Xiaomei Wang and Aunew Management Pty Ltd v Aurinda Pty Ltd

[2023] ATMO 183

TRADE MARKS ACT 1995

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

Re:Opposition by Xiaomei Wang and Aunew Management Pty Ltd to registration of trade mark application number 2011406 (class 5) – AURINDA (Figurative) - in the name of Aurinda Pty Ltd

Delegate:	Sheona Robertson
Representation:	Opponents: Ben Cain of James & Wells Applicant: David Larish of Counsel, instructed by LegalVision ILP Pty Ltd
Decision:	2023 ATMO 183 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under sections 42(b), 58, 60 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) (‘Act’) by Xiaomei Wang and Aunew Management Pty Ltd (together, ‘Opponents’) to the registration of the trade mark the subject of the application detailed below (‘Trade Mark’):

Application Number:

2011406

Trade Mark:

Filing Date:

3 June 2019

Applicant:

Aurinda Pty Ltd (‘Applicant’)

Goods:

Class 5: Albumin dietary supplements; Alginate dietary supplements; Bee glue (propolis) dietary supplements; Carbohydrate based dietary supplements; Casein dietary supplements; Dietary supplements for animals; Dietary supplements for infants; Enzyme dietary supplements; Food supplements (dietary supplements); Glucose dietary supplements; Herbal dietary supplements; Lecithin dietary supplements; Linseed dietary supplements; Linseed oil dietary supplements; Mineral dietary supplements for animals; Mineral dietary supplements for humans; Non-carbohydrate dietary supplements; Plant compounds for use as dietary supplements (medicinal); Plant compounds for use as dietary supplements (veterinary); Plant extracts (dietary supplements); Pollen dietary supplements; Propolis dietary supplements; Protein dietary supplements; Royal jelly dietary supplements; Wheat germ dietary supplements; Yeast dietary supplements; Pollen (dietary supplement)

(‘Claimed Goods’)

1. The Trade Mark was examined under s 31 of the Act, accepted for possible registration and advertised as accepted in the Australian Official Journal of Trade Marks on 18 August 2021.

2. Xiaomei Wang and Aunew Group Holdings Pty Ltd filed a Notice of Intention to Oppose registration of the Trade Mark on 15 October 2021. A change to the company name Aunew Group Holdings Pty Ltd was made on 26 June 2023 and the Notice of Intention to Oppose was subsequently amended to reflect a change in one of the Opponents’ names from Aunew Group Holdings Pty Ltd to Aunew Management Pty Ltd. A reference to ‘Aunew’ in this decision includes both Aunew Group Holdings Pty Ltd and Aunew Management Pty Ltd.

3. On 15 November 2021 the Opponents filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend on 31 January 2022.

4. The Opponents filed the following evidence in support of its opposition:

   ·Declaration filed on 2 May 2022 by Qing (Karl) Ye (‘Mr Ye’), the sole director and secretary of GMP Pharmaceuticals Pty Limited (‘GMP’) and former director of Aunew Group Holdings Pty Ltd, with Exhibits QY-1 to QY-4 (‘Ye 1’);

   ·Declaration made on 19 May 2022 by Mr Ye, confirming that Ye 1 was not dated at the time it was sworn, and that it had been sworn before a witness on 2 May 2022;

   ·Declaration filed on 2 May 2022 by Xiaomei Wang (‘Ms Wang’), the sister-in-law of Mr Ye and employee of Aunew, with Exhibits XW-1 to XW-40 (‘Wang 1’); and

   ·Declaration made on 19 May 2022 by Ms Wang, confirming that Wang 1 was not dated at the time it was sworn, and that it had been sworn before a witness on 2 May 2022.

5. The Applicant filed the following evidence in answer:

   ·Declaration made on 18 August 2022 by Guoguang Tao (‘Mr Tao’), the sole shareholder and director of Tas Mania Pty Ltd (‘Tas Mania’), the holding company of the Applicant, with Annexures A to T (‘Tao Declaration’).

6. The Opponents filed the following evidence in reply:

   ·Declaration made on 21 October 2022 by Mr Ye with Exhibits QY-5 to QY-11 (‘Ye 2’); and

   ·Declaration made on 21 October 2022 by Ms Wang (‘Wang 2’).

7. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request a hearing in this matter or a decision without a hearing. On 8 November 2022 both the Opponents and the Applicant requested an oral hearing. In line with usual practice, a notice was sent to the parties on 16 June 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Opponents filed written submissions on 2 August 2023 (‘Opponents’ Submissions’). The Applicant filed written submissions on 9 August 2023 (‘Applicant’s Submissions’).

8. The matter was allocated to me to decide as a delegate of the Registrar of Trade Marks and was heard by video conference on 16 August 2023. At the hearing David Larish of Counsel, instructed by LegalVision ILP Pty Ltd, appeared for the Applicant and Ben Cain of James & Wells appeared for the Opponents.

9. Following the hearing, I invited the Opponents to provide brief submissions regarding certain cases raised by the Applicant during the hearing. The Opponents filed Supplementary Written Submissions on 23 August 2023.

10. As a delegate of the Registrar of Trade Marks, I have decided the opposition as required by s 55 of the Act. In doing so I take account of the materials filed during the proceedings, being the materials mentioned in paragraphs [4] to [7] as well as the Opponents’ Submissions, the Applicant’s Submissions, the Opponents’ Supplementary Written Submissions, and the oral submissions made at the hearing.

    Grounds of opposition, onus and standard of proof

11. The SGP nominated grounds of opposition under ss 42(b), 58, 60 and 62A.

12. The Opponents bear the burden of establishing at least one of the nominated grounds of opposition[1] on the ordinary civil standard of the balance of probabilities.[2]  The date at which the rights of the parties are assessed is 3 June 2019 (‘Relevant Date’), being both the priority date and the filing date of the Trade Mark.

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

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

    The Opponents

13. Ms Wang is employed by Aunew, the management company of the corporate group to which GMP belongs. Aunew shares a registered business address and principal place of business with GMP.

14. GMP is a privately-owned manufacturing company based in Australia and New Zealand, specialising in complementary healthcare products manufactured in New South Wales, Australia. It is declared that GMP have been manufacturing and supplying AURINDA branded health goods since 1999. The first batch of AURINDA branded products was sold to a Chinese company in or around 2000.

15. The specific health goods manufactured by GMP are goat milk tablets, children’s fish oil, propolis soft gel capsules, liquid calcium soft gel capsules, coenzyme Q10 hard shell capsules and lecithin soft gel capsules (together, ‘Opponents’ Goods’).

16. The account of the creation of the AURINDA brand declared in Ye 2 is that in or around 1998 or 1999 Mr Ye and his wife were introduced to Ms Guo Rong Wang (‘Guo Rong’). Guo Rong was interested in selling Australian made natural health products in the Chinese market under a newly developed brand. The product design for the AURINDA product range was based on GMP’s pre-existing “Australia No. 1” product range.

17. Ms Wang contends that she has been the sole owner of common law rights in the word mark ‘AURINDA’ (‘Opponents’ Word Mark’) since 2016 and that she has full control over GMP’s use of the Opponents’ Word Mark in Australia. Ms Wang held trade mark registration number 1487950 for AURINDA (‘Wang Trade Mark’) in class 5 until the Applicant successfully applied for its removal from the Trade Marks Register for non-use in 2019.[3] It is declared that the Wang Trade Mark was not applied for in the name of GMP “for confidential commercial reasons”.[4]

    [3] Xiaomei Wang v Aurinda Pty Ltd [2021] ATMO 57.

    [4] Ye 2, [48].

18. It is declared that GMP has licensed the Opponents’ Word Mark from Ms Wang since 2016. This licence was originally in the form of an oral licence but on 12 January 2017 the parties entered into a written licence.

19. The Opponents claim that Ms Wang has exercised control over GMP’s use of the AURINDA brand in the following ways:

    ·     Ms Wang developed procedures for the design and presentation of the Opponents’ Word Mark in advertising and displays and these procedures were adopted by GMP;

    ·     Ms Wang “constantly” visited GMP’s facilities to inspect the manufacture, production, provision, supply or delivery of GMP’s products and the application of the Opponents’ Word Mark;

    ·     Ms Wang often inspected and approved samples of GMP’s products prior to their mass production;

    ·     Since January 2017 Ms Wang inspected reports issued to GMP by the Therapeutic Goods Administration (‘TGA’) following audits of GMP’s compliance with the Therapeutic Goods Act 1989 (Cth) and regulations in relation to labelling, advertising and product appearance; and

    ·     Ms Wang paid close attention to representations of the AURINDA brand in the public domain, in particular on websites and in media publications. On becoming aware of counterfeiting of AURINDA branded products in 2017, Ms Wang requested a review of GMP’s procedures for control of printed labels for AURINDA branded products.

20. It is declared in Wang 1 that Ms Wang’s health deteriorated in November 2017 and as a result she was no longer able to monitor GMP’s use of the AURINDA brand as actively as before. However, she continued to communicate directions and guidelines to GMP via Mr Ye and his wife and entrusted them to maintain oversight over GMP’s use of the AURINDA brand.

21. In support of GMP’s history of use of the AURINDA brand, the Opponents have provided:

    ·     publications by the State Administration for Market Regulation of China, dated December 2002 and June 2017 respectively, confirming GMP was the production company for AURINDA Propolis Capsules and AURINDA Liquid Calcium Soft Gel Capsules;

    ·     documents confirming TGA approval to supply AURINDA Propolis 500mg Soft Gel Capsules and AURINDA Lecithin Soft Gel Capsules, dated October 2019;

    ·     estimates of GMP’s sales volumes for AURINDA branded products between 1 July 2016 and 30 May 2020;

    ·     a customer ledger listing products sold by GMP to a customer in China, including order quantities and values, between 30 November 2011 and 2 March 2022;

    ·     a list of products featuring at least the Opponents’ Word Mark that were manufactured, packaged and labelled by GMP in Australia between 4 June 2016 and 4 June 2019, and low to moderate production quantities;

    ·     tax invoices dated between September 2016 and February 2019 for the Opponents’ Goods. The identities and addresses of the order recipients have been redacted; and

    ·     representative packing lists, dated 25 August 2017 and 13 November 2017, featuring AURINDA branded products.

22. The Opponents have also provided examples of product labelling dated between September 2016 and August 2018 which feature the following trade mark (‘Opponents’ Device Mark’):

    Hereafter a reference to the ‘Opponents’ Trade Marks’ in this decision is a reference to both the Opponents’ Word Mark and the Opponents’ Device Mark.

23. Exhibits XW-16, XW-19, XW-21 and XW-28 to Wang 1 contain images of labels featuring the Opponents’ Device Mark that have been applied to products manufactured, packaged and labelled by GMP in Australia for export to China.

24. Exhibits QY-4 to Ye 1 and QY-11 to Ye 2 contain images of GMP’s AURINDA branded products which feature the Opponents’ Device Mark, as well as GMP’s name and address, on their labels. The images have been extracted from the Chinese language retail website Suning.com.

    The Applicant

25. Mr Tao was a shareholder, board director and the Head of China Markets at Healthzone Limited (‘Healthzone’). It is stated in the Tao Declaration that Healthzone was incorporated in 2006 for the production and mass export of AURINDA branded health food products from Australia to China. Mr Tao declares that Healthzone oversaw Australian operations pertaining to the AURINDA brand from 2008 until its collapse in 2012. Annexure L to the Tao Declaration contains a list, dated 12 May 2010, of Australian retail stores offering Healthzone’s products for sale as well as photographs of AURINDA branded products sold at retailers between 2009 and 2010. According to GMP’s business records, Healthzone became a client of GMP from around 2007.

26. Following Healthzone’s collapse, Mr Tao created a new company, Shanghai Aurinda Health Food Co. Ltd (‘SAHF’). SAHF shares a director with the Applicant. Mr Tao has been a shareholder and director of SAHF as well as its Chairman and legal representative since the company was established in 2012. SAHF obtained AURINDA branded products from GMP for distribution and/or further sale in China, the earliest evidence of which is a purchase order dated 11 December 2014 provided at Exhibit XW-34 to Wang 1. It is declared in the Tao Declaration that in April 2019 SAHF entered into an agreement with GMP to ensure AURINDA branded products continued to be manufactured and packaged in Australia for international sale, though an English translation of the Chinese language document has not been provided.

27. The Applicant was incorporated as a subsidiary of Tas Mania, with approval from SAHF, in April 2019 as a way for SAHF to strengthen its presence in Australia. The Trade Mark was filed in the name of the Applicant because it was intended that the Applicant would operate the Australian arm of the Applicant’s group of companies.

28. Tas Mania is the owner of four trade mark registrations in Australia, namely trade mark numbers 1761713, 1762550, 1983628 and 1983635, which feature the same oval device as that of the Trade Mark, some of which contain the words TAS MANIA and/or Chinese characters which I understand to be a transliteration for ‘AURINDA’. The earliest of these registrations has a priority date of 30 March 2016.

29. Mr Tao’s account of the creation of the AURINDA brand differs substantially from that of the Opponents. Mr Tao asserts that he created the AURINDA brand together with Guo Rong, a senior consultant of SAHF. The letters “AU” were to be incorporated in the brand name to indicate the origins of the goods. The transliteration of “AURINDA” in Chinese is “OW LIN DA”, comprising three words meaning ‘Australia’, ‘drench’/‘forest’ and ‘achieve’/‘reach’ respectively, to connote the brand’s promise of flooding markets with Australian products.

30. On 11 June 2002 Guo Rong registered, in her own name, Australian trade mark number 915779 (‘Guo Rong Trade Mark’) for a device that is substantially identical to the Trade Mark. It is declared in the Tao Declaration that the Guo Rong Trade Mark was registered with the authorisation of Mr Tao, though there is no evidence provided in support of this claim. The Guo Rong Trade Mark was registered[5] in respect of cosmetics in class 3, clothing in class 25 and horticultural and forestry products in class 31, being different goods to the Claimed Goods.

    [5] Trade mark number 915779 was not renewed and therefore removed from the Register on 11 June 2022.

31. SAHF is the owner of trade mark registrations numbers 2116730 in class 32 and 2116733 in class 33 in Australia, both of which have priority dates after the Relevant Date. Annexure P to the Tao Declaration contains details of trade mark registrations in the name of SAHF for marks substantially identical to the Trade Mark in China, Europe, India, Japan, Malaysia, New Zealand, Singapore, Republic of Korea and Norway covering, variously, classes 5, 30 and/or 35.

32. It is claimed in the Tao Declaration that the evidence of use provided by the Opponents was use authorised by the Applicant’s group of companies, not Ms Wang. On 27 December 2019 Mr Tao sent a letter to Mr Ye asserting ownership of the AURINDA brand. This letter appears to be in response to a message from an employee of GMP regarding GMP’s intention to oppose registration of the Trade Mark, although a copy of this message is not provided.

    Discussion

    Section 58

33. Section 58 of the Act relevantly provides:

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

34. To succeed under this ground, the Opponents must establish:

    (i)the trade marks relied upon by the Opponents are identical or substantially identical to the Trade Mark;[6] 

    (ii)the Claimed Goods are the ‘same kind of thing’ as the goods and/or services for which the trade marks relied upon by the Opponents have been used;[7] and

    (iii)a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade marks relied upon by the Opponents prior to either (a) the application to register the Trade Mark or (b) any use of the Trade Mark in Australia by the Applicant, whichever is the earlier.[8]

    [6] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

    [7] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

    [8] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

35. Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[9] Authorship in this context refers to the first party to adopt the trade mark with an intention of using it in Australia in respect of the Claimed Goods, or goods of the same kind.[10]

    [9] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ).

    [10] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).

36. In Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2), Deane J discussed the nature of use required to establish ownership and commented:

    The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of “proprietor” of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods with respect to which the mark is used and that person.[11]

    [11] (1984) 156 CLR 415, 432.

37. A shifting onus of proof does not apply to s 58 of the Act; the onus remains with the Opponents.[12] The Full Federal Court in Food Channel Network Pty Ltd v Television Food Network GP noted:

    [A] finding that there was considerable confusion over who owned the mark means that this ground of opposition must fail given the onus on [the Opponents] to establish any ground of opposition.[13]

    [12] Food Channel (n 1) [39].

    [13] Ibid [66].

38. The s 58 ground of opposition was relevantly particularised in the SGP as follows:

    ·     Ms Wang is the owner of the Opponents’ Trade Marks and was the registered owner of the Wang Trade Mark;

    ·     GMP manufactured and labelled gel capsules in Australia under the Opponents’ Trade Marks for export to China, under licence from Ms Wang;

    ·     Since at least August 2017 the Opponents’ Trade Marks have been used in Australia on large quantities of the Opponents’ Goods, being goods identical and/or similar to the Claimed Goods; and

    ·     SAHF has purchased large quantities of AURINDA branded products from GMP.

39. As will become apparent, I find that requirement (iii) of paragraph [35] of this decision is not established. Accordingly, it is not necessary for me to consider requirements (i) and (ii).

    Authorship

40. The Applicant and the Opponents have each provided their version of events which differ significantly with respect to first authorship of the AURINDA brand. The respective accounts are summarised at paragraphs [17] and [30] of this decision. Since the evidentiary onus rests with the Opponents, in the absence of evidence to substantiate the Opponents’ account I do not consider the Opponents’ account is to be preferred.

1. It is apparent from the evidence that there has been some degree of cooperation between the Opponents, the Applicant and their related entities in the past. The working relationship between the parties appears to have deteriorated in or around 2017 when Mr Tao and his related entities experienced some difficulties obtaining TGA approvals. Clearly, there is greater context to the exchanges between the parties but the evidence provided does not capture all of the relevant discussions and correspondence. Neither the extent of the parties’ previous cooperation nor their understanding of each other’s rights with respect to trade marks containing the word AURINDA have been clarified.

2. I am not satisfied on the evidence before me that the Applicant has not authored the Trade Mark.

   Prior Use of the Opponents’ Trade Marks

3. It is stated in the Opponents’ Submissions that GMP has used the Opponents’ Trade Marks under the authority of Ms Wang in relation to the manufacture of health goods in Australia since at least 2016, and that authority was granted by Ms Wang’s “predecessor in title” since at least 2002. Based on the evidence before me, I find there are issues with these submissions as they relate to the s 58 ground of opposition.

4. Firstly, to the extent the Opponents’ evidence relates to authority to use the Opponents’ Trade Marks such evidence is limited to the alleged authority granted by Ms Wang, and no other party. Ms Wang’s “predecessor in title” is not identified in the Opponents’ evidence and there is no documentation provided to support a predecessor’s prior entitlement to the Opponents’ Trade Marks, their grant of authority to GMP, and/or their maintenance of control over GMP’s use of the Opponents’ Trade Marks. Details of the chain in title from Ms Wang’s predecessor to Ms Wang in or around 2016 are likewise not disclosed.

5. Secondly, the Applicant correctly notes that, to the extent the Opponents rely upon ownership of the Trade Mark or a substantially identical trade mark by way of prior use by GMP as an alleged authorised user, the Opponents must be able to demonstrate that Ms Wang, as the alleged proprietor, exercised the requisite degree of control[14] over GMP’s use of the marks.

   [14] Act s 8.

6. In this regard, the Opponents’ point to oral and written licences between Ms Wang and GMP. The purported licences suffer several deficiencies.

7. The terms of the oral licence between Ms Wang and GMP are described in Wang 1. The licence is granted in respect of “the AURINDA Trade Mark”. The terms of the oral licence are not specific as to procedures for inspection, testing or assessment of product samples and materials. Procedures are not scheduled but are to be carried out on request by Ms Wang. The exact date of commencement and intended duration of the oral licence are not disclosed.

8. The Opponents provide a copy of the written licence agreement in Exhibit XW-1 to Wang 1. The document provided is in the form of an “Authorization Letter” that seemingly has not been countersigned by a representative of GMP. The conditions set out in the letter pertain to the now removed Wang Trade Mark. Much like the oral licence, the conditions of the Authorization Letter lack specificity.

9. Regardless of the deficiencies of the respective licences, as stated in the Applicant’s Submissions, the mere grant of these licences is not sufficient to establish control over use of the Opponents’ Trade Marks by Ms Wang.[15] It is also necessary for the Opponents to establish Ms Wang’s actual control over use of the Opponents’ Trade Marks.

   [15] Lodestar Anstalt v Campari America LLC [2016] FCAFC 92, [108] (Besanko J).

10. The Opponents’ evidence of Ms Wang’s actual control over GMP’s use of the Opponents’ Trade Marks is limited and, in my view, insufficient. Exhibit XW-8 to Wang 1 contains a flow chart, dated 21 March 2014, that reportedly sets out procedures for the design and presentation of “the AURINDA Trade Mark” in advertising and displays. The flow chart does not make mention of any trade mark but rather details general procedures for printing, application, reconciliation and storage of ‘labels’. There is nothing in this document to indicate it has been authored or approved by Ms Wang.

11. As regards the remainder of the evidence described in paragraph [20] of this decision regarding Ms Wang’s alleged control over quality of the AURINDA products and application of the AURINDA brand, no details have been provided as to any feedback Ms Wang relayed to GMP regarding policies for use of the Opponents’ Trade Marks, or whether any such feedback had any effect on the conduct of GMP’s business and in particular the manner of its use of the Opponents’ Trade Marks. In the absence of documentary evidence of such inspections or communications these claims rise no higher than mere assertion.

12. Overall, the evidence provided of Ms Wang’s control over GMP’s use of the Opponents’ Trade Marks does not improve the Opponents’ position because it is insufficiently contextualised and is not adequately supported by documentary evidence.

13. Having regard to the inconclusive nature of the evidence in its entirety, I am not satisfied on the balance of probabilities that a party other than the Applicant holds the better claim to ownership of the Trade Mark. The s 58 ground of opposition has not been established.

    Section 60

14. Section 60 of the Act relevantly provides:

    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.

15. To establish a ground of opposition under s 60 of the Act, the onus is on the Opponents to demonstrate that:

    i.as at the Relevant Date, there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons; and

    ii.because of that reputation use of the Trade Mark would be likely to deceive or cause confusion.

16. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60 of the Act. Her Honour considered the definition provided in the Macquarie Dictionary and decided that reputation is ‘the recognition of the [trade mark] by the public generally’.[16]  Reputation cannot be assumed; it must be established as a matter of fact by the Opponents.[17]

    [16] [2000] FCA 1335, [81].

    [17] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

17. As O’Bryan J observed in Rodney Jane Racing Pty Ltd v Monster Energy Company:

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[18] 

    [18] [2019] FCA 923, [83].

18. Reputation must be established amongst a significant or substantial number of persons in the relevant market.[19] In Le Cordon Bleu BV v Cordon Bleu International Ltee the Court observed that what amounts to a significant or substantial amount of people will depend on the nature of the goods or services in question.[20]

    [19] Renaud Cointreau & Cie v Cordon Bleu International Ltee[2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

    [20] [2000] FCA 1587, [91] (Heerey J).

19. In the SGP, the Opponents have asserted that:

    ·Ms Wang has granted licences to other parties, including GMP, to use the Opponents’ Word Mark and the Trade Mark in Australia since at least January 2017, being more than 2 years before the Relevant Date;

    ·GMP has manufactured gel capsules under the Opponents’ Word Mark and the Trade Mark for export to China;

    ·As a result of the use and promotion of the Opponents’ Word Mark and the Trade Mark by GMP under licence from Ms Wang, GMP has acquired reputation and goodwill in the Opponents’ Word Mark and the Trade Mark in Australia in relation to identical and/or similar goods to the Claimed Goods;

    ·A significant section of the public is likely to be deceived or confused, because they will assume that the Claimed Goods are those of GMP, that the Claimed Goods have the support, license, authority, endorsement or sponsorship of GMP, or that the Applicant is connected in the course of trade with GMP.

20. It is difficult to determine the extent of GMP’s reputation in either of the Opponents’ Trade Marks or the Trade Mark as at the Relevant Date on the basis of the information provided.

21. The Opponents have provided evidence of sales of AURINDA branded products in the form of sales figures, ledger of product sales to a customer in China, packing lists and tax invoices, dated variously between July 2016 and March 2022. It appears this evidence relates to goods manufactured, packaged and labelled in Australia, however it is not possible to determine whether any of GMP’s products were offered for sale or sold to consumers in Australia. As such I am not able to make a finding that the Opponents’ evidence supports the Opponents’ claim to a reputation in Australia.

22. The Opponents assert that they have applied for TGA approval for the supply of AURINDA branded products in Australia. This is not supported by the evidence. Documents relating to the TGA provided as evidence state only that GMP is approved for testing, manufacture, labelling, packaging and release for supply.

23. The Opponents have not provided any clear evidence of the availability of GMP’s AURINDA branded products for sale in Australia. No details of Australian retailers of GMP’s products have been provided, nor is there any evidence of any marketing or promotion of GMP’s products to consumers in Australia. GMP may have developed a reputation by way of export of AURINDA branded products overseas, in particular to China, but the evidence before me simply does not establish any such reputation in Australia as at the Relevant Date.

24. Overall, I am not satisfied that the Opponents’ claim to a reputation in Australia in the Opponents’ Word Mark or the Trade Mark is supported by the evidence. The Opponents have not established, as a matter of fact, that GMP’s products bearing either of the Opponents’ Trade Marks or the Trade Mark were recognised in Australia at the Relevant Date by a significant or substantial number of potential consumers.

25. As s 60(a) of the Act has not been established, it is not necessary for me to consider s 60(b).

    Section 42

26. Section 42 of the Act provides:

    An application for the registration of a trade mark must be rejected if:

    (a) the trade mark contains or consists of scandalous matter; or

    (b) its use would be contrary to law.

27. It is clear from the SGP that this ground is being made under s 42(b) of the Act. The Opponents bear the onus of establishing that use of the Trade Mark by the Applicant would (rather than could) be contrary to law on the balance of probabilities.[21] 

    [21] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

28. It is claimed in the SGP that use of the Trade Mark by the Applicant would be:

    (i)     contrary to the Copyright Act 1968 (Cth) because it would infringe the Opponents’ copyright in an artistic work;

    (ii) in breach of s 18 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth) because it would amount to conduct that is misleading or deceptive or likely to mislead or deceive; and

    (iii)             would constitute the tort of passing off because it would misrepresent the Applicant’s goods as those of the Opponents, causing damage to the Opponents’ goodwill in the AURINDA Trade Marks.

29. The Opponents’ Submissions state that they do not pursue this ground of opposition in respect of the copyright claim or passing off. As such I will only consider whether use of the Trade Mark would be contrary to s 18 of the ACL.

    Australian Consumer Law

30. It is clear from the Opponents’ Submissions that the Opponents rely on the reputation asserted under the s 60 ground of opposition in support of the s 42(b) ground.

31. The test for conduct contravening the ACL is a stricter one than the test under s 60 of the Act.[22] When the Opponents’ s 42(b) ground relies on reputation, the higher threshold under the ACL will only be satisfied if consumers would be misled or deceived owing to the Opponents’ reputation. As I have found that the Opponents have not demonstrated a reputation in the Opponents’ Trade Marks sufficient for use of the Trade Mark to cause deception or confusion under s 60, owing to the stricter test to be applied under the ACL the Opponents are likewise unable to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [22] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

32. The ground of opposition under s 42(b) of the Act is not established.

    Section 62A

33. Section 62A of the Act provides:

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

34. The phrase ‘bad faith’ is not defined in the Act. In the context of s 62A, bad faith does not require dishonesty or fraud, rather ‘it is a wider notion, potentially applicable to diverse species of conduct’[23] not confined to the examples of bad faith given in the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth). 

    [23] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164] (Dodds-Streeton J) (‘Fry Consulting’).

35. In DC Comics v Cheqout Pty Ltd, Bennett J explained:

    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.

    The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[24]

    [24] [2013] FCA 478, [62].

36. Justice Bennett also acknowledged that conduct that is ‘exploitative and designed to acquire a springboard or advantage’ can amount to conduct that falls short of acceptable commercial standards.[25]

    [25] Ibid [66].

37. Accordingly, I must determine what the Applicant knew at the time of making the application for the Trade Mark and then, considering that knowledge, whether the Applicant’s conduct fell short of acceptable commercial behaviour and is of ‘an unscrupulous, underhand or unconscientious character’.[26]

    [26] Fry Consulting (n 23) [166].

38. An allegation of bad faith under s 62A is a serious one. In this regard, I note the following comments of the Registrar’s delegate in Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited:

    The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly.[27]

    [27] [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

39. It is not necessary for the Applicant to demonstrate use of the Trade Mark or an intention to use the Trade Mark in order to negate an accusation of bad faith. In filing an application to register the Trade Mark in Australia, the Applicant is presumed to have a genuine intention to use the Trade Mark. I note in this regard the comments of Fullagar J in Aston v Harlee Manufacturing Co:

    [T]he making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention.[28]

    [28] (1960) 103 CLR 391, 401.

40. In the SGP, the Opponents assert that the Applicant was aware, or ought to have been aware, of the Opponents’ assertion of prior ownership, use and reputation in relation to the Opponents’ Trade Marks and the Trade Mark for identical and/or similar goods in Australia, because a related entity of the Applicant had purchased AURINDA branded products from GMP under licence from Ms Wang. The Opponents allege that the application to register the Trade Mark was made “deliberately to undermine the Opponents’ rights” and that such conduct falls short of acceptable standards of commercial behaviour.

41. As noted above in paragraphs [61] to [65] in relation to the s 60 ground of opposition, the Opponents’ evidence is lacking in sufficient detail to support the Opponents’ claim to a reputation in the Opponents’ Trade Marks at the Relevant Date. I am not satisfied that the Opponents’ alleged reputation in the Opponents’ Trade Marks is such that use of the Trade Mark in Australia would result in a springboard or advantage for the Applicant. In any case, although the Opponents’ alleged reputation in the Opponents’ Trade Marks and the Trade Mark can provide context for the Applicant’s conduct, ultimately it is a question of whether the Applicant’s conduct falls short of acceptable commercial standards.

42. I refer to paragraphs [44] to [53] of this decision in relation to the s 58 ground of opposition. Clearly, there is a lack of clarity in the evidence provided regarding prior ownership of the Trade Mark. As explained in paragraph [42] of this decision, although it is apparent that at the Relevant Date the parties were known to each other and had some kind of working relationship, there is nothing in the evidence provided to suggest that the Applicant at any stage recognised the Trade Mark or the Opponents’ Trade Marks as being the property of the Opponents.

43. Exhibit XW-10 to Wang 1 contains a certified translation of a WeChat message sent by Mr Tao to Mr Ye on 20 June 2017 requesting the transfer of the AURINDA brand to Tas Mania. It is declared in Ye 2 that this message is to be understood as an offer to purchase the Opponents’ Word Mark from GMP, the implication being that Mr Tao (and by extension, the Applicant) was aware of the Opponents’ rights in respect of, at least, the Opponents’ Word Mark. The Applicant disputes this version of events. It is declared in the Tao Declaration that on becoming aware of the Wang Trade Mark Mr Tao sent this message, not as an offer to purchase rights but as compensation for the Opponents’ cooperation “in righting a wrong”.[29] Without further context I am not able to determine that Applicant’s knowledge was such that the decision to apply for the Trade Mark at the Relevant Date would be regarded as in bad faith by persons adopting the proper standards.[30]   

    [29] Tao Declaration, [42].

    [30] Fry Consulting (n 23) [167].

44. It is declared in Wang 1 that Mr Tao’s awareness of GMP’s ownership of the Opponents’ Word Mark is demonstrated by his approach to GMP for authorisation to apply for registration of AURINDA branded products with the China Food and Drug Administration (‘CFDA’) on GMP’s behalf. The translated CFDA document in Exhibit XW-11 to Wang 1 merely identifies GMP as the manufacturer of AURINDA Coenzyme Q10 Hard Shell Capsules and AURINDA (R) Sheep Placenta Hard Shell Capsules, presumably for the purpose of inspections and sampling by the CFDA as required. It makes no mention of rights to trade marks.

1. Overall, the evidence before me does not establish that at the time of filing the application for the Trade Mark the Applicant’s conduct fell short of standards of acceptable commercial behaviour observed by reasonable and experienced persons. In the absence of such evidence, I am not satisfied that the application for the Trade Mark was made in bad faith.

2. The s 62A ground of opposition has not been established.

   Decision

3. Section 55 of the Act relevantly 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.

4. The Opponents have failed to establish any of the grounds of opposition nominated in the SGP.  Trade mark application number 2011406 may proceed to registration not less than one month from the date of this decision. 

5. 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

6. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponents in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

   Sheona Robertson
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   14 November 2023