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Xiaomi Inc v Enhui Chen

Xiaomi Inc v Enhui Chen

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Case Copied 14 May 2024 63 min read

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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,…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2024] ATMO 85
Decision Date: 14 May 2024

CaseChat Overview and Summary

In the matter of an opposition proceeding before the Australian Trade Marks Office, Xiaomi Inc. opposed the registration of a trade mark sought by Enhui Chen. The opposition was brought under section 52 of the *Trade Marks Act 1995* (Cth), with grounds pursued under sections 42(b), 44, 58, and 60 of the Act.

The primary legal issues before the hearing officer were whether the opponent, Xiaomi Inc., had established any of the grounds of opposition relied upon, specifically concerning the potential for deception or confusion, the similarity of the marks and goods, and whether the applicant had a legitimate intention to use the mark or had used it in good faith.

The hearing officer found that Xiaomi Inc. had failed to establish any of the grounds of opposition. The evidence did not demonstrate that the registration of Enhui Chen's trade mark would be likely to deceive or cause confusion, nor were the grounds relating to similarity of goods or the applicant's intention or good faith use of the mark made out. Consequently, the opposition was dismissed.

As no grounds of opposition were established, the hearing officer ordered that the trade mark proceed to registration.

Orders