2025 ATMO 108

Trade Marks Act 1995 (Cth) - opposition under section 52 - ss 42(b), 58, 59, 60 and 62A pursued - s 58 considered and established - trade mark refused registration.

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Shenzhen Taiyang Network Technology Co., Ltd. ('Opponent') to registration of the following trade mark:

Class 16: Artists' paint brushes; Brushes for the application of paints; Handles for paint brushes; Paint applicators comprising a container and brush; Paint brushes; Paint brushes for applying treatments to timber ('Applicant's Goods')

1. The Trade Mark was examined and advertised as accepted for possible registration on 19 June 2024.
2. On 20 June 2024 the Opponent filed a Notice of Intention to Oppose the Application. On 28 June 2024 the Opponent filed a Statement of Grounds and Particulars ('SGP'). The Applicant filed a Notice of Intention to Defend the opposition on 5 July 2024.
3. The Opponent filed Evidence in Support ('EIS') on 24 September 2024. The Applicant did not file Evidence in Answer.
4. The parties were given the opportunity to either request an oral hearing or to file written submissions. While neither party elected to be heard, the Opponent requested a decision without a hearing. I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine. I have decided this matter based on the particulars set out in the SGP and the evidence of the Opponent.

1. The SGP nominates grounds of opposition under ss. 42(b), 58, 59, 60 and 62A.
2. The Opponent carries the burden of establishing the ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]

1. The Opponent filed a declaration of Zhou Zhilong, general manager of the Opponent dated 20 September 2024 with Exhibits ZZ-1 to ZZ-11 ('Zhou').
2. Zhou claims that the Trade Mark was created in 2017 by the Opponent and was first used in Australia on 13 April 2018 in respect of paint brushes and has been continuously used since this date. Zhou exhibits:
   • a screenshot from Amazon at www.amazon.com.au ('Amazon'). While I note reference to the sale of paint brushes on this date, the page is headed with the name 'Golden Maple' and there is no reference to the Opponent or any trade mark for the goods.
   • screenshots from Amazon dated between 27 July 2018 and 27 May 2020. Some of these screenshots are headed with 'Golden Maple'. All of these screenshots have no reference to the Opponent or any trade mark for the goods.
   • four undated screenshots from Amazon which refer to the Trade Mark and show, for example:

Beneath these screenshots are many reviews from Amazon 'verified purchasers' in Australia dated before the Relevant Date. While, none of the screenshots or reviews reference the Opponent, the shipping, store and seller information on all four screenshots states:

and .

• undated photographs of paint brushes which display the Trade Mark on the brush handles.
• screenshots from Amazon's sales dashboard headed 'Golden Maple' showing total sales of paint brushes bearing the Trade Mark to Australian customers for the years 2022 to 2024. However, none of these screenshots refer to the Trade Mark, paint brushes or the Opponent.
• screenshots from Amazon showing partial order information of paint brushes bearing the Trade Mark from 13 April 2018 to 20 June 2022. I note that the screenshots from 2018 to 2020 are headed 'Golden Maple' and the products are described as, for example:

. I also note that the screenshots from 2021 to 2022 are headed 'Golden Maple' but the product descriptions do not refer to any trade mark.

1. Zhou provides a table of total sales for June 2022 to December 2022, 2023 and January 2024 to September 2024 which are substantial together with a table of total products sold for the same periods. These figures are identical to those shown on Amazon's sales dashboard headed 'Golden Maple'.
2. Zhou claims that the Opponent's sales and advertising of paint brushes under the Trade Mark are though Amazon, exhibiting a graph obtained from Amazon headed 'Golden Maple' showing advertising spend from July 2019 to July 2024 which is reasonable.
3. Zhou provides details of the Opponent's United Kingdom ('UK'), United States of America ('USA') and European Union ('EUIPO') trade mark registration certificates for the Trade Mark.
4. Zhou provides details of Australian trade mark number 2434682 for the trade mark Mr Pen in class 28 in the name of the Applicant and a prior filed application for the same trade mark in the same class by a Chinese company (which application I note has since lapsed) and claims that this shows a pattern of behaviour of applying for other company's trade marks.
5. Zhou declares that online searches have failed to disclose any use of the Trade Mark by the Applicant and this raises a presumption that the Applicant does not intend to use the Trade Mark in relation to all the Applicant's Goods or the Applicant lacks what is necessary to provide the Applicant's Goods.

Section 58**

1. Section 58 states:

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.

1. The right to registration under the Act depends upon ownership of the trade mark and not ownership by registration[5] and this requirement must be satisfied at the filing date of the application.[6] 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'.[7] 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.[8]
2. The concept of trade mark ownership was discussed in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Court of the Federal Court observed:

[O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant's claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[9]

1. The default position under the Act is that the Applicant is prima facie considered to be the owner of the Trade Mark. Consequently, it is the Opponent who bears the evidential onus of establishing that the Applicant was not the owner of the Trade Mark at the Relevant Date. To achieve this, the following requirements must be satisfied:
   • the trade mark(s) relied upon by the Opponent are at least substantially identical to the Trade Mark [10] ('First Requirement');
   • the goods claimed by the Trade Mark are the 'same kind of thing' as the goods for which the trade mark(s) relied upon by the Opponent have been used[11] ('Second Requirement'); and
   • a person other than the Applicant has the earlier claim to ownership based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register the Trade Mark or (b) any actual use of the Trade Mark[12] ('Third Requirement').
2. In summary, the SGP states that the Opponent was the first user of the Trade Mark in Australia in relation to the Applicant's Goods and is entitled to ownership of the Trade Mark. The SGP also states that 'current investigation of records indicate that the Opponent's first use of the [Trade Mark] in Australia dates back to around October 2017. The Opponent has also registered the [Trade Mark] in the USA, EUIPO and the UK [prior to the Relevant Date].'
3. Zhou claims first use of the Trade Mark by the Opponent in Australia in respect of paint brushes on 13 April 2018[13] and continuous use since this date.[14]
4. There are numerous deficiencies in the Opponent's evidence as much of it, is undated, headed with the name 'Golden Maple' with no explanation as to the nature of 'Golden Maple' and what, if any, relationship the Opponent has with 'Golden Maple', provides no indication of any trade mark for paint brushes or provides no indication of, or reference to, the Opponent. To this end, I note my comments on the deficiencies of the EIS in my summary of the evidence at [9] to [11] of this decision.
5. The only evidence in Zhou which shows use of the Trade Mark in respect of paint brushes are undated photographs[15] and undated screenshots from Amazon[16] which do not refer to the Opponent but rather, refer to the seller and shipper as Fuumuui AU and store as Fuumuui Store. As with 'Golden Maple', there is no explanation as to the nature of Fuumuui AU or Fuumuui Store and what, if any, relationship the Opponent has with Fuumuui AU or Fuumuui Store.
6. While the Opponent's evidence has failed to satisfy me that the Opponent was the owner of the Trade Mark in Australia in relation to the Applicant's Goods, I am satisfied that the four undated screenshots from Amazon[17] show use of the Trade Mark in respect of paint brushes. Further, the shipping, store and seller information at Fuumuui AU and Fuumuui Store and the reviews from Amazon 'verified purchasers' from Australia are all dated before the Relevant Date, and appear to directly review the paint brushes in the screenshots. These show use of the Trade Mark in Australia in respect of paint brushes prior to the Relevant Date by a person other than the Applicant.
7. As the ground of opposition in s 58 can be established by showing that the Applicant is not the owner and while the burden of proof is on the Opponent, here, the evidence is sufficient to enable a finding of fact to be made about ownership of the Trade Mark at the time of filing in respect of paint brushes. On the evidence before me I am satisfied that a person other than the Applicant first used the Trade Mark in Australia in respect of paint brushes.
8. The Applicant's Goods however claim more than just paint brushes. While I consider that 'artists' paint brushes; brushes for the application of paints and paint brushes for applying treatments to timber' are the same or the same kind of thing as paint brushes, I do not consider that 'handles for paint brushes or paint applicators comprising a container and brush' ('Subset Goods') are the same kind of thing as paint brushes.
9. The meaning of 'same kind of thing' was considered in Colorado Group Limited v Strandbags Group Pty Limited wherein Allsop J stated:

The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes ... This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same" (Hemming H B, Sebastian's Law of Trade Marks, 4th Ed at p 91) or "goods essentially the same ... though they pass under a different name owing to slight variations in shape and size.[18]

Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name.[19]

1. In my view, the Subset Goods are not essentially or substantially the same as, nor a true equivalent to, paint brushes. A handle for a paint brush is merely a part of a paint brush and a part that you cannot use to paint. A paint applicator comprising a container and brush is more than just a paint brush. It is a paint brush and a container. Again, it is not essentially or substantially the same nor a true equivalent to a paint brushes.
2. In conclusion, I find that the second requirement succeeds in respect of 'artists' paint brushes; brushes for the application of paints, paint brushes and paint brushes for applying treatments to timber' but not in respect of the Subset Goods.
3. As a consequence, the s 58 ground is successful for 'artists' paint brushes; brushes for the application of paints, paint brushes and paint brushes for applying treatments to timber'.
4. In Apple Inc v Registrar of Trade Marks Yates J stated that:

My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[20]

1. In circumstances where an opposition has been established in respect of some, but not all of an applicant's goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established. I note that in in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited, Murphy J stated:

I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.[21]

1. The Opponent has not filed submissions. The Applicant has not participated in the opposition other than filing a Notice of Intention to Defend. In these circumstances where the opposition has been established for a significant proportion of the Applicant's Goods and what would remain in the Application namely the Subset Goods is de minimus at best, I find there is nothing to compel me to offer the Applicant the opportunity to limit the Applicant's Goods to the Subset Goods. As such, I do not consider it appropriate to exercise my discretion and offer an amendment in respect of the Trade Mark.
2. I therefore find the s 58 ground of opposition established for all of the Applicant's Goods.
3. Given that I have found the ground of opposition under s 58 established, I do not need to consider the other grounds of opposition.

1. Section 55 relevantly provides:

(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(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.

1. The Opponent has established the s 58 ground of opposition nominated in the SGP and I accordingly refuse to register the Trade Mark.
2. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court's order or direction.

1. The Opponent has sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Applicant per s 221 in the amounts set out in Schedule 8 of the Regulations.

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) ('Act') and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

[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 Edelmann JJ).

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

[5] 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).

[6] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ).

[8] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).

[9] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ).

[10] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

[11] Re Hicks's Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

[12] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

[18] [2007] FCAFC 184, [89].

[20] [2014] FCA 1304, [232].

[21] [2014] FCA 373, [231].