Wuxi Suntech Power Co Ltd v Jinko Solar Co., Ltd

[2024] ATMO 206

TRADE MARKS ACT 1995

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

Re:Opposition by Wuxi Suntech Power Co., Ltd to registration of trade mark application number 2273745 (class 9) - SUNTANK - in the name of Jinko Solar Co., Ltd

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Wynnes Patent & Trade Mark Attorneys

Applicant: James & Wells Intellectual Property

Decision:

2024 ATMO 206

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 44, 59 and 62A – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Wuxi Suntech Power Co., Ltd (‘Opponent’) to registration of the following trade mark:

Trade mark number:   2273745 (‘Application’)

Trade mark:                SUNTANK (‘Trade Mark’)

Applicant:                   Jinko Solar Co., Ltd (‘Applicant’)

Filing Date:                 1 June 2022 (‘Relevant Date’)

Specification:             Class 9: Power conversion systems; Solar batteries; Batteries, electric; Battery packs; Battery boxes; Energy storage systems; Batteries for use with energy storage systems; Energy storage systems composed of batteries, inverters, control systems, electronic devices and recorded software for the operation and performance of energy storage systems; Battery modules for energy storage systems for private households; Apparatus and instruments for accumulating and storing electricity, namely, accumulators, battery packs, and integrated energy storage systems comprising batteries and battery packs

(‘Applicant’s Goods’)

[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

2.       The Trade Mark was examined and advertised as accepted for possible registration on 2 November 2022.

3.       On 8 December 2022, the Opponent filed a Notice of Intention to Oppose the Application. On 4 January 2023, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 11 April 2023.

4.       The Opponent filed Evidence in Support (‘EIS’) on 2 August 2023 and the Applicant filed Evidence in Answer (‘EIA’) on 10 November 2023. No Evidence in Reply was filed

5.       The parties were given the opportunity to either request an oral hearing or to file written submissions. The Applicant elected to be heard by written submissions and filed written submissions, drafted by Mark Williams of James & Wells Intellectual Property on 23 February 2024. The Opponent has not asked to be heard and therefore did not file any written submissions. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties and the written submissions of the Applicant.

Grounds and onus

6.       The SGP nominates grounds of opposition under ss. 44, 59 and 62A.

7.       The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]

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

[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’)

Evidence

8.     The following evidence was filed:

EIS

Declaration of Philipp Orth, employee of Wynnes Patent & Trade Mark Attorneys, made on 2 August 2023 with Exhibits PSO-01 to PSO-03 (‘Orth’).

EIA

Declaration of Shaofa Lan, IP Director of the Applicant, made on 10 November 2023 with Exhibits SL-01 to SL-19 (‘Lan’).

Declaration of Mark Williams, partner at James & Wells Intellectual Property, made on 8 November 2023 with Exhibit MAW-1 (‘Williams’).

Summary of Evidence

EIS

9.     Orth states that the Opponent manufactures photovoltaic products such as crystalline silicon solar cells and modules for residential, commercial, and industrial purposes. Orth further states that the Opponent has used the trade mark SUNTECH (‘Opponent’s Mark’) in relation to the Opponent’s goods and services (without defining the goods and services) and first used the Opponent’s Mark in Australia in March 2007.

10.     Orth claims that the Opponent owns the website and the Australian website (‘Australian Website’) and exhibits Wayback Machine[5] extracts of the home page of the Australian Website dated between 6 October 2017 and 27 June 2023. I note reference to the Opponent’s Mark on the home page in respect of solar panels and modules. I also note the Opponent supplies inverters under the trade mark SUNWAYS. I also note details of a number of Australia case studies for solar farms in Victoria and NSW on the Australian Website from 26 June 2022 (with a copyright 2021 claim) and a solar installation at the City of Kalgoorlie waste treatment plant in Western Australia in 2014.

[5] Orth provides details of four Australian trade mark registrations (‘Opponent’s Registrations’), the details of which are:

Number	Mark	Goods and Services	Priority Date
1046795	Class 9: Solar batteries; electric accumulators for vehicles; accumulator boxes; battery boxes; plates for batteries; batteries for lighting; batteries; battery chargers; galvanic batteries; electric batteries	17 March 2005
1195102	Class 11: Lamps; flares; Chinese lanterns; street lamps; solar energy street lamps; apparatus for lighting Class 35: Retail and wholesale services; business consultancy; import- export agencies; sales promotion for others; advertising services; all the above relating to photo electric and/or photo voltaic cells, batteries, solar batteries, or solar powered goods but excluding computer hardware and software	23 August 2007
1210617	SUNTECH	Class 9: Batteries including solar batteries; battery chargers; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; photo electric cells; photo voltaic cells Class 11: Lamps; flares; Chinese lanterns; street lamps; solar energy street lamps; apparatus for lighting Class 35: Retail and wholesale services; business consultancy; import-export agencies; sales promotion for others; advertising services; all the above relating to photo electric and/or photo voltaic cells, batteries, solar batteries, or solar powered goods but excluding computer hardware and software	16 November 2007
1647593	Class 9: Solar batteries; batteries, electric Class 16: Printed matter; printed publications; advertisement boards of paper or cardboard; pamphlets Class 41: Arranging and conducting of conferences	26 December 2013 (convention date)

12.     Orth declares that in 2018, 2019 and 2022, the Opponent has attended the industry convention All-Energy Australia claimed to be one of Australia’s largest clean and renewable energy events, typically held at the Melbourne Convention Centre. Orth exhibits photographs of the Opponent’s booths at All-Energy Australia in 2018 and 2019. I note that only the 2019 photograph is dated.

13.     The remainder of Orth contains a mixture of arguments and submissions concerning the grounds of opposition, allegations as to the facts and uncorroborated statements which I need not summarise and can afford no weight. This material it is at best unsupported assertions, and at worst an attempt to avoid paying the relevant fee for filing written submissions.

EIA

14.     Lan states that the Applicant was founded in 2006 in China and has a worldwide presence including in Australia. The Applicant’s business covers the core links of the photovoltaic industry chain, focusing on the R&D of integrated photovoltaic products and integrated clean energy solutions.

15.     Lan provides the meaning of the Trade Mark being SUN to imply solar energy or sunshine and TANK indicating that the Applicant’s energy storage products are devices used to store the electricity generated by the conversion from solar energy. The Trade Mark is used for the Applicant’s household energy storage products.

16.     Lan declares that the Applicant launched the SUNTANK branded residential energy storage system in Australia in late July 2022 and exhibits a copy of the launch announcement dated 27 July 2022 from the Applicant’s website at (‘Applicant’s Website’).

17.     Lan provides information as to the promotion of the Trade Mark by the Applicant including:

·     a YouTube video posted on 29 July 2022 and exhibits a PDF of the post showing the date the video was posted and the SUNTANK trade mark.

·     Australian website homepage at and the Applicant’s Website.

·     datasheets for the SUNTANK product which can be downloaded from the Applicant’s Website.

·     the Applicant’s attendance in October 2022 at the All Energy 2022 expo in Melbourne, exhibiting YouTube videos which confirm this attendance, a copy of the Applicant’s promotional banner for the expo and copies of photographs of the Applicant’s stand.

·     awards including Top Brand PV Australia in 2021 and Top Solar Company #1 Panel in Australia in 2022 exhibiting copies of digital images confirming the awards.

·     radio advertising in Melbourne in February 2023 exhibiting transcripts of an advertisement.

18.     Lan claims that the Trade Mark is registered by the Applicant in China, Uganda, Italy and Japan exhibiting copies of the registration certificates. Lan states that in Japan, the Opponent unsuccessfully opposed the Trade Mark on the basis of the lack of similarity between the Trade Mark and the Opponent’s Mark and exhibits a copy of the decision issued by the Japanese Patent Office together with an English translation.

19.      Lan declares that the Applicant is unaware of any instances of confusion with the Opponent’s Registrations in Australia.

20.     Williams exhibits the results of a search of the Australian Trade Mark Register conducted on 1 November 2023 for registered trade marks in Class 9 which have the prefix SUN and cover goods with the descriptions batteries and photovoltaic. Williams exhibits details of 59 trade marks disclosed in the search.

Discussion and reasons

Section 44

21.     The relevant provisions of s 44 provide (notes omitted):

Identical etc. trade marks

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

(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

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

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

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

22.     The SGP nominates the Opponent’s Registrations as the basis for this ground of opposition.

23.     As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:

·the Opponent’s Registrations have a priority date which is earlier than the Relevant Date and are held in a name other than that of the Applicant (‘the first requirement’);

·the Applicant’s Goods are similar to and/or closely related to the goods and services of the Opponent’s Registrations (‘the second requirement’); and

·the Trade Mark is substantially identical with or deceptively similar to one or more of the Opponent’s Registrations (‘the third requirement’).

24.     I am satisfied that the priority date of the Opponent’s Registrations is earlier than the Relevant Date and each of the Opponent’s Registrations is in a name other than the Applicant. Therefore, the first requirement is satisfied.

25.     The next consideration is whether the Applicant’s Goods are similar to and/or closely related to the goods and services of the Opponent’s Registrations. I consider both the SUNTECH and SUNTANK marks are registered in respect of batteries including solar batteries, photo electric cells, photovoltaic cells, apparatus and instruments for accumulating and storing electricity and similar goods and thus the third requirement is satisfied for a subset of the Applicant’s Goods.

26.     The final consideration is whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Registrations.

Substantial identity

27.     The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’),[6] where his Honour stated at 414:

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

[6] (1963) 109 CLR 407 (‘Shell’).

28.     Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are ‘substantially identical’.

29.     In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[7] the Full Court clarified the way in which a ‘side by side comparison’ of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them:

The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[8]

[7] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).

[8] Ibid [52].

30.     Whether there is substantial identity is a question of fact.[9]

[9] Ibid [53].

31.     I will firstly consider whether the Trade Mark is substantially identical or deceptively similar to the Opponent’s Mark as my conclusion is likely to bear upon the issue of substantial identity and deceptive similarity vis a vis the other three of the Opponent’s Registrations (‘Word & Device Marks’) under comparison.

32.     The respective marks appear below:

SUNTECH  SUNTANK

33.     On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Opponent’s Mark and the Trade Mark. While they each share the element SUN, the differences between the TECH and TANK elements provide a significantly different visual impression. I find the Trade Mark is not substantially identical to the Opponent’s Mark.

34.     As there are further differences between the Trade Mark and the Word & Device Marks, it follows that the Trade Mark is not substantially identical to the Word & Device Marks.

35.     I move then to consider whether the Trade Mark and Opponent’s Mark are deceptively similar.

Deceptive similarity

36.     Section 10 provides a definition of deceptively similar being that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’.

37.     Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[10]

[10] Shell (n 6), 416.

38.     The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[11] conveniently stated the relevant principles, which were summarised in The Agency Group Limited v H.A.S. Real Estate Pty Ltd[12] as follows:

[11] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[12] [2023] FCA 482, [55] (Jackman J) (‘The Agency’).

·the resemblance between the two marks must be the cause of the likely deception or confusion;[13]

[13] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

·in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[14]

[14] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

·the marks should not be compared side by side;[15]

·the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[16]

·the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[17]

·the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[18]

·the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[19]

·“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers;[20]

·the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[21]

·it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[22]

·evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[23] and

·any intention to deceive or cause confusion may be a relevant consideration but is not required.[24]

[15] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

[16] Ibid.

[17] Ibid.

[18] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

[19] Shell (n 6), 415.

[20] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

[21] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

[22] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (French J) restating principles from Southern Cross (n 4) 594-595.

[23] Australian Woollen Mills (n 15).

[24] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 16), 657.

39.     It is also relevant to take into account whether, ‘the different elements of the rival marks have a descriptive character’.[25] Whilst this does not preclude a finding of deceptive similarity,[26] the Full Court noted in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel:

It is correct to observe, …, that an element of a trade mark that is descriptive may not tend to cause confusion about the source of a product because it calls to mind the nature of the product, rather than its trade source. However, as we have noted, each case must be considered on the basis of the marks in question and the facts established. The authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison. In this regard the observation made by Lord Evershed (Asquith and Jenkins LJJ agreeing) in Broadhead’s Application (at 215.1-5), to the effect that even where there is a common denominator one must be careful not to treat words as though the common part was not there at all, is apposite.[27]

[25] The Agency (n 12), [73].

[26] Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75, [64] (Besanko, Yates and Mortimer JJ).

[27] [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).

40.     Further in Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd the court said

In considering marks as a whole, where they contain common words, one should look primarily to those aspects of the marks that are not common (Cooper Engineering at 538-9). Where distinctive aspects of the marks are the aspects that would remain with a consumer, that is sufficient to avoid confusion (Coca-Cola Co at 134).[28]

[28] [2004] FCAFC 201, [40] (Wilcox, Kiefel and Bennett JJ).

1. In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side-by-side comparison of, on the one hand, the Trade Mark, and on the other, the Opponent’s Mark. Rather, I am required to take all of the surrounding circumstances into consideration, including those in which the Trade Mark and the Opponent’s Mark are used and the circumstances in which the goods are and will be sold. Here it is clear that the trade marks will be used for some identical and therefore similar goods.

2. The Applicant submits that:

   ·     SUNTANK and SUNTECH are not visually, aurally or conceptually similar such that the effect or impression of the Trade Mark is distinctly different from the Opponent’s Registration.

   ·     as conceded by Orth,[29] the SUN prefix has a clear and unambiguous descriptive meaning in respect of the Applicant’s Goods.

   [29] Orth [17].

   ·     there are 59 trade mark concurrently registered that consist of either a single word prefaced with the letters ‘SUN’ or a two-word mark where the first word is ‘SUN’[30] and of those 59 marks, many of the suffix components of the one-word marks are recognised English words or contain 4 letters.

   [30] Williams [16].

   ·     the meanings of the words TANK and TECH are not interchangeable, nor are storage and technology the same thing. SUNTECH connotes the use of technology or some particular technical component of the goods and in contrast SUNTANK connotes in the mind of consumers the concept of energy (sun/solar) storage or the container in which the energy will be stored.

   ·     the Applicant’s Goods are highly specialised, complex and sophisticated goods and not the type of goods that will be purchased ‘off the shelf’ or hastily purchased by consumers without careful study and inspection to ensure safety and fitness-for-purpose.

3. In respect of the Applicant’s reference to the state of the Register, in Dr August Wolff GmbH & Co KG Arzneimittel v Combe International Ltd, Stewart J stated:

   It has been recognised that the state of the register does not establish what is actually happening out in the market and that comparison with other marks on the register is in principle irrelevant when considering a particular mark that has been tendered for registration.

   The significance of the evidence of the registrations and the limited sales of the limited products is not in relation to the knowledge or understanding of the ordinary consumer of existing trade marks and therefore of their capacity for confusion. It is rather in its support of the notion that the word or prefix VAG or the prefix VAGI- are likely to be understood by the ordinary consumer to be references to the vagina, and are therefore descriptive. The fact that many traders seek to register VAG or VAGI in relation to particular types of feminine healthcare products is indicative of that likely understanding.[31]

   [31] [2020] FCA 39, [73]-[74] (citations omitted).

4. The fact that other registered marks for batteries and photovoltaic cells may use the prefix ‘SUN’ is largely irrelevant to this inquiry.[32] I do not need the help of the Register to understand how the word ‘SUN’ would be understood by the ordinary person in respect of solar panels, solar batteries, energy systems and the like, including those goods claimed by the Applicant and Opponent.

   [32] Automobile Club De L’Oeust v Gardiakos [2005] ATMO 19, [48] (Hearing Officer McDonagh).

5. I consider that SUNTANK is visually, aurally and conceptually different to SUNTECH. Given the word ‘SUN’ has low distinctive value in the context of the goods provided by each party, its mere presence within each trade mark does not automatically render them deceptively similar. Consumers would not necessarily assume that every trade mark beginning with the word ‘SUN’ denotes the same trader. The low distinctive nature of ‘SUN’ provides a sufficient basis to infer that consumers will differentiate their choice of goods based on more than this word. In such circumstances, the presence of the common element ought to be given less weight in considering whether the respective marks are deceptively similar.

6. Further, the suffixes TANK and TECH are well known words which convey quite different ideas and aural impressions. A tank stores and tech is an abbreviation of technology. There is not even a scintilla of similarity in the ideas of these words.

7. There is some similarity in the pronunciation of the marks as they both begin with the word SUN followed by a word beginning with the letter T, however, while both marks are pronounced as two syllables and are the same length, all the words in the marks are well known with well known meanings. Further the word SUN is likely to be discounted by consumers given the low distinctiveness of this word. Therefore, a consumer who was aware of, and had an imperfect recollection of, the SUNTECH mark is unlikely to mispronounce the mark so that it sounds like SUNTANK. Thus, there is little possibility of mispronunciation of the respective marks and the aspects of the marks that are not common are sufficient to differentiate the marks.

8. I agree with the Applicant that the Applicant’s Goods are highly specialised, complex and sophisticated and not the type of goods that will be purchased ‘off the shelf’ or hastily purchased. The Applicant’s Goods are obviously not everyday consumer items. I think the purchasers of such Applicant’s Goods are likely to take due care in their selection. This is a surrounding circumstance which I have taken into account.[33]

   [33] Re Application by Pianotist Co Ltd (1906) 23 RPC 774, 777.

9. A consideration of deceptive similarity is not concerned with the mere possibility of deception or confusion between trade marks but a real, tangible danger of it occurring. After consideration of the differences in the respective marks, taken together, and even allowing for imperfect recollection, as a matter of impression and common sense they generate an overall visual, aural and conceptual impression of difference.

10. I am not satisfied that consumers viewing or hearing the SUNTANK mark would be caused to wonder whether the Applicant’s Goods originate from the same trade source as the Opponent, or that the trade marks are otherwise connected in some way. I find that there does not exist a real, tangible danger of deception or confusion between the two.

11. The Trade Mark is not deceptively similar to the Opponent’s Mark and the s 44 ground is therefore not established for the Opponent’s Mark.

12. As there are further differences between the Trade Mark and the Word & Device Marks, it follows that the Trade Mark is also not deceptively similar to the Word & Device Marks and the s 44 ground is therefore not established for the Word & Device Marks.

    Section 59

    53.     Section 59 provides (notes omitted):

    Applicant not intending to use trade mark

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

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

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

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

    54.     The burden is with the Opponent to demonstrate a prima facie case that the Applicant, at the time of filing the Application, did not intend to use the Trade Mark.[34] If a prima facie case is established, that burden will then generally fall to the Applicant to offer positive evidence of their intention to use the Trade Mark at the Relevant Date.

    [34] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [161] (Jacobson J).

    55.     The act of filing an application for registration of a trade mark carries with it a rebuttable presumption that the person applying holds an intention to use a trade mark.[35]

    [35] Aston v Harlee Manufacturing Co (1963) 103 CLR 391, 401 (Fullagar J) and Suyen Corporation v Americana International Limited [2010] FCA 638, [190], [197] (Dodds-Streeton J).

    56.     The Opponent has made the following unsubstantiated claim in the SGP that the Applicant has no intention to use the Trade Mark as its business addresses are all in South Africa.[36] There is no evidence that the Applicant’s business addresses are in South Africa and even if they were, this alone does not mean that the Applicant has no intention to use.

    [36] Listing 3 addresses in South Africa.

    57.     The Applicant submits that:

    ·there is no evidence to demonstrate that the South African addresses relate, in any way, to the Applicant and Lan states that the Applicant’s Australian distributor is located in Parramatta, New South Wales.[37]

    [37] Lan [13].

    ·the fact that a trade mark applicant may have its Head Office based overseas does not evidence a lack of intention to use the mark in Australia.

    ·the act of filing the Application is prima facie evidence of the Applicant’s intention to use the Trade Mark.

    ·use or non-use after the date of application may be relevant in drawing inferences as to the issue of intention to use as at the date of application, relying on Food Channel Network Pty Ltd v Television Food Network GP.[38]

    [38] [2010] FCAFC 58, [82]–[83].

    ·Lan evidences use of the Trade Mark in Australia.[39]

    [39] Lan [13] - [22].

    58.     The Opponent has not provided any supporting evidence that the Applicant did not hold the requisite intention at the time of filing the Application. Thus, the Opponent has failed to demonstrate a prima facie case that the Applicant did not intend to use the Trade Mark at the time of filing the Application. I agree with the Applicant’s submissions and find that the Applicant has no case to answer under this ground. Accordingly, the Opponent has not established the ground of opposition under s 59.

    Section 62A

    59.     Section 62A provides:

    Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

    60.     The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

13. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2), Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[40]:

    [40] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[41]

    [41] [2012] FCA 81, [147].

14. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[42]

    [42] Ibid [165]-[166].

    63.     In DC Comics v Cheqout Pty Ltd,[43] Bennett J noted that

    [43] [2013] FCA 478, [62].

    Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

    64.     The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[44]

    [44] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

    65.     In summary, the SGP claims that the Applicant has made a trade mark application in Australia identical to the Opponent’s trade mark in bad faith as:

    ·     applying for the Trade Mark without a space between SUN and TANK is a deliberate act of misspelling the Opponent’s SUNTECH mark.

    ·     the Applicant sought to register the Trade Mark prior to the Opponent penetrating the Australian market.

    ·     the Applicant sought to register the Trade Mark in light of the prominence of the Opponent’s SUNTECH mark in China.

    66.     The Applicant submits that:

    ·neither the SGP nor the Opponent’s evidence refers to any application or registration for, or use by the Opponent of, the trade mark SUNTANK and a search of the Australian trade mark register fails to identify any application for that mark by the Opponent.

    ·the Trade Mark is not a ‘misspelling’ of the Opponent’s Mark – the TANK and TECH components of the respective marks are visually, phonetically and conceptually distinct such that the subject mark has its own identity.

    ·the mere fact that an applicant knew of the existence of a prior mark does not, of itself, demonstrate that the application was made in bad faith.

    ·the Applicant’s subsequent use of the Trade Mark in Australia demonstrates the bona fides of its conduct in filing the application for registration.

    67.     I agree with the Applicant. Even if I were to accept that the Applicant was aware of the Opponent’s Registrations or the use of the Opponent’s Registrations, this alone does not provide a sufficient basis to conclude that the Application was made in bad faith. Awareness or mere knowledge before the Relevant Date of another person’s trade mark, without more, does not in itself constitute a basis for a finding of bad faith’.[45]

    [45] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).

    68.     Further, I cannot see how the Applicant could make a blatant attempt to trade off the reputation of the Opponent when the Opponent has not evidenced any reputation in the Opponent’s Registrations in Australia or elsewhere.

    69.     In conclusion, the Opponent has not provided any compelling evidence that the Applicant’s filing of the Trade Mark in connection with the Applicant’s Goods was ‘unscrupulous, underhand or unconscientious’. As a consequence, the Opponent has not established the ground of opposition under s 62A.

    Decision

    70.     Section 55 relevantly provides:

    Decision

    (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.

    Note:For limitations see section 6.

    71.     The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 2273745 may proceed to registration not less than one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.

    Costs

    72.     The Applicant sought costs. 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 Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Anne Makrigiorgos

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    23 October 2024