Yun yun AI Baby camera Co Ltd v Sim2 Multimedia S.P.A
[2023] ATMO 1
•4 January 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Sim2 Multimedia S.P.A to application under reg 17A.48C of the Trade Marks Regulations 1995 (Cth) by Yun yun AI Baby camera Co Ltd for cessation of protection of Protected International Trade Mark number 1609772 (International Registration number 1194106) (classes 9 and 11) - CUBO - in the name of SIM2 Multimedia S.P.A.
Delegate: Benjamin Goldsworthy Representation: Opponent: Griffith Hack
Applicant: Pipers Intellectual PropertyDecision: 2023 ATMO 1
Trade Marks Act 1995 (Cth) – application under reg 17A.48C of the Trade Marks Regulations 1995 (Cth) for cessation of protection for goods in class 9 – no evidence of use of the trade mark – exercise of Registrar’s discretion not appropriate – protection of trade mark to cease in respect of class 9Background
This matter concerns an application (‘Removal Application’) under reg 17A.48C of the Trade Marks Regulations 1995 (Cth)[1] for cessation of protection for non-use of the following protected international trade mark (‘IRDA’) 1609772 for CUBO (‘Trade Mark’) in the name of SIM2 MULTIMEDIA S.P.A (‘Removal Opponent’). Other relevant details of the Trade Mark follow:
Priority Date (Convention): 18 October 2013
Filing Date: 30 October 2013
Specification: Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; computer software; fire-extinguishing apparatus
Class 11: Apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating
[1] All references in this decision to sections are to sections in the Trade Marks Act 1995 (Cth) (‘Act’) and all references to regulations are to regulations in the Trade Mark Regulations 1995 (Cth) (‘Regulations’).
On 18 March 2021 Yun yun AI Baby camera Co Ltd (‘Removal Applicant’) filed the Removal Application with this office. It seeks cessation of protection for non-use of the Trade Mark for all of the goods in class 9.
The Removal Application was advertised for opposition purposes on 19 March 2021. The Removal Opponent filed a notice of intention to oppose on 13 May 2021 and a statement of grounds and particulars (‘SGP’) on 8 June 2021.
The Removal Applicant filed a notice of intention to defend the Removal Application on 10 August 2021. The Removal Opponent filed evidence in support (‘EIS’) of its opposition on 15 November 2021. The Removal Applicant did not file evidence in answer.
Both parties requested to be heard via written submissions and a nominal hearing date was scheduled for 29 August 2022. The Removal Opponent provided written submissions on 12 August 2022 and the Removal Applicant filed its written submissions on 22 August 2022. The matter was later allocated to me to decide in my capacity as a delegate of the Registrar of Trade Marks.
Evidence
The Removal Opponent provided a single declaration in evidence which was dated 8 November 2021 and made by Maurizio Cini (‘Cini Declaration’). The Cini Declaration describes Mr Cini as the ‘Sole Administrator of the [Removal] Opponent’.[2] The declaration also provides a brief history of the Removal Opponent and two annexures being, copies of invoices dated 2019-2020 (‘Annexure 1’) and screen captures of websites (‘Annexure 2’).
[2] Cini Declaration [1].
The declaration and evidence of the Removal Opponent contains nothing directed to the corporate structure of the Removal Opponent and any related entities, other than a statement that business is conducted via ‘sister companies’.[3]
[3] Cini Declaration, [6].
The Cini Declaration mentions a ‘distributor’ business named ‘Living Edge’ without any further specific details about that relationship other than Living Edge being responsible for the advertising and promotion of certain goods offered under the Trade Mark in Australia.[4] Living Edge appears to operate showrooms across various Australian capital cities.[5]
[4] Cini Declaration, [17].
[5] Cini Declaration, [18].
The two annexures to the declaration concern potential use of the Trade Mark. Annexure 1 is a series of partly bilingual and partly untranslated invoices, mostly in Italian but with some English.[6] The invoices are from SIM2 BV International S.R.L to Living Edge (Aust) Pty Ltd. Annexure 2 is a series of screen captures from the websites ‘livingedge.com.au’ (‘Living Edge website’) and ‘mondopiero.com.au’. Some screen captures are dated 9 November 2021, the remainder are undated. The screen captures show radios bearing the words ‘radio.cubo’ worked into its handle.
[6] Usually, it will be a requirement that a document be filed as a document that is a translation of the original document into English and meet various other requirements. See reg 21.2. I have not raised an issue with these being untranslated as the product code and description ‘radio’ provides sufficient information to engage with the evidence.
Preliminary issue
The Removal Opponent in its submissions has attempted to more directly link the invoices (which do not actually contain the word ‘CUBO’) in Annexure 1 of the Cini Declaration to the use of the Trade Mark shown in the screen captures of the Living Edge website in Annexure 2 of the Cini Declaration.
In response, the Removal Applicant has asserted that this constitutes evidence filed out of time and should not be considered by me.[7] It is unnecessary to decide this question because the screen captures in the Cini Declaration display, clearly, at the bottom of the page, a URL. The URL contains prominently the same product code as that shown on the invoices. Accordingly, there is a reasonably clear link between goods referred to in the invoices and the pictures of the radio on the Living Edge website. Therefore, I need not rely on any evidence out of time, to the extent it is such, to make findings that link the goods likely sold under the invoices.
[7] Applicant’s Submissions, [20]-[21].
The relevant statutory provisions
Part 9 of the Act deals with removal of trade marks from the Register due to non-use. Part 9 is applicable to the IRDA by way of reg 17A.48D.[8] The Removal Applicant has applied for cessation of protection of the Trade Mark with respect to the ground under s 92(4)(b).
[8] Part 9 of the Act, including s 92, is applicable to a protected international trade mark by s 189A of the Act and reg 17A.48D of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
Section 92(4)(b) is reproduced below:
92 Application for removal of trade mark from Register etc.
(4) An application under subsection [non-use application] may be made on either or both of the following grounds, and on no other grounds:
…
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:
(i)used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Sufficient time has passed for s 92(4)(b) to be alleged.[9] In this matter, the Removal Applicant alleges that the Removal Opponent did not use the Trade Mark in Australia in relation to the class 9 goods at any time in the three-year period ending on 18 February 2021 (‘Relevant Period’).
[9] The application registration of the trade mark was filed on 30 October 2013, prior to 23 February 2019. This is relevant for calculation of the period which must pass before a non-use application may be filed. The predecessor section in s 93 will apply: see, Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth), Sch 1, Pt 3, s 46. In particular, ‘[a]n application on the ground referred to in paragraph 92(4)(b) may not be made before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark.’ Five years have passed from the filing date in respect of the application for registration of the trade mark.
The allegation of non-use is one which the Removal Opponent must rebut.[10] Any findings of fact are based on the civil standard of the balance of probabilities.[11] The allegation can be rebutted by establishing that the Removal Opponent, or an authorised user:
·used the Trade Mark ‘as a trade mark’ in Australia during the Relevant Period in relation to the class 9 goods;[12] or
·did not use the Trade Mark in relation to the class 9 goods because of circumstances that were an obstacle to use of the Trade Mark during the Relevant Period.[13]
[10] Trade Marks Act 1995 (Cth) s 100(1)(c).
[11] Pfizer Products Inc v Karam [2006] FCA 1663 (Gyles J).
[12] Trade Marks Act 1995 (Cth) s 100(3)(a).
[13] Ibid, s 100(3)(c).
A single bona fide use during the Relevant Period is sufficient for the Removal Opponent to discharge its onus,[14] although if only a single use it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[15]
[14] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).
[15] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).
In accordance with s 101, if the requisite use is not established, I may decide to remove the Trade Mark from the Register in respect of the class 9 goods, or if satisfied it is reasonable to do so, decide not the remove the Trade Mark from the Register.
Discussion
To rebut the allegation of non-use the Removal Opponent submits that it, or an authorised user, has used the Trade Mark in Australia during the Relevant Period in relation to the class 9 goods.
‘Use’ in relation to the goods and in the Relevant Period?
19. The invoices, which are dated within the Relevant Period, refer to sales of products by a product number. That same product number appears in the URL of the Living Edge website. The screen captures from the Living Edge website show the text ‘radio.cubo’ applied to a radio. It is also clear that the image appearing in the Cini Declaration is a radio similar to those in images shown on the Living Edge website. There is additionally a declaratory statement concerning total sales figures in Australia for a number of years.[16] Radios form some of the class 9 goods, specifically ‘[a]pparatus for […] transmission or reproduction of sound’.[17] Considering all of this together, I am satisfied that ‘radio.cubo’ was used during the Relevant Period in Australia in respect of radios, thus, apparatus for transmission or reproduction of sound.
Was the use of the Trade Mark without additions or alterations which substantially affect the identity of the Trade Mark?
[16] Cini Declaration, [15].
[17] Sections 7(4) and 9(a).
The Applicant has asserted that even if there is use demonstrated by the evidence, that use was not of the Trade Mark as registered.[18]
[18] Removal Applicant’s Submissions [26]-[36].
Section 7(1) provides:
If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
For the reasons below, I am satisfied that use of ‘radio.cubo’ is use of the Trade Mark with additions or alterations which do not substantially affect the identity of the Trade Mark. In order to find that such additions or alterations do not substantially affect the identity of the Trade Mark, ‘it is necessary to find that a total impression of similarity emerges from a comparison between the two marks’.[19] I must compare the trade marks side by side, note the similarities and differences and assess the importance of these having regard to the essential features of the trade marks.[20]
[19] Optical 88 Limited v Optical 88 Pty Limited (No 2) (Includes Corrigendum dated 26 May 2011) [2010] FCA 1380 (‘Optical 88 (No 2)’) (Yates J), citing Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [61] (Gummow J) and Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407; [1963] HCA 66 (‘Shell’), 414 [12] (Windeyer J).
[20] Shell, 414 [12] (Windeyer J).
The additional matter of the descriptive word ‘radio’ and a full stop contribute little of the total impression of the Trade Mark. The word ‘radio’ is wholly descriptive of the same good pictured in the evidence of use and claimed by Removal Opponent when they claim, ‘Apparatus for […] transmission or reproduction of sound’. The essential feature here is the word ‘cubo’. The difference is a relatively unimportant contribution to the overall impression conveyed in a side by side comparison of the two marks.[21] From the comparison there is the emergence of a total impression of resemblance. The Applicant has pointed to the word ‘cubo’ as meaning ‘cube’ in Italian, and asserts this refers to the shape of the goods and makes the word descriptive. I do not agree. The word ‘cubo’ is not likely to carry a descriptive meaning or impression to the relevant ordinary consumers in Australia, who do not speak Italian.[22] Cubo provides the dominant cognitive cue for each. With these differences noted and considering the essential features, I am satisfied that the uses evidenced are uses of the Trade Mark without additions or alterations which substantially affect the identity of the Trade Mark.
[21] Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6, [130] (Nicholas, Yates and Beach JJ).
[22] See Cantarella, where Italian was noted as the second most common language in Australia.
Was the use by the Removal Opponent or an authorised user?
For the use mentioned above to be relevant it must have been a use by the Removal Opponent, or an authorised user.[23] The Removal Opponent bears the onus to show that such use was an authorised use.[24]
[23] Sections 100(2)(c) and 7(3). See also, Note 1 to s 100(2).
[24] Section 100.
Section 8 provides:
(1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.
(2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.
(3) If the owner of a trade mark exercises quality control over goods or services:
(a) dealt with or provided in the course of trade by another person; and
(b) in relation to which the trade mark is used;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(4) If:
(a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
(b) the owner of the trade mark exercises financial control over the other person’s relevant trading activities;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).
Use of the Trade Mark will only be taken to be use by an authorised user if the Removal Opponent is shown to have exercised control over the other person’s use of the trade mark during the period in question so as to maintain a connection in the course of trade between the goods and the Removal Opponent.[25]
[25] Lodestar Anstalt v Campari America LLC [2016] FCAFC 92 (‘Lodestar’), [183] (Katzmann J).
This will be a question of fact and degree.[26] Control by the Removal Opponent for present purposes can be the exercise of quality control, financial control or some other relevant form of control over use of the Trade Mark.[27]
[26] Lodestar, [98] (Besanko J).
[27] Lodestar, [3], [184]-[185] (Besanko J).
The development of the law around authorised use has been discussed before.[28] For current purposes, the most relevant aspect relates to where a unity of purpose and common directorship can, in certain circumstances, be sufficient to establish control.[29] However, evidence of that common directorship, indicative of such unity is required.
[28] Star Television Productions Limited v Star Entertainment Group Limited [2019] ATMO 163 (‘Star Television’), [18].
[29] Trident Seafoods Corp v Trident Foods P/L [2019] FCAFC 100 (‘Trident’) (Reeves, Jagot and Rangiah JJ).
Parties in proceedings before the Registrar have at times been haunted in their efforts to demonstrate authorised use, even where perhaps that use has occurred in ways not demonstrated in the evidence. Lapses in this aspect of evidence are common before this office.[30] This appears to be another such instance.
[30] Scott-Dibben Pty Limited v Canterbury District Health Board [2016] ATMO 3 (‘Scott-Dibben’), [45], where evidence existed of specific activity by the opponent or an alleged licensee. In Grocery Industries Australia Pty Ltd v Sharmas Kitchen Pty Ltd [2021] ATMO 100, there were ‘significant deficiencies’ in the evidence. There also, the relationship between the registered owner and a related entity and user of the trade mark was not explained. Intellectual Property Development Corporation Pty Ltd v Malina Schinder and Adrian Schindler [2016] ATMO 10 (see, [44]), concerned the issue of discretion where the Hearing Officer referred to the relevant corporate structure and the need for the Opponent to demonstrate that they should be treated as a whole. In Mayfair Finance Group Pty Ltd v Leowalt Pty Ltd [2020] ATMO 88 (see [25]), the Opponent, aside from a general assertion provided no evidence establishing the relevant relationship between it and the related entity using the mark. In the absence of such evidence the Hearing Officer was unable to find that the use of the trade mark by that entity was the use of the Opponent. Star Television (see [19]), concerned a bare statement from an officer of the Opponent that ownership was in common. whilst a license was likely, the terms of the license were not evidenced. There was no reasonable way that the Hearing Officer could infer a license and its terms from the evidence. See also, Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100 (Jacobson J) for judicial treatment.
I have dealt with each of the potential authorised users below. In deciding these issues, I am conscious of what was said in Food Channel Network Pty Ltd v Television Food Network GP, where there were informal arrangements in place between companies controlled by a single individual. In deciding the issue of ownership, there the Full Court cautioned:
The courts should be cautious to allow the legal fiction of the corporate veil to defeat registration in a case where one of a group of companies, all controlled by the same directing mind and will, used the mark prior to the other.[31]
Authorised use by SIM2 BV International SRL?
[31] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [61] (Keane CJ, Stone and Jagot JJ), subsequently referred to by Hearing Officers in Scott-Dibben, Calico Global Pty Ltd v Calico LLC [2016] ATMO 86, [55] and Silly Sollys Group Pty Ltd v cc group investments pty ltd [2021] ATMO 79.
The invoice originator named on the invoices is SIM2 BV International SRL (‘Other Entity’). I note that the invoices contain the term ‘SIM2 Multimedia’. However, below that is the name of the Other Entity. In the context of the invoices, this appears to be short form reference to the Other Entity.
Considering all of the material before me, it appears that the Other Entity is not the same entity as the Removal Opponent; as much is indicated by differences in name and corporate suffix.[32] Different entities have separate legal personalities and the actions of one entity, its members or officers will not necessarily be the actions of the other.[33] The use by the Other Entity evidenced in the invoices is not directly use by the Removal Opponent itself. Therefore, the discussion must shift to whether any of the uses are an ‘authorised use’.
[32] The abbreviated corporate suffixes in the respective names, ‘SpA’ (‘società per azioni’) and ‘SRL’ (‘società a responsabilità limitata’), appear to represent different types of Italian legal entities.
[33] Lodestar, [97] (Besanko J). See also, Industrial Equity Ltd v Blackburn (1977) 137 CLR 567; [1977] HCA 59, 557, [22]-[23] (Mason J, with Aitken, Jacobs, Murphy and Stephen JJ agreeing) and Salomon v A Salomon & Co Ltd [1896] UKHL 1; [1897] AC 22.
The Removal Opponent has provided no specific evidence concerning the relationship between the Other Entity and the Removal Opponent. There are broad statements in the evidence that the Removal Opponent’s business is conducted via ‘sister companies’ and some mention of the trade marks used in relation to its activities.[34] Such statements do not rise above mere assertion. There is no specific detail about the legal relationship, if any, between these two companies, which individuals are their owners or their directors, or what exactly is meant by the words ‘sister companies’. I cannot infer that these words mean that there is common directorship or ownership. There is a bare statement in the Cini Declaration that Mr Cini is ‘Sole Administrator’[35] of the Removal Opponent but this is of no assistance in determining who controls the Other Entity. The evidence provides nothing on which I might have looked for a unity of purpose shared by these two entities. It follows that, absent evidence of any relationship between these entities, I cannot find that there was quality, financial or other relevant control over this apparent use of the Trade Mark by the Other Entity.
Authorised use by Living Edge?
[34] Cini Declaration, [6]. See also Removal Opponent’s Submissions, [20] and [31(c)].
[35] Cini Declaration, [1].
Similar considerations to those concerning the Other Entity apply for the analysis of any use by Living Edge. The Removal Opponent has declared that the ‘distributor’ in Australia, a business called ‘Living Edge’ is a user of ‘goods bearing the trade mark’.[36] They have provided no other details about the nature of any relationship between it and the Removal Opponent. Additionally, as submitted by the Removal Applicant, there is no actual evidence of any distribution agreement or licensing agreement.
[36] Cini Declaration [15]
Accordingly, I am not satisfied that Living Edge is an authorised user as contemplated by s 8.
Conclusion regarding use of the Trade Mark
I am not satisfied that the Removal Opponent has rebutted the allegation of non-use under s 92(4)(b). For the reasons set out above, the Removal Opponent has not demonstrated that it, or an authorised user, used the Trade Mark in Australia during the Relevant Period in respect of the class 9 goods. Furthermore, there is no evidence of any obstacle to use of the Trade Mark in the Relevant Period.
Registrar’s discretion
Section 101(3) provides me with a broad discretion to not remove a trade mark from the Register even where s 92 grounds have been established, provided I am satisfied it is reasonable to do so. The Removal Opponent bears ‘the burden of persuasion’[37] for this issue. However, it need not establish ‘exceptional circumstances’.[38]
[37] Optical 88 Ltd v Optical 88 Pty Ltd [2010] FCA 1380, [273] (‘Yates J’).
[38] E&J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 (‘Gallo’), [198] (Flick J) citing Kowa Co Ltd v Organon [2005] FCA 1282 (Lander J), [98].
I must consider the Removal Opponent’s ongoing interest, if any, in using the Trade Mark for the class 9 goods and balance it against the public interest in the integrity of the Register, which generally demands the removal of unused marks.[39] Various factors that are to be considered in applying this section of the Act, include: the abandonment of the trade mark; any residual reputation; any sales since the Relevant Period; and whether the Removal Applicant has entered the market without taking steps to ascertain whether anyone had a right to exclude its use.[40]
[39] Gallo, [210] (Flick J). See also, Mark Davison and Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off (Thomson Reuters, 2022 7th ed), [70.2505].
[40] Section 101(4).
The Removal Opponent offers only bare assertions about these factors. Balancing the relevant considerations and noting the evidence, the Removal Opponent has failed to satisfy me that it is reasonable to exercise the discretion not to remove the Trade Mark for some or any of the class 9 goods. I decline to exercise the discretion.
Decision and costs
The Removal Opponent has not rebutted the allegation of non-use, and I am not satisfied that it is reasonable to exercise the Registrar’s discretion to allow the Trade Mark to remain on the Register in respect of the class 9 goods.
Accordingly, I direct that one month from the date of this decision the specification of goods be amended as follows (removed goods are struckthrough):
Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; computer software; fire-extinguishing apparatusClass 11: Apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating
Both parties request an award of costs. The general rule is that costs will follow the event. I award costs against the Removal Opponent in accordance with s 221, in the amounts set out in Schedule 8 of the Regulations.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
4 January 2023
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