Wistron Corporation v Zheng Shi

[2013] ATMO 25

TRADE MARKS ACT 1995

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

Re:Opposition by Wistron Corporation to registration of trade mark application 1332624 (9) – WISTRON - filed in the name of Zheng Shi.

Delegate:	Bianca Irgang
Representation:	Opponent: Paul Fong and Leanne Oitmaa of Watermark Patent and Trade Mark Attorneys Applicant: Mr Zheng Shi was self represented
Decision:	2013 ATMO 25 s.52 opposition – s 60 ground of opposition established for all goods - trade mark use likely to deceive or cause confusion - no requirement to consider other grounds – registration refused.

Background

1. Zheng Shi (‘the applicant’) filed application number 1332624 on 20 November 2009 in class 9 of the International Classification of Goods and Services. Relevant details of the application are set out below.

Trade mark:  Wistron

Trade mark application:        1332624

Filing Date:  20 November 2009

Specification:  Class 9: Phase modifier, rectifier, transformer; switch-boards, relays, open and shut switches; electric resistances, condensers; lightning arresters; shutter mechanisms; electric connectors; fuses; electric wire and cable; electric switches; wiring terminals, wiring branching units, wiring cord fasteners, wiring sockets, wiring connectors and other wiring devices; drycells; transistors, diodes, electronic rectifiers; integrated circuits; electron tubes, cathode ray tubes; telephone receivers; telegraphic apparatus and installations; facsimile transmission apparatus, voice frequency facsimile transmission machines; radio paging transmitter and receiver; radar alarm equipment; transceivers; closed circuit television camera and monitors; audio amplifier microphones; electric megaphones; carrier relays; radio transmitter and receivers; television transmitters and electronic desk top calculators; supersonic wave-applied detectors, magnetic detectors, magnetic prospecting machines; geiger counters; direction finders; radio beacon apparatus; radar apparatus; dynamometers; SP (standard play) records, IP (intelligent personal) records, EP (extended play) records, stereophonic records, phono-sheets being phonographic records; flash-guns for photography, flash bulbs; electrostatic copying machines and electronic punching card machines; electrical, electronic, scientific and communication apparatus; data processing apparatus; apparatus and equipment for recording and/or reproducing audio and video signals; measuring, alarm, detecting, signalling, checking, counting, navigational, testing and inspecting apparatus and instruments; automatic bank note processing machines; electronic radiation monitors for reactors; television cameras, video tape recorders and readers and accessories thereof; magnetic and laser recorded tapes, discs, sticks and bars for recording video, music and/or data; tape recorders, video disc players, receivers, and electronic accessories therefor; sound recording machines; electric phonographs, phonograph record players; tape recording machines, tape recorders, cassette tape recorders; coils for loudspeakers; amplifiers; cable telecommunication machines and electronic accessories therefor; 8 track cartridge players; magnetic tapes; cartridge and cassette decks; speaker systems; receiving tuners; cartridge and cassette tape players for automobiles; wireless microphones; electro-optical mark readers, electro-optical character readers; electric irons (flat irons); electronic time switches; electric mosquito-killers; voltmeters, wattmeters, ammeters, watt-hour meters, frequency meters, phase meters, electronic ground detectors, electric wave measuring instruments, antenna measuring instruments, oscillators, detectors, magnetic measuring instruments, circuit meters, oscillographs; computers; records for phonograph record players, needles and styli for phonographs, phono-cartridges, noise reduction devices and units for audio equipment, loud-speaker systems, audio amplifiers, microphones, headphones, equalizers, antennas, sound recording and reproducing machines, stereophonic phonographs, radio cassette tape recorders, digital audio players, digital audio discs, audio racks, audio-visual equipment for educational use; intercommunication systems; telephone equipment, telephone exchangers, video-phone equipment, transceivers, facsimiles, microwave communication equipment, optical communication equipment, VHF (very high frequency) and UHF (ultra high frequency) communication equipment, satellite communication equipment, mobile communication equipment; public address systems, electric megaphones; battery chargers, storage batteries, solar cells and solar cell electronic devices; car radio and car tape recorders; electric document filing machines; automatic ticket issuing machines, automatic ticket inspecting machines, automatic fare adjusters, automatic computerized car identification systems; process control instrumentation systems, industrial computer control systems, turbine supervisory instruments, sensors, electronic air pollution monitoring systems, electronic water quality monitoring systems; burner flame detectors; telemetering equipment, data loggers, pin hole detectors, electronic testing and inspecting equipment, electronic counters; oscilloscopes; electronic meters and indicators; laser and applications thereof; airborne electronic equipment; navigation aids equipment; x-ray analyzers; pulse-height analyzers; magnifying glasses; counterfeit coin detecting machines, machines for counting, machines for counting money; electronic and electric installations for use in the supervision, checking and automatic remote control of industrial operations and in the calculation and furnishing of data and statistical information; flashlamps for photographic purposes; electronic cash dispensers, automatic teller machines, automatic depositors; fluorescent screens; electrodes for electric welding; semiconductor devices; crystal filters; thermal printer heads; projectors, testing equipment for semiconductors; electron tubes, namely transmitting tubes, rectifier tubes, discharge tubes, microwave tubes, camera tubes, cathode-ray tubes, x-ray tubes and laser plasma tubes; deflection yokes; liquid crystal devices; radar equipment; electronic page-readers; wiring devices including receptacles, plugs and switches; measuring apparatus, namely x-ray or gamma-ray thickness gauges, gamma-ray level gauges, photoelectric width gauges, electromagnetic flow meters and watt-hour meters; x-ray non-destructive testing units; leak testers; detectors; records; power supply systems; electronic engine control systems (for automobile engines); and parts and fittings included in class 9 for all the aforesaid goods; all the aforesaid good being included in this class; golf indoor computer game played via a computer and virtual golf club (the liquid crystal display on the head of the all-purpose club displays yardage, par, course geography and wind conditions and pressing a button on the grip simulates the club striking the ball); virtual computer games relating to sports, weight reduction, diving or driving and all played via computer; boxes namely electric devices that record the motion of the course of computers, machines, aeroplanes and submarines; metal detectors; detectors being environmentally friendly equipment; speakers for audio equipment or microphones; magnetic and laser recording and readable materials including SSD (solid state drives and solid state disks) and USB (universal serial bus) flash drives, high speed duplicating tape, audio cassette tape, video tape, magnetic tape, magnetic film and floppy disc, magnetic card sheets, magnetic tapes; compact disc and digital video disc writers and drivers, floppy disc writers and drivers; cartridges; cameras and video cameras, computer printers; projection equipment, overhead projectors; batteries; satellite navigation equipment; electric devices for repelling insects; scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, automatic driving systems, electric maps and indicators; lie detector machines; apparatus for recording, transmission or reproduction of sound or images, including televisions, video players, video recorders, portable audio equipment, radios, portable radios, portable cassette players, portable CD players, and portable combination radio/cassette/CD players; audio cassette, CD, DVD, EVD (enhanced versatile disc), HDVD (high-definition video disc), and blue-violet laser disc readers and burners; mobile multi card reader, fingerprint and iris readers; telephones, mobile phones, satellite phones, global positioning systems (GPS), magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers; calculating machines, data processing equipment, CPU and computers, including computer parts and accessories, computer software for sending and receiving electronic mail; computer software; fire extinguishing apparatus; electric ID cards; alarms; laser equipment (not for medical purposes); electric locks; electronic translating equipment; digital and flash memory card, stick and bar readers including SSD (solid state drives and solid state disks) readers; e-paper storage and display media, apparatus and devices; parts and accessories for all of the above

1. The Application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 24 March 2011. Wistron Corporation (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 23 June 2011. Thereafter the opponent served and filed evidence as allowed by the provisions of the Trade Mark Regulations 1995 (‘the Regulations’). The applicant did not file and serve any evidence in answer to the opposition although submissions were provided.

2. I heard the matter in Canberra on 27 February 2013 as a delegate of the Registrar of Trade Marks. Paul Fong of Watermark represented the opponent. The applicant was self represented.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

2. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on the grounds under sections 58, 59, 60 and 62A of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that these grounds have not been established.

3. Therefore, the grounds remaining for my consideration are those under sections 58, 59, 60 and 62A of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods specification, there is no requirement for the other grounds of opposition to be considered.

Evidence

1. The opponent’s consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Simon Lin	Chairman and CEO of Wistron Corporation	17 February 2012	SL1 to SL7
Leanne Michelle Oitmaa	Patent and Trade Marks Attorney with Watermark Patent and Trade Mark Attorneys	8 May 2012	LMO-1 to LMO-5

Discussion

Section 60 - Reputation in Australia

1. Section 60 of the Act provides:

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

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

1. To establish the ground of opposition under section 60, the opponent must demonstrate:

• That, at 20 November 2009 another trade mark had acquired a reputation in Australia; and

• That, because of that reputation, use of the applicant’s trade mark would be likely to deceive or cause confusion.

1. The applicant’s trade mark is the single word WISTRON. In the statutory declaration of Simon Lin (‘the Lin declaration’), Mr Lin states that the opponent has used its plain word WISTRON trade mark on all of its goods and services on a continuous basis since 9 July 2001 when the opponent began trading under the name WISTRON. Mr Lin also states that the opponent was established in Taiwan on 30 May 2001 and was listed on the Taiwan stock exchange on 19 August 2003.

2. Unlike sections 44 or 58 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods and services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I say now that a comparison of the opponent’s WISTRON trade mark with the applicant’s WISTRON trade mark reveals that the marks are substantially identical. When comparing the two trade marks I draw particular guidance from Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 where Windeyer J said at paragraph 12:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …

3. From the evidence it is clear that the opponent is using its WISTRON trade mark on the same, similar or related goods in class 9 goods as those specified by the applicant.

4. In his declaration, Mr Lin asserts that the opponent has offered all of its services and goods under the WISTRON trade mark to its customers worldwide since at least July 2001. I note from that declaration that the opponent’s customer base primarily comprises of international branded ITC/computer branded companies such as Dell and Acer. Exhibits SL-2 (copies of Forbes Magazine dated September 15 2008, Business Week issues dated July 2006 and November 2009 and Fortune Global 500 dated October 2009), SL-4 (2010 Annual Report) and SL-6 (print-outs form the opponent’s website) accompanying the Lin Declaration support Mr Lin’s assertions regarding the opponent’s international customer base.

5. I must now consider whether the opponent has demonstrated that a reputation existed in Australia before the priority date of the opposed trade mark such that use of the opposed trade mark would be likely to deceive or cause confusion. Reputation must be established as a matter of fact.[3]  While it is not necessary to prove reputation by direct evidence of consumer appreciation it is commonplace to infer reputation from a high volume of sales together with substantial advertising and other promotions.[4] In relation to reputation Kenny J states in McCormick & Co Inc. v McCormick[5]:

   [3] Lockhart J in Conagra Inc v McCain Foods (Aust) Pty Ltd, (1992) 23 FCR 302

   [4] McCormick & Co Inc v McCormick (2000) 51 IPR 102, at 129.

   [5] 51 IPR 102, at 128

In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

At 129 Kenny J continues:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product:…

1. Mr Lin states that the opponent commenced business in 2001 and that since that time the world wide sales of the opponent’s WISTRON branded goods has been very considerable reaching many hundreds of millions of dollars (confidential exhibit SL-1). The opponent has been featured internationally and in Australia in both print (exhibit SL-2) and online media (exhibits SL-3 and SL-6). It is clear that the opponent has established a significant presence in the electronic goods industry as a manufacturer.

2. While the Lim declaration shows that the annual turnover for the opponent’s goods has been very considerable, there is no break down in figures and it is impossible to determine how much of this turnover may be attributed to the opponent’s WISTRON branded goods being sold in Australia. However, from the international and Australian print publications that the opponent has provided in (Exhibit SL-2) it is mentioned that the opponent is one of the Top 50 Best Big Public Companies in Asia with very considerable market value and that the opponent also ranks very highly in the world’s Top Information Technology 100 being listed as number 18 in July of 2006. It is clear from the evidence that the opponent has significant market share as a manufacturer of electronic goods and that its goods are widely used and purchased by large consumers such as Dell, Acer and Sony who on-sell these goods in many countries including Australia. I note that in 2006 the opponent was the manufacturer of the Xbox 360.

3. The applicant made submissions that there is no such thing as a WISTRON computer and that you could not buy a WISTRON branded computer in a store. However, Mr Zheng Shi did concede that the components inside of a number of different electronic goods available for sale in Australia did bear the opponent’s WISTRON trade mark. As the opponent is a manufacturer of electronic goods which it sells to large international branded ITC/computer branded companies it is not surprising that the ‘insides’ of those goods would be branded with the opponent’s WISTRON trade mark. It is also likely that repairmen or any other person who ‘opened up’ the case of some of these electronic products would be aware of the opponent’s WISTRON trade mark.

4. I am satisfied that the opponent has a sufficient reputation in its goods bearing its WISTRON trade mark before the priority date of the opposed trade mark. However, I need to determine if, given this reputation in Australia, use of the opposed trade mark would be likely to deceive or cause confusion. In my consideration of the likelihood of confusion or deception, I am not to be influenced by the evidence of how the applicant uses its trade mark. I am to consider any of the modes of business that would be within the scope of the registration, should it be granted in the terms presently sought.

1. The opponent has demonstrated it has used its WISTRON trade mark to a very wide extent in manufacture of electronic goods. The applicant has not provided evidence of his use of the trade mark except for three photographs of what appears to be a USB or small case engraved with the word WISTRON. These photographs are undated and it is unclear if these goods have ever been offered for sale to the Australian public.

2. Mr Zheng Shi did provide considerable verbal submissions at the hearing whereby he made numerous references to his use of the WISTRON trade mark which he alleged would be confirmed by a tour of his warehouses. He also stated that he had a number of customers who would confirm that he had sold them goods in the past bearing the WISTRON trade mark and/or other trade marks that he owns. He said that his business has been in Melbourne for more than 25 years and that he has many retail shops in many different shopping centers.

3. The applicant has made a number of claims but has chosen not to put evidence into proceedings. I note that the applicant is fully aware of the importance of evidence in the opposition process because he has been previously involved in trade mark opposition proceedings. In those earlier proceedings Hearing Officer Williams provided the applicant with comprehensive instructions and reasons regarding opposition proceedings and the requirement for statements to be substantiated through the provision of evidence. That advice notwithstanding, no evidence has been put forward to substantiate any of the applicant’s claims and accordingly I can not give any weight to his submissions.

4. Overall I consider that, given the impressive reputation evidenced by the opponent in its WISTRON trade mark, a significant number of consumers are likely to experience a reasonable doubt[6] as to the existence of some sort of connection between the opponent’s trade mark and the applicant’s WISTRON trade mark if it were used to the extent of all of the goods listed in the opposed application. I have noted previously trade marks are substantially identical which will only add to the likelihood of confusion taking place in the marketplace.

   [6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

5. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all the applicant’s goods. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

1. Subsection 55(1) of the Act provides:

   Decision

   55 (1). Unless the proceedings are discontinued or dismissed, 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.

   Note:  For limitations see section 6.

2. I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 60 argued at the hearing. Accordingly, I refuse to register trade mark application 1332624.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
02 May 2013