Agricultural and Processed Food Products Export Development Authority v Muhammad Munsha

[2004] ATMO 69

TRADE MARKS ACT 1995

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

Re:Opposition by Agricultural and Processed Food Products Export Development Authority to registration of trade mark application 929133(30) - BASMA - filed in the name of Muhammad Munsha.

Delegate:	Mary Skivington
Representation:	Opponent: G J Fitzgerald of counsel instructed by D J Ryan of Davies Collison Cave, Patent and Trade Mark Attorneys. Applicant: Unrepresented and did not appear and did not make written submissions.
Decision:	Section 52 opposition – ground of opposition under section 58 established – registration refused – costs awarded against the applicant.

Background

1. Mr Muhammad Munsha filed trade mark application number 929133 to register the trade mark BASMA, for Basmati rice, in class 30, on 2 October 2002. Following examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks, on 20 February 2003.

2. Agricultural and Processed Food Products Export Development Authority, (‘the opponent’), filed notice of opposition to registration of the trade mark on 20 May 2003 citing numerous grounds of opposition under the Trade Marks Act 1995, (‘the Act’). The opponent filed and served evidence and further evidence in support of the opposition. The applicant did not file or serve evidence in answer and in due course and in accordance with regulation 5.14 the opponent requested a hearing.

3. As a delegate of the Registrar of Trade Marks, I heard the matter in Melbourne on 17 September 2004. The opponent was represented by Mr G J Fitzgerald of counsel, instructed by Mr D J Ryan of Davies Collison Cave, Patent and Trade Mark Attorneys. The applicant was not represented, did not appear and did not file submissions.

   The evidence

   4.   The opponent’s evidence comprises an affidavit with exhibits from Mr K S Money, Chairman of the opponent, plus four statutory declarations with exhibits as detailed in the table below:

   Evidence in support

Date	Declarant	Exhibits
11 November 2003	K S Money, Chairman of Agricultural and Processed Food Products Export Development Authority (APEDA).	A to I
6 November 2003	Peter Paphitis, Managing Director of Capital Foods Pty Ltd.	PP-1 to PP-5
6 November 2003	Desmond James Ryan, Trade Marks Attorney with Davies Collison Cave	DJR-1
10 March 2004	Desmond James Ryan, Trade Marks Attorney with Davies Collison Cave	DJR-1 and DJR-3
13 September 2004	Siobhan Ryan, Solicitor employed by Davies Collison Cave, Patent and Trade Marks Attorneys.	SR-1 to SR-3

K S Money

1. In his affidavit Mr Money attests to the opponent being an autonomous statutory authority sponsored by the government of India to promote the export of agricultural products and processed foods from India. He attests to the term Basmati denoting a particular type of high quality rice grown in Northern India and the adjacent part of Pakistan, and to it being a major source of export revenue for the Indian government. Mr Money reports that the Indian government through the opponent endeavours to prevent misuse of the term Basmati. To this end the opponent has appointed a London watching agency to report attempts by third parties to register as a trade mark the word Basmati or any other word that may be deceptively similar to it, so that registration may be opposed. The exhibits include an Oxford English Dictionary definition and definitions from various dictionaries of food and culinary terms and cookery books that confirm the nature and origin of Basmati rice. Exhibit ‘E’ is a copy of regulations governing the export of Basmati rice from India.

   Peter Paphitis

2. Mr Paphitis declares that his company is and has been since 1986 a leading importer and distributor of food products including rice. He declares that Basmati rice is imported by a number of importers and sold extensively throughout Australia. Mr Paphitis declares that he is ‘very familiar’ with the rice trade in Australia particularly in South Australia and that he does not know the applicant and has never heard of him in the trade.

   Desmond James Ryan

3. Mr Ryan’s declaration of 6 November 2003 details his unsuccessful efforts to contact the applicant via mail, telephone and direct inquiries.

4. In his second declaration dated 10 March 2004, Mr Ryan reports that following advice from IP Australia of the applicant’s new address for service, the evidence in support and was served on the applicant at the newly advised address, on 18 November 2003. Mr Ryan declares that subsequently, Mr Munsha telephoned him and a conversation took place in which Mr Munsha informed him that he has been importing Basmati rice, trade marked BASMA, from a company in Pakistan. Mr Ryan also declares that Mr Munsha informed him of his reasons for applying to register the trade mark. Mr Ryan reports that he informed Mr Munsha that he had been unable to locate rice under the trade mark, BASMA and that Mr Munsha had then given him the address of a company in Melbourne that stocked it. Mr Ryan reports that as no evidence in answer was served on his firm he tried unsuccessfully, on several subsequent occasions, to contact the applicant by telephone. Mr Ryan declares that as a consequence of this he applied for leave to adduce the evidence in this declaration as further evidence.

   Siobhan Ryan

5. Ms Ryan’s declaration which was tendered at the hearing confirms that the evidence in support and further evidence was served on the applicant.  Ms Ryan declares that she has reviewed her firm’s correspondence with the applicant and notes that by letter dated 6 April 2004 her firm served by way of registered mail a number of documents on the applicant. She reports that they were copies of the opponent’s request for leave to adduce further evidence, the statutory declaration with exhibits made by Mr Desmond James Ryan on 10 March 2004 and the opponent’s request for a hearing. Exhibit SR-1 is a copy of these documents. Exhibits SR-2 and SR-3 are respectively a Registered Post - Customer receipt and a Delivery Confirmation Receipt from Australia Post.

Grounds of opposition

1. At the hearing Mr Fitzgerald mainly canvassed grounds of opposition under the provisions of sections 41, 58 and 59 of the Act, although he did make some submissions in support of grounds of opposition under 42(b), 43 and 61. However, it is my intention to decide this matter by reference to section 58 only.

   Submissions and the law

2. Mr Fitzgerald submitted that the applicant had been served with the evidence in support and the further evidence and that he had not contested, disputed, denied or sought to explain or diminish any of the evidence filed by the opponent. He argued that in particular the evidence about the conversation with Mr Ryan, cried out for evidence in answer. He said that it should be inferred that the applicant is unable to provide evidence disputing the matters put in evidence. In support of his argument Mr Fitzgerald cited Jones v Dunkel and Another (1959) 101 CLR 298, where Windeyer J said,

   Unless a party’s failure to give evidence be explained, it may lead rationally to an inference that his evidence would not help his case.

3. Mr Fitzgerald further submitted that it was not for the hearing officer to act as an advocate for the applicant and cited the Registrar’s Delegate in Gap (ITM) Inc v General Pants Co Pty Ltd, [2004] ATMO 12, 27 February 2004, where he said in reference to an applicant who failed to file evidence or submissions and did not appear at the hearing,

   While it is up to the opponent to satisfy me that grounds for opposition are established, it is true that I can draw inferences from the failure of the applicant to adduce evidence when it has been given the opportunity to do so. I also accept, of course, that it is not part of my duty to act as advocate for an unrepresented party.

   Section 58

4. Section 58 of the Act provides that registration of a trade mark may be opposed on the ground that the applicant is not the owner of a trade mark. Ownership of a trade mark may be established through first use of a trade mark in respect of particular goods or services or by the filing of an application to register the mark as a trade mark, whichever is earlier.  In a disputed claim to ownership the first user of the mark as a trade mark for particular goods or services is the owner.

   14.  Mr Ryan reports that Mr Munsha informed him that he had been importing Basmati rice into Australia from a company called Basma Rice Mills (Pvt) Ltd, of Lahore in Pakistan and that BASMA is the trade mark of that company and that he filed the application to register the trade mark BASMA to:

   • protect his position as an agent for the Basma Rice Mills in Australia; and
   • as a means of preventing other importers from importing BASMA brand rice.

   15.As Mr Munsha has not denied that the conversation took place nor made any attempt to explain it I conclude that that the conversation with Mr Ryan did take place and that his report of it is accurate.  It would, for instance, have been easy for Mr Munsha to demonstrate that he had an intellectual property agreement with Basma Rice Mills (Pvt) Ltd, if such an agreement existed or to make submissions concerning Mr Ryan’s accuracy in reporting the content of the conversation. Mr Ryan declares that Mr Munsha said Basma Rice Mills (Pvt) Ltd was the owner of the trade mark. If Mr Munsha did not believe that he was the owner of the trade mark, an essential prerequisite for the filing of an application for registration of a trade mark was missing.

   16.Section 27 of the Act provides that A person may apply for the registration of a trade mark in respect of goods and/or services if:

   (a) the person claims to be the owner of the trade mark; and

   (b)one of the following applies:

   (i) the person is using or intends to use the trade mark in relation to the goods and/or services;

   (ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

   (iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

5. It would appear that Mr Munsha’s motives in applying to register the trade mark were not to use or authorize use of the trade mark but to gain benefits for himself if the mark were registered in his name and Basma Rice Mills (Pvt) Ltd were thereby blocked from registering their trade mark in Australia or if other distributors were prevented from trading in the BASMA brand of rice in Australia.

6. Mr Paphitis declares that he is ‘very familiar’ with the rice trade in Australia and he has no knowledge of Mr Munsha’s connection with it. Mr Munsha has provided no evidence of actual use in Australia.  When Mr Ryan told Mr Munsha that he had be unable to find BASMA trade marked rice Mr Munsha advised him where he could purchase it. The BASMA rice then purchased by Mr Ryan indicated that the importer was another entity.  Had Mr Munsha actually been in the business of importing and distributing BASMA rice he could easily have supplied Mr Ryan with a sample showing his name as the importer. It would appear that the trade mark has, so far, not been used by Mr Munsha.  Mr Fitzgerald noted that Dixon J in Shell Co (Aust) Ltd v Rohm and Haas Co, (1948) 78 CLR 601 held that,

   [T]hat an application to register a trade mark so far unused must, equally with a trade mark the title to which depends on prior user, be founded on proprietorship. The basis for a claim to proprietorship in a trade mark so far unused has been found in the combined effect of the authorship of the mark, the intention to use it upon or in other connection with the goods and the applying for registration …Authorship …involves the origination or first adoption of the word or design as and for a trade mark.

7. Exhibit DJR-2 is a photocopy of the front and back panels of the pack of BASMA basmati rice purchased by Mr Ryan at the address given to him by Mr Munsha.  The front of the pack shows the trade mark BASMA and states that it is ‘Produce of Pakistan’. The back panel also carries the trade mark, descriptive matter and advice that the rice had been packed and produced by Basma Rice Mills (Pvt) Ltd of Pakistan.  The importer’s name was partially obscured – it ended ‘& R Tatla’ - but the address was clearly a business address in Mitchell Park in South Australia. Equally important is the fact that the packing date for the importer was May 2002. Thus, at least as early as May 2002, Basma Rice Mills (Pvt) Ltd’s  Basmati rice was prepared and ready for sale in Australia through an Australian importer under the trade mark BASMA. In Re The Registered Trade Mark "Yanx"; Ex Parte Amalgamated Tobacco Corporation Ltd. (1951) 82 CLR 199, Williams J said,

   On principle and as a matter of common sense, however, it would seem that a mark is used as a trade mark in Australia if it is used here to designate the goods of a particular trader which are offered for sale in Australia under that mark whether the goods themselves are actually in Australia or not. The goods are put upon the Australian market whether they are in Australia awaiting delivery upon sale or they may have to be imported for delivery after sale. They are in either case actually a vendible article in the Australian market …

   20.And, in Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein Limited 116 CLR 254, it was held that when an overseas manufacturer projects into the course of trade in this country, by means of sales to Australian retail houses, goods bearing his mark and the goods, bearing his mark, are displayed or offered for sale or sold in this country, the use of the mark is that of the manufacturer.

   21.   I find that the combined effects of the business arrangements to bring about sales in Australia and the preparation of the goods for export to Australia bearing the trade mark BASMA constitute use of the mark in Australia by Basma Rice Mills (Pvt) Ltd and that such use preceded the priority date, 2 October 2002 of the subject application. Mr Munsha is not, therefore, the owner of the trademark. The section 58 ground of opposition is established.

   Decision

8. The opposition has been successful in establishing one of its grounds of opposition. I therefore see no need for me to consider the other grounds canvassed at the hearing. Pursuant to section 55 of the Act I refuse to register trade mark number 929133.

   Costs

9. The opponent has sought its costs in this matter.  As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.

   Mary Skivington

   Hearing Officer

   Trade Marks Hearings

   3 December 2004