Yunique Tea Pty Ltd v Boba Tea Sdn Bhd

[2022] ATMO 99

TRADE MARKS ACT 1995

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

Re:Opposition by Yunique Tea Pty Ltd to registration of trade mark application number 2062202 (classes 35 & 43) – DABOBA LET’S CHILL WITH DABOBA & Device -in the name of Boba Tea Sdn Bhd

Delegate:	Tracey Berger
Representation:	Opponent: Not represented Applicant: MacMillan Trade Marks Attorneys
Decision:	2022 ATMO 99 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 43, 44 and 58A pursued – no grounds established – trade mark to proceed to registration

Background

1. This is a decision on the opposition by Yunique Tea Pty Ltd (‘Opponent’) to registration of Australian trade mark number 2062202 (‘Application’) filed on 10 January 2020 in the name of Boba Tea Sdn Bhd (‘Applicant’) for:

   Trade Mark:              (‘Applicant’s Mark’)

   Priority Date:           28 August 2019 (‘Relevant Date’)

   Specification:            Class 35: Publication of publicity texts; Publicity; Advertising; Shop window dressing; Television advertising; Providing business information; Presentation of goods on communication media, for retail purposes; Design of marketing material; Advertising analysis; Business advice relating to advertising; Design of publicity material; Sales promotion (for others); Procurement services for others (purchasing goods and services for other businesses); Business consultation relating to advertising; Administration of businesses; Business management; Retail services

   Class 43: Mobile catering services; Snack bars (provision of food and drink); Cafe services; Bar services; Takeaway food and drink services; Providing food and drink; Contract catering services; Booking of catering services; Consultancy, advisory and information services in relation to the provision of food and drink; Tea room services; Self-service cafeteria services

   (‘Applicant’s Services’)

   Endorsement:         The applicant has advised that the CHINESE characters appearing in the trade mark may be transliterated as XIONG HEI TANG which may be translated into English as BLACK BEAR HALL

2. As required by the Trade Marks Act 1995 (Cth)[1], the Application was examined, accepted for possible registration and advertised on 14 April 2020.  The Opponent filed a Notice of Intention to Oppose on 10 June 2020 and a Statement of Grounds and Particulars (‘SGP’) on 8 July 2020.  The Applicant filed a Notice of Intention to Defend its Application from opposition on 18 August 2020.

   [1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

3. Thereafter, the parties were given the opportunity to file evidence in accordance with the timetable set out in the Regulations. The Opponent filed Evidence in Support (‘EIS’) on 23 November 2020, followed by the Opponent’s Evidence in Answer (‘EIA’) on 23 February 2021 and concluding with the Opponent’s Evidence in Reply (‘EIR’) on 2 May 2021.

4. Following the conclusion of the evidence, the parties were given the opportunity to be heard.  The Applicant requested a hearing by written submissions and paid the requisite fee.  The Opponent did not ask to be heard.  The Applicant filed written submissions on 14 April 2022.  This matter was allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks based on the material filed during the proceedings as outlined above.

   Grounds and Onus

5. The SGP nominates grounds of opposition under ss 43, 44 and 58A.

6. The Opponent bears the burden of establishing a ground of opposition on the balance of probabilities[2].  The rights of the parties are to be assessed at the Relevant Date.

   Evidence

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   Opponent’s Evidence

7. The Opponent filed the following declarations as evidence:

   ·     EIS- Declaration of Feiyue Lin, director of the Opponent, made on 22 November 2020 with Exhibits 1 and 2.

   ·     EIR- Declaration of Feiyue Lin made on 2 May 2021 with Exhibits 1-4.

8. Feiyue Lin attests that the Opponent is the owner of Australian trade mark number 1981422 for:

   Trade Mark: (‘Opponent’s Mark’)

   Priority Date:      15 January 2019

   Specification:      Class 43: Cafes; Snack-bars; Tea room services; Bar services; Food and drink catering; Restaurants; Provision of carry out foods and beverages; Take out food and beverage services

   Endorsement:      The applicant has advised that the CHINESE characters appearing in the trade mark may be transliterated as YU HEI TANG which may be translated into English as ROYAL BLACK HALL

9. The Opponent’s Mark was first used in China in relation to stores serving bubble tea, food and other beverages (‘Opponent’s Services’).  The Opponent’s Mark is owned in China by Cheng Shan Catering Pty Ltd (’Cheng Shan’).  There are over 1,000 stores offering the Opponent’s Services in China, Australia, Japan, Philippines, Malaysia and Canada.

10. In October 2018, the Opponent became the first Australian franchisee of Cheng Shan and registered the company Yunique Tea Pty Ltd in December 2018.  In January 2019, the Opponent applied to register the Opponent’s Mark with the consent of Cheng Shan.  The Opponent opened three stores under the Opponent’s Mark in quick succession namely, on Swanston Street in January 2019, in Glen Waverly in March 2019 and on A'Beckett St in May 2019.

11. The Opponent attests that the Applicant opened its first bubble tea store under the Applicant’s Mark in May 2020 on Franklin St about 300m from the Opponent’s A’Beckett St store.  The Opponent attests that since that time, customers and friends have frequently asked if the Applicant is related to the Opponent “due to a high degree of similarity between the Opponent’s Mark and Applicant’s Mark, store layout, and food and beverage packaging”.

12. The EIR outlines the adoption of the Opponent’s Bear Device, provides the Cambridge Dictionary definition of ‘boba’ and makes submissions in response to the EIA.

    Applicant’s evidence

13. The EIA comprises a declaration of Choong Jun Meng, director of the Applicant, made on 23 February 2021 with Exhibits DAB-001 to DAB-004.  Much of the declaration consists of submissions in response to the Opponent’s EIS.

14. The Applicant explains that the Applicant’s Mark was adopted as “DA” is phonetically similar to ‘the’ and BOBA means pearl which alludes to its pearl tea products.  The Bear Device was inspired by the favourable perception of cartoon bears.

15. The Applicant attests to use of the Applicant’s Mark in Malaysia since 23 October 2018, Singapore since 6 April 2019, Brunei since 29 July 2019, Cambodia since 7 October 2019, Indonesia since 29 May 2020 and Australia since 5 December 2019.

    Discussion

    Section 44

16. To successfully oppose the Applicant’s Mark pursuant to s 44, the Opponent must establish that a trade mark registered or applied for by a person other than the Applicant:

    ·     has a priority date which is earlier than that of the Applicant’s Mark (‘the first requirement’);

    ·     is substantially identical with or deceptively similar to the Applicant’s Mark (‘the second requirement’); and

    ·     is in respect of similar services and/or goods which are closely related to, the Applicant’s Services (‘the third requirement’).
    
    

17. The Opponent has particularised this ground of opposition in the SGP by reference to the Opponent’s Mark which has a priority date earlier than the priority date of the Applicant’s Mark.  The first requirement is satisfied. 

    Substantially identical

18. The assessment of substantial identity was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited as follows:

    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.[3]

    [3] [1963] HCA 66; (1963) 109 CLR 407, 415.

19. The comparison of the marks in the present case is between:

1. On a side by side comparison of the marks, there are clear differences.  The word elements DABOBA and THE YUNIQUE TEA inside the scroll in each of the respective marks are obviously different.  The Applicant’s Mark also includes the slogan LET’S CHILL WITH DABOBA.  Whilst both marks contain an image of a bear, the bear devices are not the same. One of the Chinese characters is also different.  As a result, there is not a total impression of similarity.

   Deceptively similar

2. The test for whether trade marks are deceptively similar is broader than the test for whether marks are substantially identical and requires that one trade mark so nearly resembles the other mark that it is likely to deceive or cause confusion.[4]

   [4] Act s 10.

3. In determining the issue of deceptive similarity, I am guided by the longstanding principles relevant to this assessment summarised by the Federal Court in Caterpillar Inc. v Puma SE:[5]

   First, the relevant comparison is between the marks themselves.  The comparison assumes a normal and fair use of the application trade mark for all goods or services covered by the application…

   Second, the test is not a “side-by-side” comparison of the marks.  Deceptive similarity is to be assessed by reference to persons who do not have an opportunity to compare the respective marks side-by-side and who may have an imperfect recollection of the marks…

   Third, while the deception or confusion must result from the similarity in the marks, the likelihood of deception or confusion is to be judged not by the degree of similarity alone but by the effect of the similarity in the circumstances.  Confusion may arise from two word marks in a number of ways. The confusion might arise because of the textual similarity of the words, or because of the phonetic similarity of the words when pronounced, or there may be conceptual confusion where consumers might think that the product bearing the impugned mark is a variant of, or related to, an existing brand…

   Fourth, confusion includes being left in doubt or having cause to wonder.  The creation of an incorrect belief or mental impression and causing confusion “… may go no further than perplexing or mixing up the minds of the purchasing public…”

   Fifth, it is not necessary to establish that confusion is more probable than not; likelihood is established if there is a real risk, that is a finite, non-trivial risk, of confusion.  It is enough if the ordinary person entertains a reasonable doubt…

   Sixth, no intention to deceive or cause confusion is required, although it may nevertheless be a relevant factor to take into account in the evaluation of deceptive similarity if the defendant did have that intention.[6]

   [5] [2021] FCA 1014 (O’Bryan J).

   [6] Ibid [90]-[96] (emphasis in original) (citations omitted).

4. Both the Applicant’s Mark and the Opponent’s Mark are a combination of words and device elements.  In the case of a composite mark consisting of a word and device/s, customers will refer to the words to identify the brand or order products.[7]  The prominent feature of the Applicant’s Mark is DABOBA which is reinforced by the inclusion of the slogan LET’S CHILL WITH DABOBA.  In the Opponent’s Mark, the element by which consumers are likely to refer to the mark is [THE] YUNIQUE TEA.  Visually and aurally, these word elements are distinct.  In my view, persons of ordinary intelligence and memory who have a recollection of the Opponent’s Mark will recall the words YUNIQUE TEA and will not be misled when they are confronted by a trade mark (which does not include the words YUNIQUE TEA) prominently displaying the very different word DABOBA.  Even taking into account the effect of imperfect recollection, I consider that the overwhelming impression of the Applicant’s Mark left on the mind of the ordinary purchaser would be the word DABOBA.

   [7] Midas International Corp v Brakes Plus Pty Ltd (1997) 40 IPR 415; Cave De Pongracz Limited v Veuve Cliquot De Ponsardin [1998] ATMO 18 (Hearing Officer M. Holmann), 41 IPR 415; S.A. Jean Cassegrain v Victoria Racing Club [1999] ATMO 75 (Deputy Registrar H. Hardie).

5. The common parts of the marks of which the Opponent complains are the  bear device, the use of a scroll and two of the Chinese characters.  I consider a scroll device to be a fairly commonplace embellishment.  Non-Chinese speaking consumers are unlikely to pay any attention to the Chinese characters in the marks and whilst Chinese speaking purchasers may pay more attention to the characters, I do not think they would do so without having regard and recollection of the more dominant English words.  The respective bear devices are similar in that both are realistic portrayals of a bear but there are also memorable differences.  Any commonality of idea of the Applicant’s Mark and Opponent’s Mark resulting from each containing a bear device is not sufficient, in my view, when the marks are considered as wholes, to render the two marks deceptively similar.       

6. I am not satisfied that there is a real and tangible danger of consumers being deceived or confused by the Applicant’s Mark. I find that the Applicant’s Mark is not deceptively similar to the Opponent’s Mark and hence the s 44 ground is not established.

   Section 58A

7. Section 58A of the Act relevantly provides:

   58A  Opponent’s earlier use of similar trade mark

   (1)  This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

   (a)  subsection 44(4); or

   (b)  a similar provision of the regulations made for the purposes of Part 17A.

8. Section 44(4) and reg 4.15A(5) allow a trade mark to be accepted because it has been continuously used since before the priority date of the trade mark with which it is substantially identical or deceptively similar.

9. For this ground of opposition to be available, the Applicant’s Mark must have been accepted by the Examiner under the provisions of s 44(4) or Reg 4.15A, or a hearing officer finds during an opposition that it is appropriate to apply those provisions.

10. In this matter, the Applicant’s Mark was not accepted by the Examiner under the provisions of s44(4) or reg 4.15A(5).  Furthermore, given my finding that the Applicant’s Mark is not substantially identical with, or deceptively similar to the Opponent’s Mark, the provisions of s 44(4) or reg 4,15A(5) are not available to be applied in this proceeding.

11. The s 58A ground of opposition has not been established.

    Section 43

12. This section requires the Opponent to demonstrate that there is a connotation in the Applicant’s Mark (or a part of it) and that because of the connotation, use of the Applicant’s Mark would be likely to deceive or cause confusion.

13. The ‘connotation’ must be inherent in the trade mark itself. The connotation must arise from the Applicant’s Mark[8] and not from any comparison with another trade mark.[9]  As Spender J noted in Winston Shire Council v Lomas:

    Section 43 is directed to the mark itself.  It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark.  That aspect of the matter is dealt with under s60.

    [8] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).

    [9] Ibid; Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [40] (Greenwood, Katzmman and Rangiah JJ).

14. The Opponent particularises this ground in the SGP as follows:

    Given that the Opposed Mark is substantially identical with, or deceptively similar to the Opponent’s Mark, and is for the same, similar or closely related services, use by the Applicant of the Opposed Mark would lead to deception and confusion because consumers and other people encountering the Opposed Mark would assume that there was some real connection with the Opponent, or that the services were in fact being provided by the Opponent.

15. The existence of the Opponent’s Mark has no relevance under s 43.  The first step in establishing this ground of opposition requires the Opponent to identify some connotation inherent in the Applicant’s Mark.  The Opponent has provided no evidence to suggest any such connotation exists.

16. I am not satisfied that the Applicant’s Mark has a connotation within it which is likely to result in deception or confusion.  The s 43 ground has not been established.

    Decision

17. Section 55 relevantly provides:

    55  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.

18. The Opponent has not established a ground of opposition.  Accordingly, trade mark application number 2062202 may proceed to registration one month from the date of this decision.

19. 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 the disposition of the applications should otherwise be in accordance with the Court’s order or direction.

20. The Applicant has requested an award of costs and hence I award costs against the Opponent under s 221 in the applicable amounts set out in Schedule 8 of the Regulations.

    Tracey Berger
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    16 June 2022