Vivo Mobile Communication Co Ltd v ASUSTEK Computer Incorporation

[2019] ATMO 108

TRADE MARKS ACT 1995

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

Re:Opposition by ASUSTEK COMPUTER INCORPORATION to an application under section 92 of the Act by Vivo Mobile Communication Co., Ltd. for removal of trade mark number 1524026 (9) – ASUS VIVOBOOK (Fancy) - in the name of ASUSTEK COMPUTER INCORPORATION

Delegate:

Nicholas Smith

Representation:

Opponent: Brian Elkington of Adams Pluck

Applicant: Louise Emmett of Madderns Pty Ltd

Decision:

2019 ATMO 108

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence shows use of the Trade Mark for some of the goods during the relevant period. Registrar’s discretion under s 101(3) not exercised in favour of the Opponent for the remaining goods – trade mark to remain on Register for some of the goods.

Background

1. This decision is made pursuant to an application made on 20 December 2017 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Vivo Mobile Communication Co., Ltd. (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all of the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1524026

Lodgement date

5 November 2012

Goods

Class 9: Notebook computers; Tablet computers; Electronic book reader; Personal digital assistants (PDA); Electric pocket translators; Computer keyboards; Computer mouse; Motherboards; Interfaces for computers; Computer memories; Loudspeakers; Computer operating programs, recorded; Headphones; Cameras; Camcorders; Mobile phones; Computer liquid crystal display monitors; Liquid crystal display (LCD) televisions; Personal stereos; Batteries

(‘Registered Goods)

Owner

ASUSTEK COMPUTER INCORPORATION.

Trade Mark

(‘Trade Mark’)

2.     ASUSTEK COMPUTER INCORPORATION (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 23 February 2018 and a Statement of Grounds and Particulars (‘SGP’) on 22 February 2018.  The Applicant filed a Notice of Intention to Defend on 17 May 2018.

1. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’), with the Applicant filing evidence in answer (‘EIA’), each of which is discussed in more detail below.

   4.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 14 February 2019 the Opponent requested an oral hearing, with the Applicant making a similar request on 13 March 2019.  The matter was set down for a hearing in Canberra on 5 June 2019. I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 12 April 2019 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 22 May 2019 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 29 May 2019 (‘Applicant’s Submissions’).  At the hearing Brian Elkington of Adams Pluck represented the Opponent, appearing in person and Louise Emmett of Madderns Pty Ltd represented the Applicant, also appearing in person. 

   5.  I have based my decision on consideration of the following relevant material and the oral submissions made at the hearing on 5 June 2019:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Evidence in Support

   ·The Applicant’s Evidence in Answer;

   ·The Opponent’s Submissions; and

   ·The Applicant’s Submissions. 

   The Relevant Legal Provisions

   6. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (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:

   …

   (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.

   7. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 20 November 2017 (‘relevant period’).  Such use of the Trade Mark must be use by the registered owner or an authorised user in the relevant period. 

   8. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the application have in fact passed.

   [1] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter.

   9. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   …
    (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

   10.     I proceed on the basis that the standard of proof is the ordinary civil standard being the balance of probabilities.[2]  

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   11.     In accordance with s 101, if the grounds for removal are established, the Registrar may decide to remove the Trade Mark from the Register for all or some of the goods identified in the Application for Removal, or if satisfied it is reasonable to do so, decide the Trade Mark should not be removed.

   12. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[4]

   [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].

   [4] Nodoz Trade Mark (1962) RPC 1, 7.

   Opponent’s Evidence

2. The Opponent’s evidence in this matter consists of a declaration made on 24 August 2018 by S.Y. Shian, Corporate Vice President of the Opponent, with Attachments A to E (‘Shian Declaration’).     

3. The Shian Declaration conveys the following information:

   ·The Opponent commenced the sale and distribution of products bearing the Trade Mark in July 2017.  It distributes its products in Australia through an agent called Synnex Australia Pty Ltd.

   ·In September 2017 the Opponent held a product launch in Alexandria NSW.  The Opponent also has an Australian website at which has sold the Registered Goods under the Trade Mark since July 2017. 

   ·The Registered Goods sold under the Trade Mark are available through a variety of outlets, including Amazon, eBay, and retailers such as JB H-Fi, Harvey Norman and Bing Lee.  The Opponent has since July 2017 used various marketing materials similar to those annexed to the Shian Declaration that refer to the Trade Mark.

   ·From July to November 2017 the Opponent sold over 5,000 ASUS VivoBook computers in Australia

4. The Shian Declaration contains, as annexes, invoices and freight notices indicating the sale and delivery of computer products, said to be the Opponent’s ASUS Vivobook computer to Synnex Australia, though these invoices and freight notices do not refer to the Trade Mark and relate to an entity that is not the Opponent (though it may be a related entity).  It also contains various screen shots and marketing materials that refer to the Opponent’s ASUS Vivobook computer, though those materials either post-date the relevant date or are undated. The Shian Declaration states that these screen shots reflect the screen shots as existed during the relevant period.  Finally the Shian Declaration annexes extracts from the ASUS Product Guidebook Spring 2017-Summer 2018, that according to Mr Shian, was issued on 1 April 2017, and was made available to Australian consumers from that date. 

   Applicant’s Evidence

5. The Applicant’s evidence in this matter consists of a declaration made on 11 December 2018 by Luo Xuehong, Brand Manager of BBK Communication Technology Co. Ltd, the owner of the Applicant, with Exhibits LY-1 to LY-5 (‘Luo Declaration’).      

6. The Luo Declaration conveys the following information:

   ·The Applicant and its related corporate entities including BBK Communication Technology Co. Ltd (collectively ‘BBK’) are companies that specialize in the design development and manufacture of smart phones, smart phone accessories and related services.  BBK is the second largest smartphone manufacturer in the world.

   ·The Applicant has used the trade mark VIVO (‘VIVO Mark’) since 2011 and has significant global sales of VIVO branded mobile phones.  The VIVO Mark has been promoted globally through advertising and sponsorship of sporting events. 

   ·The Applicant has an extensive trade mark portfolio including Application No. 1740804 for a stylized form of the VIVO Mark for various goods in class 9 including smartphones.  As a result of the existence of the Trade Mark, Trade Mark Application No. 1740804 has not proceeded to registration.

   Discussion

7. To successfully oppose the Application for Removal the Opponent must establish, pursuant to s 100 of the Act, that it has used the Trade Mark in the relevant period or that there was an obstacle to use in that period. Use of the Trade Mark by another person who was authorised by the Opponent is taken to be use of the Trade Mark by the Opponent[5]. 

   [5] s 7(3) of the Act.

8. In the event that the Opponent fails to establish such use, the Registrar may exercise its discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

   20.   Having reviewed the EIS, I am satisfied that the Opponent has used the Trade Mark in Australia during the relevant period for Notebook Computers (‘Used Goods’).  The evidence in the Shian Declaration is that the Opponent has advertised its ASUS Vivobook laptop computer (which is a notebook computer) in Australia since April 2017.  The documentary evidence supporting this includes a catalogue clearly dated ‘spring 2017’ and said by Mr Shian to have been made available from April 2017. 

   21.   Mr Shian also declares that the Opponent has sold the Used Goods in Australia under the Trade Mark since July 2017.  While I acknowledge the Opponent’s documentary evidence in support of this claim could be more complete in that it does not include clearly marked invoices referring to the Trade Mark from within the relevant period, I consider that the limited documentary evidence annexed to the Shian Declaration purporting to be invoices for the sale and delivery of ASUS Vivobook computers to Australia is sufficient to support the sworn claims as to use made by Mr Shian.  I am satisfied, on the balance of probabilities that the ASUS Vivobook laptop computer was advertised and offered for sale in Australia from the dates identified by Mr Shian in his declaration and that this amounted to use of the Trade Mark by the Opponent.

   22.   I find that there is no evidence of use of the Trade Mark (either before, during or after the relevant period) for the remaining Registered Goods being: Tablet Computers; Electronic book reader; Personal digital assistants (PDA); Electric pocket translators; Computer keyboards; Computer mouse; Motherboards; Interfaces for computers; Computer memories; Loudspeakers; Computer operating programs, recorded; Headphones; Cameras; Camcorders; Mobile phones; Computer liquid crystal display monitors; Liquid crystal display (LCD) televisions; Personal stereos; Batteries (‘Remaining Goods’).  To the extent that the submission was made, I do not accept that the use of the Trade Mark for notebook computers encompasses use for goods that are potentially components of notebook computers such as batteries and computer mouse; they are separate products that are capable of being sold separately.  

   Obstacles to use

   23. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Remaining Goods in the relevant period, pursuant to s 100(3)(c) of the Act. In the interests of completeness I note that I have been unable to identify any such obstacles. As there is no evidence or claim that there were any circumstances that were an obstacle to use of the Trade Mark, I turn to consider whether the discretion to allow the Remaining Goods to remain on the Register should be exercised.

   Registrar’s Discretion

   24.     As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[6] However, as indicated at paragraph 11, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

   [6] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

   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 Court [or Registrar] 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.[7]

   [7] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

   Her Honour also noted:

   By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[8]

   [8] Ibid [171]-[172].

9. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[9] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[10] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[11]

   [9] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [10] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [11] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

   26.     Factors that have been found relevant to the consideration of whether to exercise the discretion include:

   ·There had been no abandonment of the trade mark;

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

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

   ·The applicant 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 proprietor was not aware of the applicant’s sales under the mark.[12]

   [12] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

   27. In the present case, the Opponent submitted that I should exercise the discretion not to remove the Trade Mark in respect of the Remaining Goods on the basis of s 101(4) of the Act, namely that the Trade Mark has been used in respect of similar goods, being the Used Goods. The Opponent notes the similarity between mobile phones (in particular) and laptop computers and submits that as a result of this similarity, by reason of the removal of the Trade Mark in respect of the Remaining Goods, confusion will occur among the public.

   28.   The Applicant submits that there is no evidence of the Opponent having any intention to use the Trade Mark on the Remaining Goods, that it has a significant commercial interest in the removal and in any event the registration of the VIVO Mark on the goods for which it is sought to be registered, being telephone-related goods, would not lead to any deception or confusion in the marketplace. The Applicant also notes that the similarity between the Used Goods and Remaining Goods is one factor that goes to the discretion and to the extent that the discretion was exercised in Pioneer Computers Australia Pty Limited v Pioneer KK[13] was done so in very different circumstances.

   [13] [2009] FCA 135.

   29. In the present case, I do accept that there are similarities between the Used Goods and some of the Remaining Goods, however this is not by itself determinative of whether or not I should exercise the discretion. S 101(4) of the Act only identifies the use of the Trade Mark on similar goods as a factor that I may take into account in the exercise of the discretion.

   30.   It appears that the Opponent has only used the Trade Mark for the Used Goods and has evidenced no intention to use the Trade Mark for the Remaining Goods[14], nor does the Trade Mark have any reputation in the Remaining Goods (and only a very limited reputation in the Used Goods).  There is a public interest in the integrity of the Register, and I do not consider the public interest in this case is served by allowing a mark to remain registered for a wider variety of goods then used or intended to be used by the Opponent.  If I were to remove the Remaining Goods the Opponent would still retain the protection of the Trade Mark for the Used Goods and (both in respect of any opposition or infringement matters) any similar goods or closely related services.  As such I do not consider that the private commercial interest of the Opponent would be significantly impacted by the removal of the Trade Mark for the Remaining Goods.  Nor, with one limited exception, would there be a significant risk of consumer confusion; the scope of the protection granted to the Opponent under the revised reputation would (absent any defenses) prevent the use of deceptively similar marks for the Used Goods and any similar goods or closely related services; it is not necessary for the protection of the public to retain the registration of the Trade Mark for a wider range of goods than those for which it has actually been used.

   [14] I note that the suggestion in paragraph 27 of the Opponent’s Submissions that the Opponent could ‘consider marketing a mobile phone or similar product in conjunction with its computer products’ is speculative and not supported by any evidence.

   31.   By contrast the Applicant seeks to register as a trade mark its VIVO Mark for smartphones and related products that it has used continuously globally since 2011, which it has not been able to do by reason of the existence of this Trade Mark as presently registered.  There is obviously a significant commercial interest of the Applicant in having its application assessed against the Trade Mark as registered for a narrower range of goods, one that reflects the manner in which the Trade Mark has actually been used in Australia.[15]  Given the matters considered above I consider that, with one exception this is not an appropriate case to exercise the Registrar’s discretion to allow the mark to remain registered in respect of goods for which it has not been used in the relevant period.

   [15] I make no finding whether the goods for which the Applicant seeks to register its VIVO Mark are similar goods to the Used Goods; this is a matter to be considered by the Registrar when examining the VIVO Mark.

   32.   I do exercise the Registrar’s discretion to allow the Trade Mark to remain registered for Tablet computers.  Due to changes in technology, the difference between Notebook computers and Tablet computers is negligible in many cases.  Indeed in many instances, they are one and the same product (i.e. a notebook computer that can also be used as a tablet computer).  In such a case, notwithstanding the lack of use, it is appropriate to allow the Trade Mark to remain on the Register for Tablet computers.

   Decision

   33.     I decide that the Opponent has partly established its opposition to removal and the Trade Mark should only be removed from the Register in respect of the Remaining Goods save Tablet computers.

   34.     Accordingly, I refuse to remove trade mark registration 1524026 in its entirety but direct that one month from the date of this decision the specifications of goods be amended to the goods listed below and the Trade Mark will be removed from the Register in respect of all remaining goods.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

   Class 9: Notebook computers; Tablet computers

   Costs

   35.  Both parties have requested their costs.  However as both parties have had a degree of success in respect of the application for removal of the Trade Mark I determine that each party should bear their own costs.

   Nicholas Smith

   Hearing Officer

   Hearings and Oppositions

   15 July 2019