GENTRAX v GENTRAX – Ownership ground of opposition outlined in SMARTCHANNEL PTY LTD v Zhicheng Chen [2016] ATMO 2 (7 January 2016).

This case highlights the benefits of conducting a pre-filing marketplace search, to identify whether a particular trade mark is already in use for the same goods by a third party trader.

The Applicant in this case, Zhicheng Chen, filed a trade mark application on 9 July 2013 for the mark GENTRAX for a range of generators in Class 7.  Smartchannel Pty Ltd opposed the mark. The opposition was successful on the ‘ownership’ ground, and on the basis of evidence of use of GENTRAX by Smartchannel.

In his decision, Hearings Officer McDonagh confirmed that  the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. He referred to Hearing Officer Michael Kirov it in the ATMO decision L.T. Overseas Limited v Chemico Pty Ltd [2008] ATMO 44 , where Hearings Officer Kirov stated (at paragraph 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  (or in relation to goods considered to be “the same kind of thing”). In the GENTRAX case, the GENTRAX trade marks in issue were identical.   The evidence filed by Smartchannel showed:

  • that it had used GENTRAX in Australia in relation to the  sale and promotion of inverter generators before the priority date of the Opposed Application for GENTRAX.
  • that the earliest receipt relating to supply of GENTRAX branded generators was in April 2013 [3 months before the Cheng application was filed].
  • that its sales of GENTRAX products by Smartchannel were substantial.

Hearings Officer McDonagh stated that he was  satisfied that the generators sold by Smartchannel  are the ‘same kind of thing’ as the goods nominated under the opposed application.

The Applicant’s Evidence in Answer referred to GENTRAX and ‘generators’, but the earliest sale date evidenced was 22 January 2014 – ie , much later than  the first date of April 2013 shown in the Smartchannel’s evidence.

Hearings Officer McDonagh stated  “The Opponent has established to my satisfaction that it has been the first person to use the Opposed Mark in the course of trade in Australia in relation to the same, or the same kind of, goods as the Claimed Goods before the Priority Date of the Opposed mark. This ground of opposition has been established.”

This author’s Internet search of ‘GENTRAX’ and ‘generators’ showed a large number of results, presumably for Smartchannel’s product. The case highlights the usefulness of a pre-filing marketplace search to identify marks in use (but not necessarily registered) of the same mark for the ‘same kind of thing’, which may avoid the costs and effort of later dealing with an opposition based on ownership.