Xiaomi Inc v Enhui Chen - [2024] ATMO 85

TRADE MARKS ACT 1995

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

Re:Opposition by Xiaomi Inc to registration of trade mark application number 2188061 (classes 7 and 11) - MIUI - in the name of Enhui Chen

Delegate:

Anne Makrigiorgos

Representation:

Opponent: King & Wood Mallesons

Applicant: A.P.T. Patent and Trade Mark Attorneys

Decision:

2024 ATMO 85

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58 and 60 pursued – no ground of opposition established – trade mark to proceed to registration

Background

This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Xiaomi Inc (‘Opponent’) to registration of the following trade mark:
[1] Unless otherwise stated, each reference to a section below is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

Trade mark number: 2188061 (‘Application’)

Trade mark: MIUI (‘Trade Mark’)

Applicant: Enhui Chen (‘Applicant’)

Filing and Priority Date: 21 June 2021 (‘Relevant Date’)

Specification: Class 7: Hair cutting machines for animals; Pasta making machines, electric; Whisks, electric, for household purposes; Coffee grinders, other than hand-operated; Blenders, electric, for household purposes; Screwdrivers, electric; Vacuum cleaners; Blowing machines; Dishwashers; Hair clipping machines for animals; Wrapping machines; Mixers (machines); Ironing machines; Vending machines; Garbage disposal units; Juice extractors, electric
Class 11: Ice-cream making machines; Hair dryers; Waffle irons, electric; Deep fryers, electric; Electric appliances for making yogurt; Bread-making machines; Kettles, electric; Refrigerators; Fans (air-conditioning); Humidifiers; Microwave ovens (cooking apparatus); Heaters, electric, for feeding bottles; Ice machines and apparatus; Coffee machines, electric; Pressure cookers, electric; Cookers; Air purifying apparatus and machines; Air fryers; USB-powered hand warmers; USB-powered cup heaters; Chocolate fountains, electric; Refrigerated cabinets; Germicidal lamps for purifying air; Lamps

(‘Applicant’s Goods’).

The Trade Mark was examined and advertised as accepted for possible registration on 22 November 2021.
On 18 January 2022, the Opponent filed a Notice of Intention to Oppose the Trade Mark. On 17 February 2022, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 28 April 2022.
The Opponent filed Evidence in Support (‘EIS’) on 3 August 2022. The Applicant did not file Evidence in Answer.
The parties were given the opportunity to either request an oral hearing or to file written submissions. The parties elected to be heard on the basis of written submissions. The Opponent filed written submissions drafted by Cate Nagy and Johnathon Hall of King & Wood Mallesons on 22 November 2023. The Applicant filed written submissions drafted by Paul Wyk of A.P.T. Patent and Trade Mark Attorneys on 30 November 2023. I have decided this matter based on the particulars set out in the SGP, the EIS and the written submissions of the parties.

Grounds and onus

The SGP nominates grounds of opposition under ss 42, 44, 58, 58A and 60. However, the Opponent’s written submissions state that the Opponent does not press s 58A. For completeness I find the s 58A ground has been abandoned.
The Opponent carries the burden of establishing one or more of the grounds of opposition[2] on the balance of probabilities.[3] The rights of the parties are assessed as at 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 Edelman JJ).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (Southern Cross).

Evidence

The following EIS was filed:

Declaration of Johnathon Hall, employee of King & Wood Mallesons made on 3 August 2022 with Exhibits JH-1 to JH-39 (‘Hall Declaration’).

Preliminary Matter

Upon examination of the Hall Declaration, it came to my attention that many of the exhibits referenced in the body of the declaration did not match the content annexed to the corresponding exhibit pages. Given this, I asked the Opponent to provide a further copy of the Hall Declaration with the correct exhibit page references in the body of the declaration to allow the correct matching of the current exhibit pages and their annexed content.
In reply, the Opponent advised that as a result of an administrative error and obvious mistake, the exhibits for a separate opposition filed by the Opponent were inadvertently attached to the Hall Declaration before it was uploaded to Objective Connect. As a result, thirteen exhibits intended to be filed with the Hall Declaration were missing (‘Missing Exhibits’). These Missing Exhibits comprise:

a corrected list of the registrations on which the Opponent relies in respect of its s 44 ground for opposition (‘Additional Marks’). Annexure B contains the trade mark number and depiction of these Additional Marks; and
examples showing the use by the Opponent of some of its trade marks in respect of a variety of electric and electronic goods considered the same as, or highly similar to, the Applicant’s Goods claimed to be relevant to the ss 42, 44 and 60 grounds of opposition (‘Reputation Exhibits’).

The Opponent therefore requested amendment of the Hall Declaration pursuant to s 66 or alternatively, that I exercise my discretion under regulations 21.15(4) and 21.19(1) to take into consideration the Missing Exhibits when determining the opposition. The amendment sought was to replace incorrect exhibits with the correct exhibits. The Opponent provided a supporting declaration explaining the circumstances surrounding the claimed error and mistake.
As a result of the amendments made to the Hall Declaration to correct exhibit references and to include the Missing Exhibits, the Opponent also filed amended written submissions.
The Opponent argued that the Missing Exhibits contained evidence that was crucial to my assessment of and decision in relation to the opposition, and that failure to consider this evidence would be contrary to the public interest. The Opponent also argued that the Missing Exhibits are probative.
The Applicant was given an opportunity to file submissions regarding the amendment of the Hall Declaration to include the Missing Exhibits. The Applicant did so arguing that:

the original declaration was signed and uploaded on 3 August 2022. There was ample opportunity to realise an error has been made well before 1 February 2024, particularly because the Applicant’s submissions had referred to the problem of discordance between the declaration and exhibit numbers;
the Opponent has filed a corrected declaration that is significantly longer than the original and contains new evidence such that if the corrected declaration is allowed, natural justice would dictate that the Applicant should be given an opportunity to file further evidence to address the new evidence and in due course make new submissions; and
if it is decided that the Missing Exhibits are ‘largely the same as the original evidence’ then the Opponent’s attempt to introduce further evidence should not be allowed because it does not add anything of substance.

In respect of the Additional Marks, I note that the SGP provides a list of twenty two marks which encompass the Additional Marks. Therefore, at an early stage the Applicant was made aware of these twenty two marks. However, as the Hall Declaration only referred to fourteen marks (four of which are not in the list of Additional Marks) rather than the twenty two in the SGP, the Applicant’s submissions understandably only discuss the fourteen marks.
In light of the conclusions which follow under the s 44 ground, I do not consider that allowing the amendment to include the Additional Marks, will ultimately change my conclusions on s 44. For the same reasons provided under the s 44 ground, I do not consider the Trade Mark to be deceptively similar to these Additional Marks as each contains additional points of dissimilarity.
In respect of the Reputation Exhibits, I note that the examples are all printouts from Facebook®, Instagram® and various Australian retailer websites including the Applicant’s Mi-Store website at (‘Mi-Store’), Catch at (‘Catch’), Kogan at (‘Kogan’), Dick Smith at (‘Dick Smith’), Woolworths at (‘Woolworths’) and Carethy at (‘Carethy’). Most importantly, other than three exhibits of Facebook® printouts dated before the Relevant Date, which only have very minimal likes, the printouts are either undated or dated after the Relevant Date.
The Opponent claims that the Reputation Exhibits are relevant to ss 42, 44 and s 60. I disagree for the following reasons:

in respect of ss 42 and 60 which require evidence of a reputation in a trade mark within Australia at the Relevant Date, evidence which is undated or dated after the Relevant Date is of limited value in establishing such a reputation. In my opinion the Reputation Exhibits do little, if anything, to evidence awareness in Australia of the Opponent’s trade marks, before or even after the Relevant Date. Therefore, the probative value of the Reputation Exhibits is negligible; and.
in respect of s 44, reputation in the market is not a relevant consideration to the determination of deceptive similarity. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (‘Self Care’)[5] made it clear that reputation should not be taken into account when assessing deceptive similarity.
[5] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).

Give the above, the Missing Exhibits do not change the outcome of this matter, and therefore I find it unnecessary to decide whether to take the Missing Exhibits into consideration pursuant to s 66 or regulations 21.15(4) and 21.19(1). This evidence is not crucial to my assessment and decision in relation to the opposition.

Summary of EIS

This is a summary of the originally filed Hall Declaration with the corrected exhibit pages (excluding the Missing Exhibits).
Hall provides a history of the Opponent, which was founded in 2010 and is based in Beijing, China. The Opponent is a designer and manufacturer of software, home appliances, electronics and household items and sells its goods internationally.
Hall claims that the Opponent has established a significant presence in the software, home appliances, electronics and household items space and annexes undated screenshots from the website of Panmi Pty Ltd (‘Panmi)’ at claimed to be the Opponent’s brand agent and business distribution partner in Australia. Panmi is also claimed to operate an online storefront Mi-Store retailing the Opponent’s goods.
Hall states that the Opponent began sale of goods to Australian consumers under trade marks comprising, or including the prefix, “MI” shortly after 15 April 2019 and since then has received significant attention from Australian media and retail outlets in the form of reviews of its products. Hall annexes:
·     five articles in the Australian Financial Review, PC World Australia. Pickr, Phil Tann and Channel News dated in April 2019 discussing the launch of the Opponent’s goods into Australia which concentrate on smart phones, refer to the trade marks Mi, Mi Mix and Redmi and also mention other goods confirmed for the Australia market namely scooters, fitness bands, power banks and smart bulbs. No indication of Australian reader numbers for either the publications or the actual articles have been provided;
·     eight review articles from Australian sites for Gadget Guy, 7 News, PC World, news.com.au and Vacuum Shop. I note that of the articles, four are dated before the Relevant Date and refer to a MI air purifier, router and smartphone, three after the Relevant Date and refer to a MI smartphone and robot vacuum and one is undated referring to a MI smartphone. No indication of Australian reader numbers of these review articles has been provided; and
·     reviews from consumers for an assortment of MI products dated after the Relevant Date on two online Australian review sites: productreview.com.au and Kogan.
Hall provides details of the Opponent’s protected International Registration Designating Australia (‘IRDA’) for the trade mark which appear below (‘MIUI Registration’):

IRDA Number and International Number

Class and Goods

Priority Date

1907686

1388677

Class 9: Data processing apparatus; computer memory devices; computers; disks, magnetic; floppy disks; computer operating programs, recorded; computer peripheral devices; computer software, recorded, couplers [data processing equipment]; magnetic data media; monitors [computer programs]; processors [central processing units]/central processing units [processors]; integrated circuit cards [smart cards]/smart cards [integrated circuit cards]; notebook computers; computer game software; laptop computers; computer software applications, downloadable; computer hardware; interactive touch screen terminals; humanoid robot with artificial intelligence; mobile telephones/cell phones/cellular phones software applications, downloadable; image, audio and video editing [computer programs]; operating system programs; computer programs for enabling access control; virtual reality game softwares; computer programs for Internet and world-wide-web; quantity indicators; facsimile machines; smartphones; intercommunication apparatus; scales; navigational instruments; wearable activity trackers; audio- and video-receivers; video recorders; cameras [photography]; measuring instruments; inductors [electricity]; mirrors [optics]; wires, electric; chips [integrated circuits]; sensors; time switches, automatic; couplings, electric/connections, electric; theft prevention installations, electric; spectacles [optics]; batteries, electric; chargers for electric batteries; animated cartoons

27 February 2017

Hall claims that the trade mark MIUI (‘Opponent’s MIUI Mark’) is the name of the Opponent’s Android ROM (‘MIUI ROM’) used as an operating system for smart devices designed and manufactured by the Opponent, which was initially released in August 2010 and is available for download by Australian consumers. No indication is provided as to how many Australian customers, if any, have downloaded the MIUI ROM. The Opponent’s MIUI Mark is claimed to be a portmanteau of ‘MI’, the Opponent’s house brand, and the term ‘UI’, the shorthand for ‘user interface’.
Hall provides an undated extract from the Opponent’s MIUI Mark website claimed to be from 21 July 2022, after the Relevant Date, which shows the Opponent’s MIUI Mark.
Hall states that since the release of the MIUI ROM, the Opponent has supported worldwide community interest and discussion regarding the MIUI ROM. Hall annexes an archived extract[6] dated 21 August 2019, and an extract dated after the Relevant Date of the Xiaomi Community sub-forum. Hall claims that the Xiaomi Community forum is available for use worldwide, including by users in Australia but has not provided any evidence that users in Australia have accessed the forum.
[6] Taken from the Wayback Machine, a digital archive of the World Wide Web at >
Hall claims that the MIUI ROM comes pre-installed on smart devices sold by the Opponent in Australia and is used in the advertising of such smart devices. Hall annexes undated screenshots from the websites of Kogan, Dick Smith and Mi-Store. I note that any reference to the MIUI operating system is only in respect of smart phones.
Hall provides a list of Australian trade mark registrations owned by the Opponent (‘MI Marks’), details of which are provided in Annexure A. Hall claims that all these marks are used by the Opponent across a broad range of goods and services and annexes examples, being archived extracts from Mi-Store of the Opponent’s goods sold in Australia between 15 July 2019 to 15 March 2020, and undated extracts claimed to be dated 27 July 2022, after the Relevant Date. I note use of the trade mark MI before the Relevant Date on the goods: selfie sticks, mouse, screwdriver, smart phone cables, laser projectors, power banks, air purifiers, car charges, lights, smart bands, vacuum cleaners, electric scooters, dashcams, earphones, cameras, temperature monitors, electric toothbrushes, speakers, smart watches, scales, fans, rice cookers, and smart phones. I also note use of the trade marks Mi Mix and Redmi on smart phones before the Relevant Date. Hall also annexes undated extracts from the Kogan and Dick Smith claimed to be from 27 July 2022, after the Relevant Date, where I note use of the trade mark MI on smart phones, computer monitors and lights and the trade mark MIJIA on a small range of household appliances such as coffee machines, cordless drills and screwdrivers, steam irons, clothing steamers and pressure cookers.
Hall claims that the Mi-Store was available to Australian consumers on or around July 2019 and provides the following archived extracts dated before the Relevant Date showing:
· the Mi-Store announcement; and
· use of the trade marks MI and Mi Mix on a small range of products, in particular, smart phones

and undated extracts claimed to be from 27 July 2022, after the Relevant Date, showing use of the trade mark MI on a small range of products available for purchase namely: smart phones and accessories, electric scooters and home products such as air purifiers, TVs, drills, lights and electric toothbrushes.

Hall states that the Opponent’s goods are also available to purchase via an official storefront on eBay® at and provides archived extracts from April 2020 of the storefront as well as undated extracts claimed to be from 21 July 2022, after the Relevant Date. I note the use of the trade mark MI in the archived annexures on a small range of products namely: power banks, air purifiers, speakers, lights, smart bands, electric scooters, earphones, security cameras, smart watches, scales, and smart phones.
Hall attests that the Opponent partnered with Catch for an official storefront on Catch and provides archived extracts from March 2020 of this website as well as undated extracts claimed to be from 21 July 2022, after the Relevant Date. I note the archived annexures show the storefront display as . I also note the use of the trade mark MI in the archived annexures on a small range of products namely: scooters, light bulbs, power banks and smart phones.
Hall claims there is use of the trade mark MI on coffee machines, rice cookers, pressure cookers, kettles, shavers, irons, hair driers, blenders, vacuum cleaners and screwdrivers and annexes undated screenshots from Australian online retail stores including Mi-Store, Catch, Dick Smith, Kogan, Woolworths and Carethy claimed to be dated 21 July 2022, after the Relevant Date. I note that not all screenshots refer to the trade mark MI. Some refer only to Xiaomi with or without other marks such as ENCHEN, MIJIA, YOUPIN, JUISTAR and VIOMI.
Hall claims that the Opponent also advertises vacuum cleaners, vacuum accessories, air purifiers, fans and lamps on its Australian social media channels and annexes a collection of extracts of posts from the Opponent’s Facebook® and Instagram® pages at and australia/?hl=en. While some of the extracts are dated before the Relevant Date, others are dated after the Relevant Date. In any event, I note that there are minimal likes for all these posts being between 0 and 15.

Hall declares that the Opponent’s social media pages have a wide following. As of 31 July 2022, after the Relevant Date, there were 272 posts on Instagram® with 5,635 followers and Facebook® there were 10,302 likes and 10,896 followers.

Discussion and Reasons

Section 44

The relevant provisions of s 44 are reproduced below:
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.
Note 1:For deceptively similar see section 10.
Note 2:For similar goods see subsection 14(1).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
The Opponent nominates the Opponent’s MIUI Mark and the MI Marks (together ‘Opponent’s Marks’) as the bases for this ground in the SGP. The Opponent claims that the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Marks, particularly the Opponent’s MIUI Mark.
In relation to the MI Marks, in this decision I will refer to trade marks consisting solely of the word MI as the MI Solus Mark and trade marks which are a combination of the word MI with other wording as the MI Formative Marks.
As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:

at least one of the Opponent’s Marks has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);
the Trade Mark is substantially identical with or deceptively similar to at least one of the Opponent’s Marks (‘the second requirement’); and
the Applicant’s Goods are similar to the goods claimed by the Opponent’s Marks or are closely related to services claimed by the Opponent’s Marks (‘the third requirement’).

I am satisfied that the priority dates of the Opponent’s Marks are earlier than the Relevant Date and are in a name other than the Applicant.
I turn to consider whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Marks. Here I will consider the Opponent’s MIUI Mark separately to the MI Marks.

Opponent’s MIUI Mark

The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’),[7] 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.
[7] (1963) 109 CLR 407 (‘Shell’).
Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are ‘substantially identical’.
The Trade Mark is clearly substantially identical to the Opponent’s MIUI Mark. Both marks comprise the identical word MIUI. On a side by side comparison of the respective marks, there is an undeniable total impression of similarity.
As I am satisfied that the Trade Mark is substantially identical to the Opponent’s MIUI Mark, the second requirement is satisfied. This leaves the third requirement, namely whether the Applicant’s Goods are similar to any of the goods claimed in the Opponent’s MIUI Mark (‘MIUI Goods’).
Goods are ‘similar to other goods’ if they are the same or of the same description as the other goods.[8] The factors relevant to the consideration of whether goods are similar include their nature including their origin and characteristics, uses made of the goods including their intended purposes, source of manufacture, respective trade channels and whether the ordinary consumer of the goods would regard the goods as being from a single source.[9] These can be conveniently summarised as: whether the respective goods are of the same nature; whether they are used by the same people for the same purposes; and whether the trade channels are the same. No single consideration is conclusive in itself.[10]
[8] s 14(1).
[9] Re Jellinek’s Application [1946] 63 RPC 59 (Romer J).
[10] Southern Cross (n 4), 606.
A fuller explanation of trade channels as approved by the High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[11] considers whether the goods are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade.
[11] Southern Cross (n 4), 606.
In considering the Applicant’s Goods and the MIUI Goods, I should look to the ordinary meaning of the words and the notional normal and fair use, not restricting myself to how or in what goods the Opponent or Applicant actually trade.[12] I should consider the context in deciding whether ordinary consumers of the goods would see the goods as having the same trade origin[13] and judge the goods on the basis of business realities and common sense - and not on the basis of abstract reasoning.[14]
[12] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [88] (Branson J); Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).
[13] Southern Cross (n 4), 606; E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, [73] (Moore, Edmonds and Gilmour JJ).
[14] Polo Textiles Industries Pty. Ltd. and Anor v Domestic Textiles Corporation Pty Ltd [1993] FCA 203 (Burchett J).
In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd, Burley J in considering ‘goods of the same description’ in the context of a s 92 removal action said:
Accordingly, courts in recent times have consistently found it to be of significance that the policy underlying the expression “goods of the same description” is the need to avoid any confusion and deception in the market place which would be likely to arise should a mark become available for use by two or more different companies upon goods of the same description. That policy, when considered in the context of modern shopping practices in large stores where multiple products can be displayed near each other, such as in supermarkets, tends to expand the likelihood that products that at first blush are of quite different character and which are manufactured differently will nonetheless be goods of the same description because there is an increased likelihood that goods will be placed in close proximity to each other in the same store.[15]
[15] (2020) 158 IPR 9, [286].
Below is a table of the Applicant’s Goods and the MIUI Goods:

Applicant’s Goods

MIUI Goods

Class 7: Hair cutting machines for animals; Pasta making machines, electric; Whisks, electric, for household purposes; Coffee grinders, other than hand-operated; Blenders, electric, for household purposes; Screwdrivers, electric; Vacuum cleaners; Blowing machines; Dishwashers; Hair clipping machines for animals; Wrapping machines; Mixers (machines); Ironing machines; Vending machines; Garbage disposal units; Juice extractors, electric

Class 11: Ice-cream making machines; Hair dryers; Waffle irons, electric; Deep fryers, electric; Electric appliances for making yogurt; Bread-making machines; Kettles, electric; Refrigerators; Fans (air-conditioning); Humidifiers; Microwave ovens (cooking apparatus); Heaters, electric, for feeding bottles; Ice machines and apparatus; Coffee machines, electric; Pressure cookers, electric; Cookers; Air purifying apparatus and machines; Air fryers; USB-powered hand warmers; USB-powered cup heaters; Chocolate fountains, electric; Refrigerated cabinets; Germicidal lamps for purifying air; Lamps

The Opponent submits that:

the Applicant’s Goods are of a similar nature and characteristic to the MIUI Goods. The MIUI Goods include electronic household appliances such as scales, automatic time switches and electric theft prevention installations and the Applicant’s Goods include kitchen and personal care products namely hair dryers, whisks, electric, blenders, electric, coffee grinders, coffee machines, waffle irons, kettles, electric and deep fryers, electric, lamps, air conditioners and blowing machines and garbage disposal units. The basis for the Opponent’s argument appears to be that the respective goods are associated with personal care and/or cooking, used in bathroom and/or kitchen settings, often set to electric timers and installed as a home feature;
electronic household appliances are usually produced by one and the same manufacturer, relying on the Hall Declaration claimed to show a breadth of electronic goods manufactured by the Opponent under the MI Marks and the Opponent’s MIUI Mark;
·     the types of the Applicant’s Goods are usually sold by the same retailers as those that would sell the MIUI Goods, claiming support from the online retailers of the MIUI Goods referred to in the Hall Declaration;
·     the Applicant’s Goods are purchased by the same class of consumers as those that would purchase the MIUI Goods, being consumers of home appliances, electronics and household items; and
·     consumers are used to brand extensions whereby businesses continually expand the range of electrical and technological goods (including household appliances) that they produce under similar brands, again relying on the Hall Declaration claimed to show the breadth of electronic goods manufactured by the Opponent under the MI Marks and the Opponent’s MIUI Mark.

The Applicant submits that:

the goods argued by the Opponent to be in the nature of electronic household appliances consist of a wide range of different utensils with different uses;
while big box retailers such as Kmart or Big W retail many different household, kitchen and personal care goods, goods with similar functions and uses are grouped together e.g. whisks and blenders, coffee grinders and coffee machines etc. Further, personal items such as electrical hair appliances will also be grouped together; and
a personal care item is very far from being the same as a kitchen appliance. For example, scales for kitchen use and scales for personal use are used for different purposes and are not grouped together in retail stores.

I agree with the Opponent that consumers of the Applicant’s Goods and the MIUI Goods are likely to be a broad range of customers spanning a great deal of the Australian population.
I am not persuaded by the Opponent’s argument that ‘scales, automatic time switches, electric theft prevention installations’ are similar goods to ‘hair dryers, whisks, electric, blenders, electric, coffee grinders, coffee machines, waffle irons, kettles, electric and deep fryers, electric, lamps, air conditioners, blowing machines and garbage disposal units’ on the basis that the respective goods are associated with personal care and/or cooking, used in bathroom and/or kitchen settings, often set to electric timers and installed as a home feature. In my opinion the fact that different goods are associated with personal care and/or cooking, used in bathroom and/or kitchen settings, often set to electric timers and installed as a home feature, is not, of itself, sufficient to conclude that their natures and uses are similar. The inherent nature and characteristics of the goods and the intended use of the goods differ. Where the goods can be used or what they can be used with is not a factor which determines the inherent nature and uses of goods and therefore whether or not goods are similar or dissimilar.
In my opinion, the natures and uses of the Applicant’s Goods differ from the MIUI Goods. Other than the majority of the Applicant’s and the MIUI Goods being electric or electronic, the similarity stops there. None of the Applicant’s Goods and the MIUI Goods are substitutable or alternatives. This is because they all have specific and distinct natures and uses.
While I am aware from my own experience that online retailers such as those referred to in the Hall Declaration and big box retailers such Kmart or Big W, referred to in the Applicant’s submissions sell all manner of goods from many manufacturers. In my opinion, just because online retailers sell many products made by a multitude of manufacturers under a multitude of brands, does not mean that consumers would blindly believe, without more, that this supports a conclusion that some goods are similar to others and in particular the Applicant Goods which have different natures and uses, are similar to the MIUI Goods.
The Opponent has only provided evidence before the Relevant Date that it manufactures a range of some twenty six electric and electronic goods but has not made any effort to establish that there are other major manufacturers of any of the MIUI Goods which also manufacture a wide range of electric and electronic goods including the Applicant’s Goods. Therefore, I find there is no convincing evidence from the Opponent to satisfy me that the general trade channels for the goods being compared are the same.
I am therefore not satisfied that the Applicant’s Goods are similar to the MIUI Goods, the third requirement has not been made and the s 44 ground of opposition is not successful.

MI Marks

I now consider whether the Trade Mark is substantially identical with or deceptively similar to the MI Marks.
While the SGP claims that the Applicant’s Trade Mark is substantially identical with, or deceptively similar to, the MI Marks, the Opponent’s concluding submissions on s 44 only refer to the Trade Mark being deceptively similar to the MI Marks and not substantially identical. For the sake of completeness, I do not consider the Trade Mark to be substantially identical to any of the MI Marks. Compared side by side as a whole, the Trade Mark has obvious visual and aural differences to all of the MI Marks and as a consequence, there is a total impression of dissimilarity. While the marks share two letters M and I, the similarity stops there. The respective marks are clearly different.
I move then to consider whether the Trade Mark and any of the MI Marks are deceptively similar.
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”.
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].[16]
[16] Shell (n 7), [13].
The High Court in Self Care[17] conveniently stated the relevant principles, which may be summarised as follows:
[17] Self Care (n 5).

(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[18]
[18] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).
(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[19]
[19] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
(c)the marks should not be compared side by side;[20]
[20] Australian Woollen Mills Ltd v F S Walton & Co Ltd (‘Woollen Mills’) (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).
(d)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;[21]
[21] Ibid.
(e)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’;[22]
[22] Ibid.
(f)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 mark prior to filing, or any reputation associated with the registered mark;[23]
(g)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;[24]
(h)“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;[25]

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;[26]

(j)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”;[27]
(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[28] and
(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[29]
[23] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).
[24] Shell (n 7), 415.
[25] 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).
[26] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[27] Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’) [1999] FCA 1020, [50(ii)] (French J) restating principles from Southern Cross (n 4), 594-595.
[28] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).
[29] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Woollen Mills (n 22), 657.

Justice French expressed the view in Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’)[30] that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter that, ‘[t]he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[31]
[30] [1999] FCA 1020.
[31] (1998) 42 IPR 615, 624.
In light of the authorities, I must decide whether there is a real tangible risk that the result of the use of the Trade Mark will be that a reasonable person will be caused to wonder whether it might not be the case that electric and electronic goods bearing the Trade Mark is from the same source as such goods bearing any of the MI Marks.
The Opponent submits that:
·     the element ‘MI’ is neither common nor descriptive and is the essential and/or distinguishing feature of the MI Marks. The MI element is a striking and memorable feature. The MI Solus Mark constituting MI and the MI Formative Marks prominently featuring MI, such as to create brand and identity cohesion across the Opponent’s branding;
·     the Trade Mark features the distinctive element ‘MI’ such that there are obvious and significant visual and aural similarities between the marks;
·     the likelihood of confusion is particularly high given the Trade Mark is sought to be registered in respect of household electronic appliances of the same kind to those in respect of which MI Formative Marks are registered. Here I note there are clear overlaps in the Applicant’s Goods and:
o   the goods of the MI Solus Mark such as lamps, germicidal lamps for purifying air, cooking apparatus and installations, air purifying apparatus and machines, hair driers [dryers], water heaters, heating installations, refrigerators, fans [air-conditioning], air conditioners, electric cooker, coffee percolators, electric; kettles, electric, household humidifier, coffee machines, electric, multicooker and household electric kettle; and
o   the goods of the Mijia Mark such as mixers (machines), dishwashers, grinding machines, electric blenders, electric kitchen machines, electric fruit presses for household use, ironing machines, mills (machines), electric cleaning machines, carpet cleaning machines and apparatus (machines) for filtering.
·     the Opponent has adopted a series of trade marks with the common element MI such that the Trade Mark is highly likely to be regarded by purchasers as indicating products from the same trade source; and
·     confusion or deception as to the trade provenance of the Applicant’s Goods is inevitable given the Opponent’s extensive ‘family’ of prior MI and MI-formative marks. Consumers are highly likely to assume that Applicant’s Goods emanate from the Opponent.
The Applicant submits that:

there are a significant number of registrations in classes 7, 9 and 11, that comprise the prefix MI of have MI as a prominent feature of the mark. The Applicant’s submissions annex brief details of these marks being 45 registered trade marks in Class 9, 44 in Class 7 and 70 in Class 11. As many of these registrations have the word MI as a prefix in an accentuated position, this renders the MI element of a larger word or combination non-distinctive;
MI when set apart, either by spacing or by the use of uppercase letters, is a phonetic equivalent of the word My; and
the Trade Mark does not have MI set apart from the remaining letters of the mark and therefore the letters MI are not emphasized or put in any distinctive position other than being the beginning of the Trade Mark.

It is convenient to confine the following discussion to a separate comparison of the Trade Mark with:

the MI Solus Mark - registration 2005404 for the mark ;
the following MI Formative Marks: , , MI A2, , Mi Wallet, Mi Finance, , Mi Pay and and (‘MI Formative Subset Marks’);
the MIJIA mark - registration 1876215 for the mark (‘Mijia Mark’); and
the Redmi mark - registration 2063853 for the mark Redmi (‘Redmi Mark’).

The rationale for the separate discussion is that if the Trade Mark is determined not to be deceptively similar to the MI Solus Mark, logic dictates that the same conclusion will apply to the MI Formative Subset Marks, given each contains the word MI with additional points of dissimilarity. Further the Mijia Mark and Redmi Mark are both for a single word, one beginning with the letters MI and one ending with the letters MI. They are therefore in a different category to the MI Solus Mark and the MI Formative Subset Marks.

MI Solus Mark

In my opinion, there are significant differences between the Trade Mark and the MI Solus Mark which, in the surrounding circumstances of this matter, means that the Trade Mark does not so nearly resemble the MI Solus Mark that deception or confusion are likely.
Visually and aurally, the Trade Mark would be seen as one word and pronounced as three syllables, either as ‘mi-oo-ee’ or ‘mi-you-ee’. In contrast, the MI Solus Mark is likely to be pronounced in the same manner as the words hi and bi and therefore as the phonetical equivalent of the word MY. Such a perception of the word MY is absent from the Trade Mark.
The element MI would not be seen as a stand alone or separate element of the Trade Mark. There is nothing to indicate that consumers would perceive the Trade Mark as two separate elements MI and UI. Further, there is nothing in the Trade Mark to encourage consumers to separate the Trade Mark into two distinct elements MI and UI, such as a hyphen, a colon or any other matter.
I am also of the opinion that the idea of the Trade Mark and the MI Solus Mark are vastly different. The idea a consumer gleans from the MI Solus Mark is the word MY. The idea a consumer gleans from the Trade Mark is not the word MY or the word MY and UI, but rather a single invented word replete with vowels.
The potential purchasers of electric and electronic goods are clearly vast in number, covering a great deal of mostly adult Australian consumers. As a consequence, the fact that such a large class of people is involved in this assessment lends increased weight to the possibility for confusion to occur. However, in my opinion, purchasers of electric and electronic goods are more likely to take time to assess and research a product before purchase and these goods are purchased either online or to a lesser degree in brick and mortar stores. It is as likely that consumers will request such products by oral reference to the trade marks as it is that they will conduct a visual inspection. Either way, the differences between the marks are sufficient to prevent any possibility of confusion or deception.
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.[32] I have considered the differences between the Trade Mark and the MI Solus Mark and, despite the fact that the trade marks contain some similarities, namely the word MI, I find that there does not exist a real, tangible danger of deception or confusion between the two. I find that a notional use of the Trade Mark in relation to the Applicant’s Goods would be unlikely to result in deception or confusion. Accordingly, the Opponent has not established that the Trade Mark is deceptively similar to the MI Solus Mark.
[32] Southern Cross (n 4), 594-595.

MI Formative Subset Marks

I now turn to consider whether the Applicant’s Trade Mark is deceptively similar with any of the MI Formative Subset Marks which contain the word MI with other distinct and separate elements. Again, for the reasons above and following, I am satisfied that the Applicant’s Trade Mark is not deceptively similar to any of these marks.
The Opponent argues that the essential and/or distinguishing feature of these marks is the element MI which is a striking and memorable feature. While MI is certainly a feature of all the MI Formative Subset Marks, this feature is no less significant than the other parts of the marks. In my opinion it is not solely the word MI that is likely to be imperfectly recalled in the MI Formative Marks. The other parts of the MI Formative Marks are equally likely to be recalled as they are also significant features of the MI Formative Subset Marks. Each part of the MI Formative Subset Marks is doing an equal amount of work visually, aurally and conceptually.
The Opponent’s argument that where a mark appears to be part of an earlier ‘family’ of marks, that mark may be thought to be likely to deceive or cause confusion because of the risk that people will see it as being associated with the earlier marks, does not advance the Opponent’s position. The Opponent has not evidenced that it has sought to build an expectation in the minds of consumers that they should look to a variety of different marks including the word ‘MI’ for its goods. The mere registration by the Opponent of a number of ‘MI’ prefixed marks does not equate to the use of those marks in the Australian marketplace. In fact, the Opponent’s evidence dated before the Relevant Date only shows use of the trade marks MI (including in device form), Xiaomi, Mijia, Redmi and Mi Mix. The existence in the market of just these five marks, two of which end in the letters MI, is not suggestive of a family of marks. Therefore, an offering for sale of the Applicant’s Goods under the Trade Mark is not in my estimation likely to result in wonderment as to whether this is yet another of the Opponent’s offerings.
While the Applicant has submitted that one of the circumstances to take into account is what is commonly referred to as ‘the state of the Register’, the fact that other registered marks may include the prefix MI is largely irrelevant to this inquiry.[33] However, here as the Registrar’s delegate, I can take note of the Register of Trade Marks as public information. Here there are a number of prior registered trade marks belonging to different traders that begin with the prefix MI in relation to electric and electronic goods.[34] As such, this also does not advance the Opponent’s ‘family of marks’ line of argument.[35]
[33] Automobile Club De L’Oeust v Gardiakos [2005] ATMO 19, [48] (Hearing Officer McDonagh).
[34] Applicant’s submissions [17], [18] and Annex-1.
[35] See Scotch Whisky Association v De Witt (2007) 74 IPR 382 (Sundberg J) and Re Beck Koller & Co’s Application (1947) 64 RPC 76, 83.
Accordingly, the Opponent has not established that the Trade Mark is deceptively similar to any of the MI Formative Subset Marks.

Mijia Mark

I now turn to consider whether the Applicant’s Trade Mark is deceptively similar to the trade mark Mijia Mark. Again, for the reasons above and following, I am satisfied that the Applicant’s Trade Mark is not deceptively similar to this mark.
In my opinion, other than the fact that the words MIJIA and MIUI start with MI, the similarity ends there. In my view, the aural and visual differences of MIJIA and MIUI are such that there would be no likelihood of confusion between the two marks. MIJIA and MIUI are both single invented words with no particular connotation. The marks have the same MI prefix, however, this is offset by the presence of the different suffixes. The Mijia Mark has five letters and Trade Mark four. I consider the trade marks would most naturally be pronounced as ‘mi-ji-a’ compared to ‘mi-oo-ee’ or ‘mi-you-ee’. Both words clearly do not have a close phonetic resemblance and in respect of the MIJIA mark, it contains the strong letter element J. Overall, the differences between the marks ensures that no deceptive resemblance of ideas is created. Thus, as a matter of impression and common sense, I do not think that a person of ordinary intelligence would be likely to be confused or deceived by the MIUI Mark, even allowing for an imperfect recollection.
Accordingly, the Opponent has not established that the Trade Mark is deceptively similar to the Mijia Mark.

Redmi Mark

I now turn to consider whether the Applicant’s Trade Mark is deceptively similar to the Redmi Mark. Again, for the reasons above and following, I am satisfied that the Applicant’s Trade Mark is not deceptively similar to this mark.
In my opinion, the only common feature of the marks is that they contain the letters MI. In the MIUI Mark these letters are the prefix of the mark and in the Redmi Mark these letters are the suffix of the mark. The similarity between these marks is only these two letters. In my view, the aural and visual differences of Redmi and MIUI are obvious and are such that there would be no likelihood of confusion between the two marks. The Redmi Mark and MIUI Mark are both single invented words with no particular connotation. The Redmi Mark has two syllables and the Trade Mark has three. Both words clearly do not have a close phonetic resemblance and no deceptive resemblance of ideas is created. Thus, again as a matter of impression and common sense, I do not think that a person of ordinary intelligence would be likely to be confused or deceived by the MIUI Mark, even allowing for an imperfect recollection.
Accordingly, the Opponent has not established that the Trade Mark is deceptively similar to the Redmi Mark.
Having found that the Trade Mark is not deceptively similar to any of the MI Marks, I find on that basis, the second requirement has not been met pursuant to s 44 and this ground of opposition is not made out.

Section 58

Section 58 provides:

Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.

The Act provides for registration of ownership and not ownership by registration.[36] 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’.[37] Authorship in this context is not predicated on being the first to coin the trade mark, instead it refers to the first to adopt the trade mark with an intention of using it in Australia in respect of the claimed goods and/or services.[38]
[36]Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [170] (Greenwood, Besanko and Katzmann JJ). See also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [78]-[80] (Carr J).
[37] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ) (‘Pham Global’).
[38] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).
The right to registration under the Act depends upon ownership of the trade mark and this requirement must be satisfied at the filing date of the application,[39] which in this case is the Relevant Date.
[39] Pham Global (n 8) [14].
To succeed under this ground, the Opponent must establish:

the trade mark relied upon by the Opponent is at least substantially identical to the Trade Mark[40] (‘First Requirement’);
the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark relied upon by the Opponent has been used[41] (‘Second Requirement’); and
a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade mark relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register the Trade Mark or (b) any use of the Trade Mark in Australia by the Applicant[42] (‘Third Requirement’).
[40] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[41] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[42] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

In summary the SGP provides that the Applicant is not the owner of the Trade Mark because the Opponent used the Opponent’s MIUI Mark, which is substantially identical to the Trade Mark, before the priority date of the Trade Mark in respect of the Opponent’s Goods and Services, which are the same kind of thing as the Applicant’s Goods.
While I have already concluded above under the s 44 ground that the Trade Mark and the Opponent’s MIUI Mark are substantially identical, the Opponent’s evidence has not satisfied me that the Opponent’s MIUI Mark has been used in Australia before the Relevant Date on any goods or services by the Opponent or any other party. Furthermore, even if the Opponent’s evidence satisfied me that there was use of the Opponent’s MIUI Mark in Australia before the Relevant Date, such use would only, at its highest, be in respect of an operating system for smart phones. An operating system for smart phones is not the same kind of thing or in other words, essentially the same[43], as any of the Applicant’s Goods.
[43] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [89] (Allsop J).
Consequently, the s 58 ground of opposition has not been established.

Section 60

The provisions of s 60 are reproduced below:

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.
Note:For priority date see section 12.

To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
In summary, the SGP provides that the Opponent and its related entities have acquired a significant reputation in Australia in the Opponent’s Marks in relation to the Opponent’s Goods and Services and because of the reputation of the Opponent’s Marks and the similarity between the Trade Mark and the Opponent’s Marks, the use and registration of the Trade Mark in relation to the Applicant’s Goods would be likely to deceive or cause confusion.

Reputation

The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[44]
[44] [2000] FCA 1335, [81] (‘McCormick’).

100. Further, Kenny J stated in McCormick that:

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 ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[45]
[45] Ibid [86].

101. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[46] Here given the nature of the parties’ goods being electric and electronic goods, the relevant market is likely to include most Australian households. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[47]

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

[47] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57] (Lockhart J).

102. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

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.[48]
[48] [2019] 142 IPR 275, [83] (O’Bryan J).

103. On the basis of the evidence provided by the Opponent, I am not satisfied that at the Relevant Date, any of the Opponent’s Marks had acquired a reputation in Australia amongst a significant number of consumers in respect of electric and electronic goods.

104. There are significant weaknesses in the Opponent’s evidence as much of it lacks detail, specificity and relevance and as a consequence, does not allow a conclusion of any reputation in any of the Opponent’s Marks, let alone a reputation sufficient to enliven s 60. The majority of the Opponent’s evidence is undated or dated after the Relevant Date and that which is dated before the Relevant Date:

consists of nine media and review articles which do not provide reader numbers for the publications or articles;
provides no indication of numbers of Australian customers who have downloaded the MIUI ROM;
provides no evidence that Australian users have accessed the Xiaomi Community forum;
provides no indication as to whether any consumers in Australia have purchased any of the Opponent’s goods under any of the Opponent’s Marks; and
provides negligible numbers of likes for social media posts.

105. The Opponent has failed to sufficiently evidence the breadth of the public that are likely to be aware of the mark by quantitative dimensions as it has not provided quantum of any sales or advertising and promotional expenditure for any goods under any of the Opponent’s Marks.

106. Whilst I acknowledge that the evidence demonstrates that the Opponent has used at least the trade marks Xiaomi, MI, Redmi, Mi Mix and Miui in Australia for a limited number of goods before the Relevant Date, mere use of a trade mark does not demonstrate that a trade mark has garnered a reputation that may result in deception or confusion. In the end, the evidence is insufficient to establish, as a matter of fact, that any of the Opponent’s Marks had acquired a reputation in Australia amongst a significant or substantial number of consumers.

107. As I have found that none of the Opponent’s Marks have acquired a reputation in Australia before the Relevant Date, there is no need for me to consider the second limb of s 60 and the ground of opposition under s 60 has not been established.

Section 42(b)

108. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.

109. The Opponent asserts that use of the Trade Mark would be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). Additionally, the Opponent asserts that use of the Trade Mark would amount to the common law tort of passing off.

ACL

110. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[49]

[49] 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).

111. As already established in respect of s 60, I am not satisfied that use of the Trade Mark in respect of the Applicant’s Goods is likely to deceive or cause confusion. It follows that, on the stricter tests posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation.

Passing Off

112. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.

113. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[50]
[50] [1989] FCA 506, [40] (Hill J).

114. Section 18 of the ACL is the equivalent of s 52 of the TPA.[51] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.

[51] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] (Rangiah J).

115. As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.

Decision

116. 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.

117. The Opponent has not established a ground of opposition. Accordingly, trade mark number 2188061 may proceed to registration one month from the date of this decision.

118. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or direction.

Costs

119. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 in the amounts set out in Schedule 8 of the Regulations.

Anne Makrigiorgos

Hearing Officer

Delegate of the Registrar of Trade Marks

14 May 2024

Annexure A

IRDA/Registration Number	Mark	Classes	Priority Date
1876215	(‘Mijia Mark’)	7, 9, 11, 12, 14, 16, 18, 20, 21, 25, 28, 35, 38, 42	29 April 2017
1950244	9	20 September 2017
1974081	9, 35, 36	30 August 2018
2002471	MI A2	9, 42	17 August 2018
2005404	(‘Mi Solus Mark’)	9, 11, 35	1 March 2018
2006829	9, 38, 41	3 October 2018
2009796	Mi Wallet	9	15 August 2018
2009799	Mi Finance	9, 36	15 August 2018
2014177	9, 35, 36	21 January 2019
2056966	Mi Pay	38, 42	15 April 2019
2057072	9, 35, 36, 38, 42	15 April 2019
2058710	9, 42	5 July 2019
2063853	Redmi (‘Redmi Mark’)	9	21 January 2020

Goods and Services:

IRDA/Registration Number	Goods and Services
1876215	Class 7: Agitators; mixers (machines); dishwashers; grinding machines; electric blenders; electric kitchen machines; electric fruit presses for household use; soybean reaping cutters (machines); industrial washing machines; washing machines for household purposes; washing machines incorporating drying facilities; ironing machines; industrial robots; knives (parts of machines); knife blades for electric knives; knife sharpeners (electric); mills (machines); industrial cleaning machines; electric cleaning machines; carpet cleaning machines; apparatus for the removal of dust from buildings; electric dust removing (cleaning apparatus); dust removing installations for cleaning purposes; dust separators; dust filters and bags for vacuum cleaners; machines for manufacturing air filter elements; apparatus (machines) for filtering; filter presses; filters for industrial purposes; central vacuum cleaning apparatus Class 9: Computer storage apparatus; computer apparatus; computer programmes (programs), recorded; keyboards; computer operating programs, recorded; computer peripheral equipment; computer software; computer software (recorded); monitors (computer hardware); computer monitoring apparatus; computer monitoring instruments; computer mouse; data processing equipment; optical data media; optical disks; central processing units; scanners (data processing equipment); electronic cards; notebook computers; electronic publications (downloadable); computer programs(downloadable software); computer game software; downloadable ring tones for mobile phones; downloadable music files; downloadable image files; USB flash drives; portable computers; counters; time recording apparatus; electronic timers; detectors; photocopiers (photographic, electrostatic, thermic); mobile or portable fax machine; fax devices; scales; measuring apparatus and instruments; gauges; electronic bulletin board apparatus; telephone handsets; apparatus for navigation; navigational instruments; radiotelegraphy sets; telegraphic apparatus; radio apparatus; radio receivers; radio control units; radios; telephones; video phones; satellite navigational apparatus; hands free kits for phones; global positioning system (GPS) apparatus; mobile phones for use in vehicles; cell phones; telephone sets; tape recorders; audio amplifiers; video receivers; headsets for telephones; headsets for use with computers; wireless headsets for smartphones; anti-dust headsets; loud speakers; apparatus for sound transmission; sound recording devices; recording devices for sound and image carriers; time clocks (time recording devices); speakers (audio equipment); cameras; portable media players; video apparatus; video cameras; cameras (photography); slide projectors; photographic projectors for slides; photographic slides; slide framing apparatus; slide projection lenses; slide film mounts; pressure gauges; dynamometers; optical instruments, other than for medical use; stereoscopes; video monitors; remote control apparatus; electronic measuring devices for telephone lines; automatic test instruments for monitoring telephone lines; electric wires; silicon wafers; semiconductors; sensor apparatus, other than for medical use; electric control apparatus; electrical anti-theft devices, other than for vehicles; anti-theft warning devices; burglar alarms; optical glasses; glasses adapted to protect the eyes; sunglasses; batteries; battery chargers; vehicle batteries; animated cartoons; regulated power supply apparatus; on-off sensors; light regulators (dimmers), electric; plugs, sockets and other contacts (electric connections); temperature indicators; electrical sensors; meters; instruments for measuring pressure; simulators for driving or control of vehicles Class 11: Electric lamps; lighting lamps; lighting apparatus and installations; lighting devices for showcases; lampshades; flashlights; safety lamps; lighting installations for air vehicles; vehicle lighting apparatus; motor vehicle lamps; lamps; electric cookers; cooking apparatus and installations; electric pressure cookers; electric kettles; water heaters; freezers; refrigerators; refrigeration installations; refrigeration units; refrigerator deodorizing units; pocket torches, electric; toasters; air purification apparatus; air conditioning apparatus; air filtration installations; air cooling apparatus; air dryers; air-conditioning fans; clothes dryers; dryers for the hands using a warm air drying stream; drying apparatus; electric heaters; water filter apparatus; gas purification apparatus; ionizers for the treatment of air or water; machines for the processing (purification) of sewage; apparatus for water purification; fabric steamers; heaters for heating irons; ventilating fans; axial fans; air humidifier; electric heating apparatus; automatic faucets; water distributing apparatus (automatic); water installations (automatic); automatic flushing installations for urinals; toilet stool units with a washing water squirter; toilets with washing functions; automatic watering installations; bathroom fixtures; bathroom installations; bath fittings; portable electric heater; lighters; electric hair dryers; drying apparatus and installations Class 12: Electric vehicles; cars; bicycles; load carrying (transporting) apparatus; carriages for infants; vehicle tyres; repair materials for tyres; air vehicles; water vehicles; child safety seats for use in vehicles; air pumps for inflating bicycle tyres; foot pumps for inflating vehicle tyres; motor vehicles; aircraft; remote control vehicles, other than toys; spacecraft; amphibious vehicles; amphibious craft; amphibious airplanes; vehicles for locomotion by land, air, water or rail; anti-theft alarms for vehicles; bicycle tyres; tyres for aircraft Class 14: Bracelets (jewelry); watches; clocks; chain (jewelry); cases for jewels; cases (fitted) for watches; cases (fitted) for clocks; artificial jewellery; chronographs (watches); stopwatches; earrings; brooches (jewelry); trinkets (jewelry); badges of precious metal; tie pins; electronic alarm clocks; ring bands (jewelry); medals; ornaments of spangles of precious metal; presentation boxes for jewelry; jewelry boxes Class 16: Paper; paper cards (blank) for recording computer programmes; drawing sets; drawing paper; tissue paper; toilet paper; business cards; advertising materials of cardboard; advertising materials of paper; signs (stationery); paper stationery; notebook paper; notebook covers; drawing pads; booklets; calendars; posters of plastic film; printed matter; prints; books; cards; envelopes (stationery); notebooks; name cards; printed publications; booklets for instruction; computer instruction manual; music instruction manuals; comic books; journals; pictures; posters; bags (envelopes, pouches) of paper or plastics, for packaging; cardboard boxes; cartons of card for packaging; paper shredders for office use; office apparatus; pencil sharpeners; office staplers; staplers (office machines); folders (stationery); office articles (other than furniture); office stationery; India ink pens; India paper; Indian inks; writing articles; pens; pencils; painting pencils; writing brushes; adhesive tape for stationery purposes; plastic tape for stationery use; polyester tape for stationery use; sealing tape for stationery use; adhesive tape for household purposes; drawing instruments; drawing rulers; drawing boards; teaching materials (except apparatus); wall charts; printing sets, portable [office requisites] Class 18: Leather (unworked or semi-worked); fur; travel cases; backpacks; purses; handbags; travel bags; bags (envelopes, pouches) of leather, for packaging; luggage; rucksacks; sports bags; leather straps; umbrellas; umbrella handles; canes; alpenstocks; saddle belts; saddlery; collars for animals Class 20: Tables; office furniture; furniture; chairs; beds; flower-pot pedestals; flower-stands (furniture); shelves (furniture); benches; trolleys (furniture); baby walkers; furniture racks; non-metallic containers for transport purposes; non-metallic containers for storage purposes (other than household or kitchen use); non-metallic carrying boxes; toy boxes (furniture); plugs, not of metal; non-metallic cases for tools; non-metallic check valves (other than parts of machines); silvered glass (mirrors); frames for photographs; picture frame brackets; non-metallic brackets for hanging window draperies; non-metallic brackets used for fixing plaques; non-metallic shelf brackets; plastic spacer brackets; straw edgings; straw mattress; straw plaits; bamboo; tortoiseshell; showcases (furniture); show shelves; non-metal nameplates; non-metallic number plate digits; signboards of wood or plastics; doors for furniture; non-metallic clothes hangers; non-metallic hangers for shelves; non-metallic hangers for shelving; non-metallic furniture fittings; cushions; pillows; camping furniture; locks, not of metal, for vehicles; curtain rings; screws, not of metal; pegs (pins), not of metal Class 21: Basins (receptacles); trash cans; watering cans; plastic containers for holding metal cans; non-electric food mixers (for household purposes); cooking pot sets; tea filters; coffee filters not of paper being part of non-electric coffee makers; coffee filters, non-electric; non-electric deep fryers; chopsticks; gloves for domestic use; tea services (tableware); porcelain figures; ceramic figurines; tea cosies; tea filters; tea infusers; teapot stands; wine glasses; wine jugs; wine openers; wine strainers; wine tasters (siphons); coffee cosies; coffee filters, non-electric; coffee-pot stands; coffee services (tableware); coffee scoops; sprinklers; vases; clothes drying hangers; toiletry cases (fitted); electric toothbrushes; flower pots; combs; electric combs; hair brushes, toothpicks; toothpick holders; toughened glass (unworked or semi-worked), except for building; unworked or semi-worked glass (not for building); indoor terrariums for plants Class 25: Clothing; suits; trousers; jackets (clothing); coats; sweaters; T-shirts; underwear; swimming suits; waterproof clothing; cyclists' clothing; masquerade costumes; shoes; sports shoes; hats; cap (head wear); headbands; socks; leg warmers; gloves as clothing; scarves; neckties; belts (clothing); trouser straps; gaiter straps; chasubles; shower caps; sleep masks Class 28: Self-contained electronic game apparatus; video game apparatus; game cards; battery-operated computer game with LCD screen; game machines, automatic and coin-operated; toys; plush toys; toy cars; stuffed toys; chess games; draughts (games); articles of sports apparatus; children's playground apparatus; skis; leg guards adapted for playing sport; sporting articles for wear adapted for use in a specific sport (other than helmets); fishing apparatus Class 35: Advertising; advertising agency services; online advertising on a computer network; presentation of goods on communication media, for retail purposes; placing of advertisements; preparation of advertisements; cost analysis; business information agency services; business management and organization consultancy; market analysis; business evaluation services; business research; provision of business information; arranging exhibitions for commercial purposes; arranging exhibitions for advertising purposes; commercial information and advice for consumers (consumer advice shop); provision of assistance (business) in the establishment of franchises; administration of the business affairs of franchises; import and export agencies; on-line trading services in which seller posts products to be auctioned and bidding is done via the internet marketing; arranging and concluding commercial transactions for others; computer file management; data processing; compilation of information into computer databases; database management; data retrieval; accounting; account auditing; sponsorship search Class 38: Wireless broadcasting; television broadcasting; cable broadcasting and transmission; information transmission by telematic codes; information transmission by teletypewriters; information transmission services via digital networks; information transmission via electronic communications networks; telephone communications; communication by mobile telephone; communications by computer terminals; computer aided transmission of information and images; e-mail forwarding services; radio paging; telephone paging services; communication by electronic means; satellite transmission; electronic bulletin board services (telecommunication services); providing telecommunications connections to a global computer network; teleconferencing services; providing user access to a global computer network; chat room services (telecommunications services); providing access to databases; voice mail services; transmission of digital files; telecommunications routing and junction services; providing telecommunication channels for teleshopping services Class 42: Technical research; biotechnology research; research and development of new products for others; scientific research and development; scientific laboratory services; quality control; building and structural inspection services (engineering, quality assessment, and surveying services); calibration (measuring); measurement services; meteorological information; material testing; mechanical research; industrial design; packaging design; interior design; fashion design; computer rental; computer programming; computer software consultancy; updating of computer software; providing information, including online, about design and development of computer hardware and software; rental and maintenance of computer software; rental of computer hardware; rental of computers; recovery of computer data; development of computer system; advisory services relating to computer system analysis; computer systems integration services; computer systems design; copying of computer software; conversion of data or documents from physical to electronic media; creating and maintaining web sites for others; installation of computer software; rental of web servers; rental of a database server (to third parties); computer virus protection services; provision of Internet search engines; digitization of documents (scanning); monitoring of computer systems by remote access; product quality evaluation; quality control of goods; graphic art design
1950244	Class 9: Computers; mobile telephones; headphones; cameras; surveying apparatus and instruments; stereoscopes; chips [integrated circuits]; sensors; video screens; remote control apparatus; theft prevention installations, electric; chargers for electric batteries; wires, electric; pedometers; spectacles; computer software applications, downloadable; drive recorder; facsimile machines
1974081	Class 9: Downloadable mobile application; quantity indicators; cash registers; mechanisms for counter-operated apparatus; electronic tags for goods; apparatus for network communication; sound transmitting apparatus; cameras [photography]; chips [integrated circuits]; sensors; inductors [electricity]; face recognition equipment; theft prevention installations, electric. Class 35: On-line advertising on a computer network; business research; procurement services for others [purchasing goods and services for other businesses]; personnel recruitment; relocation services for businesses; updating and maintenance of data in computer databases; business auditing; advertising; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; rental of vending machines; rental of advertising time on communication media; presentation of goods on communication media, for retail purposes; television advertising. Class 36: Financing services; loans [financing]; instalment loans; providing financial information via a web site; insurance information; financial customs brokerage services; surety services; real estate agency services; trusteeship; lending against security.
2002471	Class 9: Notebook computers; pedometers; apparatus to check franking; cash registers; mechanisms for coin-operated apparatus; dictating machines; holograms; hemline markers; voting machines; electronic terminals for generating lottery tickets; face recognition device; photocopiers; electronic weight scale; dressmakers' measures; rescue laser signalling flares; smartphones; automobile data recorder; cameras [photography]; measuring instruments; inductors [electricity]; mirrors [optics]; materials for electricity mains [wires, cables]; wafers for integrated circuits; chips [integrated circuits]; rheostats; electrical adapters; video screens; electronic key fobs being remote control apparatus; optical fibers [light conducting filaments]; electric installations for the remote control of industrial operations; lightning conductors; ionization apparatus not for the treatment of air or water; fire extinguishing apparatus; radiology screens for industrial purposes; respirators for filtering air; intrusive alarm; 3D spectacles; mobile power (rechargeable battery); slides [photography]; mobile telephones. Class 42: Research and development of new products for others; quality control; surveying; cosmetic research; biological research; meteorological information; vehicle roadworthiness testing; industrial design; design of interior décor; dress designing; computer software design; authenticating works of art; graphic arts design; unlocking of mobile phones; design and development of mobile phone application software; mobile phone software update.
2005404	Class 9: smartphones, selfie sticks for cellphones, selfie lenses, selfie sticks [hand-held monopods] Class 11: Lamps; lights for vehicles; germicidal lamps for purifying air; curling lamps; acetylene flares; cooking apparatus and installations; lava rocks for use in barbecue grills; refrigerators; air purifying apparatus and machines; hair driers [dryers]; water heaters; stage fog machine; heating installations; watering installations, automatic; solar heaters for baths; filters for drinking water; radiators, electric; lighters; polymerisation installations; air cleaner; household air cleaner; portable electric fans; fans [air-conditioning]; household electric fans; LED lamps; air conditioners; air filters for air conditioning; portable headlight; household electric water purifier; water filtering apparatus; reading lamps; desk lamps; electric cooker; coffee percolators, electric; kettles, electric; household faucet filters; water purifying apparatus; household humidifier; coffee machines, electric; multicookers; ceiling lights; bathroom warmers; household electric kettle; bread toasters; microwave ovens [cooking apparatus]. Class 35: Relocation services for businesses.
2006829	Class 9: Internet router; security surveillance robots; spectacles; video screens; remote control apparatus; measuring instruments; sensors; chips [integrated circuits]; video projectors; animated cartoons; light dimmers [regulators], electric; quantity indicators; theft prevention installations, electric; batteries, electric. Class 38: Message sending; communications by computer terminals; computer aided transmission of messages and images; providing user access to global computer networks; providing access to databases; providing Internet chatrooms; providing online forums; video-on-demand transmission; paid television program broadcasting; television broadcasting. Class 41: Production of radio and television programmes; television entertainment; game services provided on-line from a computer network; production of videos; providing on-line electronic publications, not downloadable; teaching; arranging and conducting of congresses; providing television programmes via video-on-demand transmission (undownloadable); games equipment rental; videotapes publishing services.
2009796	Class 9: quantity indicators; measuring instruments; transducer; eyeglasses; video screens; computer peripheral devices; Global Positioning System [GPS] apparatus; electronic sounding device with books; animated cartoons; cameras [photography]; remote control apparatus; chips [integrated circuits]; theft prevention installations, electric; chargers for electric batteries; cash registers; currency recognition machine; photocopiers; scales with body mass analyzers; electronic scale for kitchen; signal lanterns; materials for electricity mains [wires, cables]; selfie sticks for use with smartphones; protection devices for personal use against accidents; slides [photography]; smartphones.
2009799	Class 9: Computer software applications, downloadable; quantity indicators; measuring instruments; transducer; eyeglasses; video screens; computer peripheral devices; Global Positioning System [GPS] apparatus; electronic sounding device with books; animated cartoons; cameras [photography]; remote control apparatus; chips [integrated circuits]; theft prevention installations, electric; chargers for electric batteries; cash registers; encryption computer software; computer operating software; operating management software for portable magnetic and electronic cards; downloadable mobile applications; currency recognition machine; photocopiers; scales with body mass analyzers; electronic scale for kitchen; signal lanterns; materials for electricity mains [wires, cables]; selfie sticks for use with smartphones; protection devices for personal use against accidents; slides [photography]; smartphones. Class 36: real estate agency services
2014177	Class 9: Computer peripheral devices; Global Positioning System [GPS] apparatus; electronic sounding device within books, namely, audio devices for audiobooks; animated cartoons; cameras [photography]; mouse pads; quantity indicators; measuring instruments; sensors; spectacles; video screens; remote control apparatus; chips [integrated circuits]; theft prevention installations, electric; chargers for electric batteries. Class 35: Advertising; commercial intermediation services; marketing; personnel management consultancy; relocation services for businesses; compilation of information into computer databases; accounting; rental of vending machines; sponsorship search; retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies. Class 36: Financing services; loans [financing]; instalment loans; providing financial information via a web site; insurance information; financial customs brokerage services; surety services; real estate agency services; trusteeship; pawnbrokerage.
2056966	Class 38: Wireless broadcasting; television broadcasting; providing telecommunications connections to a global computer network; communications by computer terminals; computer aided transmission of messages and images; providing user access to global computer networks; providing access to databases; streaming of data; providing online forums; video-on-demand transmission. Class 42: Research and development of new products for others; quality control; surveying; cosmetic research; biological research; meteorological information; vehicle roadworthiness testing; industrial design; design of interior décor; dress designing; authenticating works of art; graphic arts design; electronic data storage; evaluation of the design of products and services; monitoring of computer systems by remote access.
2057072	Class 9: Computer software applications, downloadable; computer software platforms, recorded or downloadable; pedometers; counterfeit coin detectors; dictating machines; holograms; electronic terminals for generating lottery tickets; face recognition equipment; phototelegraphy apparatus; electronic weighing scales; measures; digital signs; smartphones; wearable video display monitors; headphones; video projectors; measuring apparatus; optical lenses; materials for electricity mains [wires, cables]; semi-conductors; chips [integrated circuits]; rheostats; electric plugs; sensors; video screens; remote control apparatus; optical fibers [light conducting filaments]; heat regulating apparatus; electrolysers; fire extinguishing apparatus; X-ray apparatus not for medical purposes; protective helmets; theft prevention installations, electric; sunglasses; batteries, electric; animated cartoons; sports whistles. Class 35: Advertising; providing business information via a web site; provision of an online marketplace for buyers and sellers of goods and services; sales promotion for others; personnel management consultancy; relocation services for businesses; compilation of information into computer databases; accounting; retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies; sponsorship search. Class 36: Insurance consultancy; electronic funds transfer; providing financial information via a web site; jewellery appraisal; real estate evaluation and appraisal; financial customs brokerage services; surety services; charitable fund raising; trusteeship; lending against security. Class 38: Wireless broadcasting; television broadcasting; providing telecommunications connections to a global computer network; communications by computer terminals; computer aided transmission of messages and images; providing user access to global computer networks; providing access to databases; streaming of data; providing online forums; video-on-demand transmission. Class 42: Research and development of new products for others; quality control; surveying; cosmetic research; biological research; meteorological information; vehicle roadworthiness testing; industrial design; design of interior decor; dress designing; computer software design; authenticating works of art; graphic arts design; electronic data storage; cloud computing; design and development of virtual reality software; evaluation of intangible assets; development of computer platforms; platform as a service [PaaS]; monitoring of computer systems by remote access.
2058710	Class 9: Computer software, recorded; computer peripheral devices; mobile software applications, downloadable; pedometers; apparatus to check franking; automated teller machines [ATM]; mechanisms for coin-operated apparatus; dictating machines; holograms; hemline markers; voting machines; electronic terminals for generating lottery tickets; face recognition equipment; phototelegraphy apparatus; scales for weighting, electric; measures; digital signs; mobile telephones; wearable video display monitors; headphones; video projectors; measuring apparatus; sports whistles; egg-candlers; dog whistles; decorative magnets; electrified fences; electronic collars to train animals; magnetic sticker used on refrigerator; portable remote control for stopping car; optical lenses; materials for electricity mains [wires, cables]; semi-conductors; chips [integrated circuits]; rheostats; electric plugs; sensors; video screens; remote control apparatus; optical fibres [light conducting filaments]; heat regulating apparatus; lightning conductors; electrolysers; fire extinguishing apparatus; X-ray apparatus not for medical purposes; protective helmets; theft prevention installations, electric; sunglasses; batteries, electric; animated cartoons. Class 42: Cloud seeding; handwriting analysis [graphology]; cartography services; evaluation of the design of products and services; quality control services for certifying product quality, namely, weighting of goods for others; providing scenery design services for theater company; graphic design of promotional materials; nautical charts updating service; graphic design; research and development of new products for others; quality control; surveying; cosmetic research; biological research; meteorological information; vehicle roadworthiness testing; industrial design; design of interior decor; dress designing; computer software design; computer system design; updating of computer software; maintenance of computer software; authenticating works of art; graphic arts design.
2063853	Class 9: Notebook computers; Computers; Computer programs, recorded; Computer programs, downloadable; Computer software, recorded; Electronic publications, downloadable; Recorded computer game programs; Ink cartridges, unfilled, for printers and photocopiers; Downloadable image files; Humanoid robots with artificial intelligence; Wearable computers; Computer software platforms, recorded or downloadable; Downloadable graphics for mobile phones; Computer peripheral devices; Interactive touch screen terminals; Computer screen saver software, recorded or downloadable; Encoded electronic identification bracelets; Wearable smart devices in the form of a wrist watch for calculating, monitoring, recording or displaying in real-time, physical activity levels, physical inactivity periods, steps walked or ran, distances covered in exercise, calories burned, quality of rest and sleep patterns, exercise levels achieved compared with exercise level goals, which can be synchronized with smart phones, tablets, notepads and other electronic mobile digital devices; watches incorporating a GPS; watches incorporating software and display screen for viewing, sending and receiving texts, emails, data and information; Tablet computers; Encoded identification bracelets, magnetic; Mouse pads; Mouse[computer peripheral]; Photo printers; Bags adapted for laptops; Electronic card readers; Computer keyboards; USB flash drives; Application software for cellular phones, downloadable; Ink jet printers; Smartwatches (data processing); Downloadable ring tones for mobile phones; Smartglasses (data processing); Electronic pocket translators; Pedometers; Apparatus to check franking; Cash registers; Mechanisms for coin-operated apparatus; Dictating machines; Holograms; Hemline markers; Voting machines; Lottery machine; Facial recognition device; Photocopiers[photographic, electrostatic, thermic]; Bathroom scales; Body fat scale for household purposes; Measures; Electronic notice boards; Selfie sticks for mobile phone; Cell phone holders; Smartphones in the shape of a watch; Intercoms; Electronic navigational and positioning apparatus and instruments; Cellular phones; Mobile phone holders for vehicles; Telecommunication apparatus in the form of jewellery; Cases for cellular phones; Covers for cellular phones; Cell phone straps; Protective films adapted for cellular phones; Network routers; SIM cards; Cabinets for loudspeakers; Video monitors; Virtual reality headsets; Portable media players; Audio-and video-receivers; Wearable video display monitors; Headsets; Camcorders; Rearview cameras for vehicles; Driving recorder; Touch screen pens; Teaching robots; Story machines for teaching and entertainment, comprising computers with sound reproduction and voice recognition; Software for such machines; Teaching apparatus; Teaching machines; Interactive education software; Computer apparatus for educational use; Speaking machines; Talking machines; Machines for communication; Voice transmission apparatus; MP3 players; Television apparatus; Sound recording apparatus; Set-top boxes; Digital photo frames; Selfie-sticks [hand-held monopods]; Cameras [photography]; Connected bracelets [measuring instruments]; Audiovisual teaching apparatus; Teaching robots; Air analysis apparatus; Thermometers, not for medical purposes; Hygrometers; Optical apparatus and instruments; USB cables; Materials for electricity mains [wires, cables]; Semi-conductors; Conductors, electric; Electric sockets; Sensors; Temperature sensors; Switches, electric; Power adapters; Electrical adapters; Change-over switches for telecommunication apparatus; Remote control apparatus; Remote controls for household purposes; Optical fibers [light conducting filaments]; Heat regulating apparatus; Lightning rods; Electrolysers; Fire extinguishing apparatus; Radiological apparatus for industrial purposes; Protection devices for personal use against accidents; Protective masks; Protective helmets; Goggles; Theft prevention installations, electric; Alarms; Biometric fingerprint door locks; Electric door bells; Eyeglasses; Sunglasses; Batteries, electric; Chargers for electric batteries; Power bank [rechargeable batteries]; Wireless charger; Animated cartoons; Egg-candlers; Dog whistles; Decorative magnets; Electrified fences; Electronic collars to train animals; Portable remote controls for operating roadblock apparatus; Portable remote controls for operating road humps for slowing traffic; Electronic watchbands for heath monitoring that communicate real-time data to other electronic devices; Wearable communications apparatus; Wearable digital electronic devices capable of providing access to the internet; Wearable smart devices; Personal digital assistants in the shape of a watch; Wearable activity trackers; Refrigerator magnet; Measuring instruments; Measuring devices, electric; Electronic chips; Multimedia projectors; Weighing apparatus and instruments; Counters; Computer hardware; Downloadable music files; Peepholes for doors; Video screens; Simulators for the steering and control of vehicles; Automatic indicators of low pressure in vehicle tires; Stands for photographic apparatus; Bicycle helmets; Automated teller machines [ATM].

Annexure B

IRDA/Registration Number	Mark
1579755
1585068
1642214	Redmi
1650208	WM-FORM[52]
1658085	MI BOX
1801037
1827514
1839239	MIHOME
1881209
1903841
1925566
2039710

[52] The number of this trade mark is incorrect. The trade mark was correctly identified in the SGP as 1650209 MI WIFI.