TWG TEA COMPANY PTE. LTD V TSIT WING INTERNATIONAL COMPANY LIMITED [2015] ATMO 64 (3 JULY 2015)

TWG Tea Company Pte. Ltd (TWG) applied to remove the below trade mark registration (the Non-Use Mark) and opposed the registration of the below application (the Opposed Mark).

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Both the Non-Use and Opposed Marks are owned by Tsit Wing International Company Limited (Tsit).

The Hearing Officer notes that this matter is a ‘bitter’ dispute that has been ‘stewing’ for several years, across several jurisdictions in relation to tea, coffee and cafes. Throughout the decision there are references to infringement proceedings and appeals in Hong Kong, Macau and South Korea.

Opposition

As a result of legal action in Hong Kong, and a desire to not contradict itself on the record, the opponent sought to limit the grounds upon which it would rely prior to filing its evidence in support. Part of this limiting of grounds included removing the section 44 ground.

At the Hearing, the opponent sought to include the section 44 ground on the basis that, by coincidence, it had a pending Australian trade mark application that was filed on the same day as the Opposed Mark. Its own application was facing a citation objection based on the Opposed Mark and, in turn, the Opposed Mark should have faced a citation objection based on the opponent’s mark.

Trade Marks Office practice is clear that when two conflicting applications share the same filing date, each is to be cited against the other. This should have been, but was not, the case here. Under the provisions, the Registrar (or her Delegate) has the discretion to refuse registration where such an error has occurred.

However, the Hearing Officer took the view that the opponent was not entitled to succeed with such a tactic as it had several years to make this point and had not done so until the final stage of a protracted opposition. The Hearing Officer concluded that to allow the opponent to succeed on this ground would amount to ‘a complete denial of [the applicant’s] entitlement to the natural justice and procedural fairness that ideally runs like a unifying thread through every opposition process’.

Following this line of argument, the opponent attempted to argue that section 62(b) should be applied in refusing the Opposed Mark on the basis that a false representation was made by the Trade Marks Office in failing to apply its own procedure in relation to trade mark applications filed on the same day.

This line of argument was rejected by the Hearing Officer on the basis that there was no ‘false’ information before the Examiner at the time of acceptance of the Opposed Mark. The Hearing Officer did hint that the decision may have been different if a revocation action was concerned.

Non-Use

The non-use action concerned all the goods covered in Class 30, but not the Class 32 goods.

In its evidence, Tsit produced examples of its use of ‘variations’ of the Non-Use Mark(s). The Hearing Officer’s view was that the use led by Tsit was not enough to defeat the non-use action as the additional elements effected the overall identity of the Non-Use Mark such that Tsit had not used the Non-Use Mark (in terms of the specific mark it had registered).

Despite finding that it had not used the Non-Use Mark, the Hearing Officer decided to exercise the Registrar’s discretion to refuse the non-use action (that is, retain the Tsit Non-Use Mark) on the basis that; the Class 32 goods remaining (as they were not part of the non-use action), and the right of Tsit to use its trade mark in respect of those Class 32 goods, would lead to consumer deception or confusion if another trader was to use the same trade mark for the similar Class 30 goods (as TWG appears to so desire).

It appears that an appeal against this decision has been filed – stay tuned for further developments.

To view the Office decision, click here.