Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3)

• Jurisdiction: Australia Federal only
• Judgment Date: 02 December 2021
• Neutral Citation: [2021] FCA 1512
• Court: Federal Court
• Date: 02 December 2021

FEDERAL COURT OF AUSTRALIA

Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512

Appeal from:	Enagic Co Ltd v Horizons (Asia) Pty Ltd [2018] ATMO 192
File number:	NSD 2363 of 2018
Judgment of:	CHARLESWORTH J
Date of judgment:	2 December 2021
Catchwords:	INTELLECTUAL PROPERTY – appeal from decision of a delegate of the Registrar of Trade Marks accepting for registration a word mark in relation to services in class 35 – where appellant is the registered owner of identical or deceptively similar mark having an earlier priority date in relation to goods – whether the relevant goods and services are “closely related” for the purposes of s 44 of the Trade Marks Act 1995 (Cth) – whether the registration should be subject to a condition or qualification – whether the appellant is the owner of the mark subject to the registration – consideration of the parties’ use of the subject mark in relation to goods as opposed to services before the priority date – consideration of commercial activities inherent to the sale of goods, not being activities constituting the provision of a service as a course of trade – consideration of use of trade marks in the context of a direct marketing scheme – appellant’s ownership of the subject mark established in respect of goods and identified services – whether other services are the “same kind of thing” as the identified services – consideration of the reputation of the subject mark in Australia for the purposes of s 60 of the Trade Marks Act 1995 (Cth)– consideration of the class of consumer to whom the appellant’s goods and services are directed – reputation in Australia not established – whether the registration of the subject mark would be contrary to law – whether the application for registration of the subject mark was made in bad faith – respondent copying the specification of services from an earlier registration secured by the appellant – respondent engaging in conduct before and after priority date directed to the illegitimate disruption of the appellant’s business – consideration of the consequence of the respondent’s failure to call witnesses to give evidence going to critical questions within their knowledge – bad faith established – appeal allowed
Legislation:	Evidence Act 1995 (Cth) ss 136, 140 Competition and Consumer Act 2010 (Cth) Sch 2 Trade Marks Act 1995 (Cth) ss 6, 7, 8, 9, 10, 12, 17, 19, 27, 31, 33, 42, 43, 44, 52, 55, 56, 57, 58, 59, 60, 62, 62A, 72, 196 ; Trade Mark Regulations 1995 (Cth) reg 4.4
Cases cited:	Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2018) 259 FCR 514 Aston v Harlee Manufacturing Co (1960) 103 CLR 391 Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 Briginshaw v Briginshaw (1938) 60 CLR 336 Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 68; 120 ALR 495 Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511 Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107 Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 DC Comics v Cheqout Pty Ltd (2013) 212 FCR 194 Enagic Australia Pty Ltd and Enagic Co Ltd v Horizons (Asia) Pty Ltd [2014] ATMO 72 Enagic Co Ltd v Horizons (Asia) Pty Ltd [2018] ATMO 192 Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 201 FCR 565 Hicks’ Trade Mark (1897) 22 VLR 626 Horizons (Asia) Pty Ltd v Enagic Australia Pty Ltd and Enagic Co Ltd [2016] ATMO 26 Horizons (Asia) Pty Ltd v Enagic Co Ltd [2020] ATMO 181 Jones v Dunkel (1959) 101 CLR 298 Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; 50 IPR1 McCormick & Co Inc v McCormick (2000) 51 IPR 102 Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 Pfizer Products Inc v Karam (2006) 219 FCR 585 ; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379 Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662; 375 ALR 251 Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923; 370 ALR 140 Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 Shell Co of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159; 294 ALR 661 Ward Group Pty Ltd v Brodie & Stone Plc (2005) 143 FCR 479
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	321
Date of last submission/s:	Appellant: 14 January 2021 Respondent: 14 January 2021
Date of hearing:	30 November 2020, 2 December 2020 and 14 December 2020
Counsel for the Appellant:	Ms E Whitby
Solicitor for the Appellant:	Spurson & Ferguson Lawyers
Counsel for the Respondent:	Mr A Lang
Solicitor for the Respondent:	Gilbert + Tobin

ORDERS

		NSD 2363 of 2018
BETWEEN:	ENAGIC CO LTD Appellant
AND:	HORIZONS (ASIA) PTY LTD ACN 124 967 835 Respondent

order made by:	CHARLESWORTH J
DATE OF ORDER:	2 DECEMBER 2021

THE COURT ORDERS THAT:

1. The appeal is allowed.

2. The decision of the delegate of the Registrar of Trade Marks given on 27 November 2018 in relation to trade mark application No. 1798917 be set aside and in lieu thereof there be a decision that trade mark application No. 1798917 be refused registration.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

CHARLESWORTH J

1 On 24 September 2016 the respondent, Horizons (Asia) Pty Ltd, filed an application under s 27(1) of the Trade Marks Act 1995 (Cth) (TMA) for registration of the trade mark “KANGEN” in respect of specified services in Class 35. In these reasons, the mark forming the subject of that application (Trade Mark 1798917) will be referred to as the Opposed Mark.

2 The appellant, Enagic Co Ltd, opposed the registration on five grounds.

3 A delegate of the Registrar of Trade Marks determined that Enagic had failed to establish each of its grounds of opposition and allowed the registration of the Opposed Mark in respect of the specified services: Enagic Co Ltd v Horizons (Asia) Pty Ltd [2018] ATMO 192....