Yantai Jereh Oldfield Services Group Co Ltd v Pioneer Petroleum Technology Development Company Limited

[2015] ATMO 22

TRADE MARKS ACT 1995

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

Re:Opposition by Yantai Jereh Oldfield Services Group Co Ltd to Australian Trade Mark Application 1527676 jereh (Stylised) in the name of Pioneer Petroleum Technology Development Company Limited

Delegate:

Michael Kirov

Representation:

Opponent: Joseph Kwok of McMahon & Gordon
Applicant: No appearance and no written submissions

Decision:

2015 ATMO 22

Section 52 opposition – ground pursuant to s 58 established - application refused

Background

1. This is an opposition brought by Yantai Jereh Oldfield Services Group Co Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Pioneer Petroleum Technology Development Company Limited (“the Applicant”):

Application Number:             1527676

Trade Mark:                   (“the Opposed Mark”)

Priority Date:    23 November 2012                (“the Priority Date”)

Goods:Class 5: Drilling machines; Drilling rigs, floating or non-floating; Oil refining machines; Elevating apparatus; Injectors for engines; Pumps; Valves,parts of machines; Compressors; Superchargers; Regulators ,parts of machines; Machines and devices for geoexploration, mining and beneficiation; Machines and devices for oil exploration and oil refining industry; Devices (machines) for producing petrochemicals; Sludge pump for oil spills; Well-washing machines; Drifting Machines for oil exploration; Oil-well pump; Beach working machine, being on shore machinery for oil exploration and extraction

(“the Claimed Goods”)

1. The Opponent filed both a Notice of Intention to Oppose and a Statement of Grounds and Particulars (“SGP”) on 24 September 2013.  Although the Applicant filed a formal Notice of Intention to Defend on 11 November 2013, IP Australia has not heard from it since.  Accordingly, the sole evidence in the proceedings is that of the Opponent, being a declaration made on 13 February 2014 by Wei Jie Sun, the Opponent’s General Manager, with Annexures JM-1 to JM-17.

2. As Mr Sun explains,

   4. The Opponent is a public listed company first registered in China on 10 December 1999 and the company registration number is 370613228004625.

   5. The Opponent has an estimated capital of over 6 Billion RMB (AUD 1 Billion), R&D centers, marketing center, sales and service center [sic] all over the world including Australia, USA.

3. Mr Sun goes on to exhibit documents confirming that the Opponent first applied to register the trade mark JEREH (“the JEREH word mark”) in China in 2003 for Class 7 goods essentially the same as the Claimed Goods.  The evidence shows that on or about 13 October 2011 the Opponent had a logo designed (“the Logo”) to which the Opposed Mark is identical and that on 20 October 2011 the Opponent applied to register the Logo in China for the same kind of Class 7 goods as its earlier Chinese registration.

4. I am satisfied based on Mr Sun’s declaration and the supporting material contained in its accompanying exhibits that since well before the Priority Date the Opponent has advertised, exhibited and sold its relevant Class 7 goods bearing both the JEREH word mark and the Logo (being, as mentioned, identical to the Opposed Mark) in Australia.

5. There is no information before me concerning the Applicant, other than the fact that it is a company apparently registered in the British Virgin Islands.  I understand that prior to commencing these proceedings the Applicant was unknown to the Opponent.

6. Underpinning the Opponent’s principal grounds in the present opposition, then, are its claim to ownership of the Opposed Mark in relation to the Claimed Goods, its claim that deception and confusion in the relevant Australian market is likely and its claim to copyright in the Logo itself.

7. I heard the matter as a delegate of the Registrar of Trade Marks on 10 February 2015 in Sydney.  Joseph Kwok of McMahon & Gordon appeared for the Opponent, with his oral submissions supplemented by written submissions.  There was no appearance by the Applicant, nor did it file any written submissions or respond to my invitation to do so, emailed to its nominated representative in Australia on 13 January 2015.

Grounds of Opposition, Onus and Standard of Proof

1. The Opponent’s SGP raised six grounds of opposition corresponding to ss 42(b), 43, 58, 59, 60 and 62A of the Act and, to succeed, the Opponent bears the onus of establishing at least one of these grounds. I have only found it necessary to address the Opponent’s s 58 ground in this decision and this is discussed below. Of course should the decision be appealed, it would always remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court. In this regard I note the Opponent’s evidence is on the face of it sufficient to establish, in addition, at least its s 42(b) ground (based on breach of the Copyright Act 1968) but I confirm that for the sake of expediency I have not discussed this ground further here.

2. I proceed on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities[1] and that, as indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd,[2] the relevant date at which the rights of the parties are to be determined is the Priority Date.

Discussion

[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].

[2] (1954) 91 CLR 592 at 595.

Section58

1. The ground based on section 58 is indicated and particularized in the SGP as follows:

   Applicant not the owner of the [Opposed Mark] – Section 58

   [The Opponent] is the owner of a number of trade mark[s] bearing the word “Jereh” in China in relation to class 7 goods and services [sic], such as Mineworking machines, Machines and devices for oil exploration and oil refining industry [sic]; Apparatus for use in mining; Mining machines; Tools for mining machines…etc.

   During the period 23-25 of February 2011, [The Opponent] was one of the exhibitor[s] in the Australian Oil and Gas Exhibitions and Conference (“AOG Expo”) which currently has recorded around 500 exhibitors from over 20 countries in one event.

   Around 13 October 2011, [The Opponent] had a new logo  [“the Opposed Mark”] designed in China.

   On 20 October 2011, [The Opponent] lodged a trade mark application in China for [the Opposed Mark] in relation to class 7 goods and services [sic], such as machines and tools for the mining…etc [sic].

   From 18 November 2011, [The Opponent] has adopted [the Opposed Mark] and announced the use of [the Opposed Mark] to the public.

   From 17 January 2012, [The Opponent] started advertising their products, such as machines and tools for mining, un[d]er [the Opposed Mark].  This included advertisements in a few issues of the Oil and Gas Journal.  The Oil and Gas Journal has a sale office in Unit 15, 3 Benjamin Way Rockingham, Western Australia 6178.

   From 26 June 2012, [The Opponent] started exporting their products, such as machines and tools for mining, bearing [the Opposed Mark] from China into Australia.

   On 28 December 2012, [the Opposed Mark] was registered in China.  The Chinese Trade Mark Registration Number is 10085985.

   The products bearing [the Opposed Mark] from [The Opponent] have been used in public.

   On 23 November 2013 [sic],[3] [the Applicant] filed a trade mark application for [the Opposed Mark] in Australia.  The Australian Trade Mark Application Number is 1527676.

   [3] As indicated in paragraph 1, opposed application 1527676 was in fact filed on 23 November 2012.

2. Section 58 of the Act is reproduced below:

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

3. The applicable law regarding ownership of a trade mark in Australia is well known.  As I put it in L.T. Overseas Limited v Chemico Pty Ltd [2008] ATMO 44 at [18]:

   The word “owner” is not defined in the Act, although there are numerous decisions where courts have considered its meaning. It is well established that in the absence of fraud the owner of a trade mark in Australia for particular goods is taken to be the first person to use it in the course of trade in Australia in relation to those goods[4] (or in relation to goods considered to be “the same kind of thing”).[5]

   [4] Seven Up Co v OT Ltd (1947) 75 CLR 203.

   [5] Re Hicks’ Trade Mark (1897) 22 VLR 636.

4. In the absence of any use in Australia, the first person to apply to register the trade mark for relevant goods is entitled to claim to be the owner.[6]

   [6] Shell Co (Aust) Ltd v Rohm and Haas Co (1949) 78 CLR 601, per Dixon J at 627-628.

5. There is no evidence before me that the Applicant has ever used the Opposed Mark for any goods or services.  Accordingly, the earliest date at which the Applicant’s claim to ownership can be assessed is the Priority Date, 23 November 2012.

6. As indicated earlier I am satisfied based on Mr Sun’s declaration and the supporting material contained in its accompanying annexures that the Opponent used both the JEREH word mark and the Logo (being, as mentioned, identical to the Opposed Mark) in Australia for goods in Class 7 the same as, or the same kind of thing as, the Claimed Goods and that this use took place before the Priority Date.  By way of example:

• Annexure JM-8 is a copy from Hansard of 24 November 2004 of a Ministerial Statement by then Queensland Premier and Minister for Trade, Peter Beattie, granting leave “for a major agency agreement signed between [the Opponent and the] Anderson Group of Companies of Mackay, Queensland;

• Annexure JM-10 is a copy of an “Exhibition Contract” between the Opponent and the organizer of “The Australasian Oil & Gas Exhibition & Conference” (“AOG Expo”), which was held in Perth between 23 and 25 February 2011;

• Annexure JM-11 exhibits photographs of the Opponent’s stand at the AOG Expo showing prominent use of the JEREH word mark in relation to mining and oil extraction equipment;

• Annexure JM-14 exhibits the front covers and relevant internal pages from the publication Oil & Gas Journal (published in the United States, but distributed in Australia) dated in March, June, September, October and November 2012,which contain the Opponent’s advertisements for a wide range of Class 7 goods under the headings, inter alia, “Oilfield Equipment” and “Exploration & Production Equipment” (being on the face of it goods the same as, or the same kind of thing as, the Claimed Goods) bearing the Opposed Mark; and

• Annexure JM-17 is a copy of a letter dated 3 September 2013 on the letter head of an Australian company named Superior Energy Services (Australia) Ltd (ACN 058 140 837) bearing the title “Certification Letter” and which includes in the body of its text several pictures of large items of “pumping equipment” prominently bearing the Opposed Mark.  In the letter Douglas Marques, “Country Manager” of the Australian company, says:

  We purchased the brand “Jereh” [pumping equipment] from [the Opponent] since October 2011.  The total value of contracts/POs amounts to 3,239,200 US Dollars.

  …

  This letter has been issued to certify the use of [the Opponent’s] “Jereh” trademark in Australia.

1. I am accordingly satisfied that the Opponent and not the Applicant is the owner of the Opposed Mark in Australia in respect of the Claimed Goods and the Opponent has established its ground of opposition under s 58.

Decision

1. Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:

   …the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or

   (b) to register the trade mark (with or without conditions or limitations) in

   respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the

   application was opposed has been established.

   Note: For limitations see section 6.

2. I have found the opposition to be successful on the ground raised pursuant to s 58 of the Act. Therefore, subject to any appeal from my decision, I refuse to register trade mark application number 1527676.

Costs

1. In the event of success Mr Kwok sought an award of costs in the Opponent’s favour.  As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.

Michael Kirov
Hearing Officer
Trade Marks Hearings
26 February 2015