstanding evidence matters relating to regulation 21.19 of the Regulations, which provides:

Registrar may use information available

(1) If:

(a) information that is available to the Registrar is relevant to proceedings before the Registrar; and

(b) the Registrar has reason to believe that the information is not known to a party to the proceedings; and

(c) the Registrar proposes to take the information into account in making a decision in the proceedings;

before making the decision the Registrar must:

(d) provide the information to the party; and

(e) give the party a reasonable opportunity to make representations about the information.

(2) For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

41.     In the course of considering the evidence that was properly filed in support of this removal opposition, it was drawn to my attention that an issue had arisen with the omission of a confidential exhibit – ‘Confidential Annexure D’ from the statutory declaration dated 4 June 2014, by Wu Kam On, Keith, filed as Tsit Wing’s evidence in reply. At the same time the evidence was filed, on the last day of the statutory period, 5 June 2014, Tsit Wing also filed an application for an extension of time of three months within which to file further evidence in reply. However, the application was refused by the delegate on the basis that Tsit Wing had not been able to demonstrate a ‘consistent pattern of reasonable effort, promptness and diligence in relation to all their endeavours so far to file their evidence within the statutory timeframe’. Tsit Wing’s attorneys then requested a hearing on the matter, but later withdrew that request and by letter dated 28 August 2014, made instead a request under regulation 21.19 for the omitted confidential exhibit to be considered. In part, the letter explained:

The Declaration of Wu Kam On, Keith was uploaded to Objective Connect on 5 June 2014 including Exhibits WKOK 7 to WKOK 16 and Confidential Annexure D. For reasons unknown to our firm, Confidential Annexure D did not properly register within the Share on Objective Connect.

Our firm was made aware of this error by the Applicant's solicitors, Davies Collison Cave (DCC), on 8 July 2014, whereupon we immediately provided a copy of Confidential Annexure D to DCC and re-uploaded Confidential Annexure D to Objective Connect. DCC subsequently advised that it considered the timely filing of evidence to be a matter to be decided between our firm and the trade marks office.

In addition to the above non-use action, the parties are involved in opposition proceedings in respect of similar marks that contain the word 'TWG'. The same evidence contained in Confidential Annexure D was previously filed via Objective Connect in respect of these opposition proceedings. Consequently, the registrar and the other side were already in possession of the evidence contained in Confidential Annexure D on 5 June 2014.

We consider that Confidential Annexure D was timely filed. It is merely by reason of some technical error that it did not register within the Share on Objective Connect.

Grounds for a request under regulation 21.19

Failure to include Confidential Annexure D in the proceedings will materially prejudice the Opponent's case. The Opponent is not itself at fault in this matter.

Confidential Annexure D contains 4 sample invoices dated between 2009 and 2010 issued by the Opponent's Australian distributor, Rockman (Australia) Pty Ltd, to Australian customers relating to the sale of tea and coffee bearing the opposed trade mark. This information is highly relevant to the proceeding because it evidences use of the opposed mark by the Opponent during the relevant non-use period.

In Laboratoires La Prairie v Wendy Stacken-Brock [2005] ATMO 80 (21 December 2005), the Hearing Officer commented on the circumstances in which regulation 21.19 may be relied upon, noting:

"in deciding whether or not materials can be considered in relation to a decision by a hearing officer in the Trade Marks Office, the formal rules of evidence of the court system are not binding, There are distinct advantages in considering available information without the need to involve the Federal Court, if possible, provided of course, that both parties are afforded procedural fairness".

We respectfully submit that, by virtue of the fact that the other side already had a copy of the evidence contained in Confidential Annexure D and was provided with a further copy immediately upon their request, no prejudice has or will result from the Hearing Officer/Registrar accepting Confidential Annexure D into the proceedings.

42.      By letter dated 8 September, the delegate informed TWG that they might make representations about the request at any time, but that unless they requested a separate hearing on the issue, Tsit Wing’s request and any representations by TWG would be considered by the hearing officer when the substantive matter was decided.

43.     In the event, Tsit Wing has absolved itself of any further obligations to press its case on this matter, or indeed any other aspect of the opposition, by declining to attend the hearing, or even to provide written submissions for consideration there. TWG did not make a written response upon the point, but at the hearing Ms Ryan correctly observed that the invoices in question do not actually show use of the trade mark at issue. Instead, although Mr Wu’s declaration[13] ascribes use of a version of Tsit Wing’s ‘TWG’ trade marks to the sales documented on the invoices, the items which actually appear on the omitted invoices are referred to as ‘Flora Tea’, ‘Ruby Coffee’ and ‘Sapphire Coffee’.

[13] Statutory declaration of Wu Kam On, Keith, dated 4 June 2014, para 21.

44.     Ms Ryan also suggested, both in her written submissions and at the hearing that, if I was to allow Tsit Wing’s evidence in under regulation 21.19, then I should also allow TWG to rely on an interchange of the evidence of use it had provided in a declaration[14] supporting its opposition to Tsit Wing’s trade mark application no. 1350518, to support its arguments for the partial removal of registration number 1099209. The logic behind the suggestion that this could be managed under regulation 21.19 without recourse to consultation with Tsit Wing, was the same as that used by Tsit Wing in its request, that the evidence at issue had already been put before the other party in a closely related matter.

[14] Statutory declaration of Gary Law Beng Chong, dated 3 December 2012, paras 15-17

45.     I have stated elsewhere[15] that a serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the Registrar for the making of that decision.[16] This principle remains undiminished and is a potent factor to be weighed into the balance whenever a Registrar’s delegate exercises discretion under the legislation that has the potential to exclude evidence crucial to an opposition outcome.[17]

[15] AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2015] ATMO 7 (29 January 2015), para 40.

[16] Studio SrL v Buying Systems (Aust) Pty Ltd [1992] AIPC 90-858.

[17] See also Seven Network (Operations) Limited v Giorgio Armani SPA, Milan, Swiss Branch Mendrisio [2013] ATMO 70 (29 August 2013), para 16.

46.     In this matter, as it happens, I do not believe either piece of evidence to be critical to either party’s case. Further, I am underwhelmed by the level of attention paid at this late stage to attempting to persuade me to take an opposite view. I am reluctant to accede without protest to an unsettling assumption that appears to have been made here by both parties. This is the assumption that, post commencement in April 2013[18] of stricter extension of time for evidence provisions as well as the removal of formal further evidence provisions, regulation 21.19 might almost be a given to assist in ‘wrapping up loose ends’ at the time an opposition comes before a hearing officer. Emphatically, opposing parties who intend to rely on such an assumption will do so at their peril. There remains an indisputable onus upon a party submitting evidence to exercise careful oversight of that process at all times. If the onus is properly met, there will be far fewer cases of omission such as those before me here. And oppositions should arrive at the end of the process in a properly organized state, with all parties clear about what evidence is safely in and what is in dispute, and if so, exactly why.

[18] By the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1).

47.     A recent decision by Hearing Officer Heath Wilson, Fed Square Pty Ltd v Federation IP Pty Ltd,[19] discussed these issues in more detail, and sounded a cautionary note for future opponents. He observed:

Parties should not attempt to circumvent the extension of time provisions under the misguided assumption that Regulation 21.19 will apply in every case. Furthermore, while it is available to parties, it is clear that Regulation 21.19 should not be perceived or used as a substitute for the now repealed provisions allowing for the filing of further evidence (or, indeed any available evidence stage). …

The implications of evidence not being filed at all should inform the parties’ decisions made around the preparation of the evidence, and it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it. To allow regulation 21.19 to be utilized in that way may render the requirements for the current extension of time provisions otiose. Rather, there must be further circumstances that make it reasonable for the material to be taken into account.[20]

[19] [2015] ATMO 42 (15 May 2015).

[20] Ibid, paras 54 and 55.

48.     Having considered all of the issues playing into the mix here, I decline to exercise the Registrar’s discretion in relation to either party’s request for material to be considered under regulation 21.19.

Onus on the opponent to rebut grounds of removal

49.     Ms Ryan’s submissions about Tsit Wing’s evidence and its case for rebuttal of TWG’s grounds for removal were comprehensive. She asked and answered each of the following questions in the negative:

(a) Did Tsit Wing use the Tsit Wing Mark in good faith in relation to the class 30 goods under registration no. 1099209 during the Relevant Period, or at all?

(b) Did Tsit Wing use the Tsit Wing Mark with additions or alterations not substantially affecting its identity in good faith in relation to the class 30 goods under registration no. 1099209 during the Relevant Period?

(c) On the day on which the application for the registration of the Tsit Wing Mark was filed, did Tsit Wing have an intention in good faith to use, or authorise use of, the Tsit Wing Mark in Australia, or to assign the Tsit Wing Mark to a body corporate for use by the body corporate in Australia;

(d) If not, should the Registrar’s discretion be exercised in favour of retaining the Tsit Wing Mark on the Register?

50.     Ms Ryan pointed to the concessions made by Tsit Wing in its evidence, where Mr Wu declared that Tsit Wing had used or authorised use of ‘variations’ of its trade mark, including the trade mark subject of application no. 1350518, during the relevant period. In his declaration, Mr Wu said:[21]

[21] Statutory declaration of Wu Kam On, Keith, dated 27 February 2013, paras 15-16.

51.     Ms Ryan then went on to argue that use of these trade marks could not be taken as use of the subject trade mark ‘with additions or alterations not substantially affecting its identity’, as required by the provisions of subsections 100(2) and (3). She quoted the findings of Yates J in Optical 88 Ltd v Optical 88 Pty Ltd (No 2),[22] where he determined that merely changing the orientation of common elements (including Chinese characters) in a composite trade mark resulted in three different trade marks between which ‘a substantial impression of identity did not arise’.[23]

[22] (2010) 89 IPR 457.

[23] Ibid, at [261].

52.     Leaving aside any comparisons with the last, least relevant trade mark listed by Mr Wu, there is definitely a very strong, unifying impression left by the coloured discs and the letters ‘TWG’ in identical typeface in the first two trade marks pictured above and also the subject trade mark, which I will reproduce again here, for the purposes of comparison:

53.     I believe it would be fair to say of those three trade marks that ‘in a real sense a claim to proprietorship of the one [trade mark] extends to the other.’[24] However, the additional features in the subject registration are of equal size and prominence to those other features and cannot be discounted as not ‘substantially affecting’ the identity of that trade mark. Irrespective of whether people viewing the additional features might read and understand them to mean ‘TSIT WING GROUP’ or instead just identify them as Chinese characters indicating something unknown, the addition is significant and the overall effect is not substantially that of identity with the other trade marks.

[24] Carnival Cruise Lines Inc v Sitmar Cruises Ltd, (1994) 31 IPR 375, at 391.

54.     Having examined Tsit Wing’s evidence, and taken into account the issues discussed above, I have come to the conclusion that TWG’s grounds of removal have not been rebutted. Tsit Wing has not demonstrated use of the precise, challenged trade mark during the relevant period. However, that is not the end of the matter.

Discretion not to partially remove trade mark from the Register

55.  TWG’s removal application seeks removal of the trade mark for all the goods specified in class 30. This represents a list containing over twenty separate food items. In his declaration in reply to the removal applicant’s evidence, Mr Wu has explained in considerable detail Tsit Wing’s use over many years, including the relevant period, of variations of trade marks based upon the letters ‘TW’ and ‘TWG’. He then specifically identifies use in Australia of those variations in relation to ‘tea and coffee’.[25] I accept Tsit Wing’s evidence upon this point. It is therefore open to me to consider whether the Registrar’s discretion not to partially remove the trade mark should be invoked.

[25] Statutory declaration of Wu Kam On, Keith, dated 27 February 2013, paras 14-33.

56.  The circumstances under which such discretion might be exercised have been described in the Federal Court by Bennett J, in the following terms:

The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the [Registrar or the] Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.

In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).

In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:

·there had been no abandonment of the trade mark;

·the registered proprietors of the mark still had a residual reputation in the mark;

·there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;

·the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

·the registered proprietors were not aware of the applicant’s sales under the mark.[26]

[26] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135 (23 February 2009), (2009) 80 IPR 38, at [167]-[169].

57.  Later in her decision, Bennett J observed that the factors in favour of maintaining trade marks on the Register under section 101 were less to do with the protection of those trade marks and their proprietor and ‘more to do with the public interest’.[27]

[27] Pioneer Computers Australia Pty Limited v Pioneer KK, op. cit, at [231].

58.  In the present case, I may yet determine that it is appropriate to allow the opponent’s entire specification of goods in class 30 to remain on the Register. However, this depends upon my being satisfied that the public would not ‘draw a distinction’[28] between ‘tea and coffee’ and the remaining goods, covered by the registration, such that deception and confusion could result from any other party using the same trade mark on those remaining goods. I am so satisfied. Irrespective of whether Tsit Wing’s specification of goods in class 30 is restricted to just ‘tea and coffee’, or even if it is removed altogether for that class, the registration covering ‘Beers; mineral and aerated waters; syrups and other preparations for making beverages’ in class 32 will remain. This aspect of the situation, the decision whether to initiate a full or partial removal action in the first place, was a choice entirely under TWG’s control. But that choice now reinforces the fact that any argument the public would not be deceived and confused by another trader using the same trade mark on other class 30 goods besides tea and coffee, when Tsit Wing would continue in any case to be entitled to use it on various items in class 32, is simply untenable. It is appropriate under these circumstances to exercise the Registrar’s discretion under section 101.

Decisions and costs

[28] Ibid, at [234].

Opposition to registration - Trade Mark No. 1350518

59. Section 55(1) of the Act provides:

(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.

60.     I find here that the opponent has not met the onus upon it and has not established either of the grounds of opposition argued at the hearing. Trade Mark No. 1350518 may therefore proceed to registration after one month from the date of this decision has expired. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

61. Tsit Wing has requested its costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award the costs in this opposition to registration matter, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against TWG.

Opposition to removal for non-use - Trade Mark No. 1099209

62.     I am satisfied, in terms of section 101(3), that it is reasonable not to partially remove Tsit Wing’s trade mark. I therefore refuse to remove the class 30 goods covered by Trade Mark No. 1099209 from the Register.

63.     Neither party in this matter could be said to have been conclusively successful. Under these circumstances I decline to award costs against TWG. It is appropriate that each party bears its own costs in the removal opposition matter.

Claudia Murray
Hearing Officer
Trade Marks Hearings
3 July 2015