Dawn Foods Inc v Golden Harvest Foods (Pvt) Ltd
[2023] ATMO 123
•25 August 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Dawn Foods Inc to registration of trade mark application number 2047243 (class 30) - DAWN - in the name of Golden Harvest Foods (Pvt) Ltd
Delegate: | Benjamin Goldsworthy |
Representation: | Opponent: Thomas Huthwaite of AJ Park Applicant: One IP International Pty Ltd |
Decision: | 2023 ATMO 123 Trade Marks Act 1995 (Cth) - opposition under section 52 - ss 42(b), 44 and 60 - s 44 established in respect of some goods - s 44(3) considered but not applied - no other grounds established - specification amended - registration to proceed for amended specification. |
Background
On 30 October 2019 (‘Relevant Date’) Oasis Corporation Australia Pty Ltd filed an application for the trade mark DAWN (‘Trade Mark’), which was later assigned to Golden Harvest Foods (Pvt) Ltd (‘Applicant’), for the following goods:
Class 30: Frozen pastry; Frozen pastry sheets; Meat dumplings (cooked meat in a pastry envelope); Pastry; Bread; Frozen dough; Frozen fruit desserts; Frozen ices; Frozen lollipops; Frozen meals consisting primarily of pasta; Frozen meals consisting primarily of rice; Frozen pastries; Frozen pizzas; Non-dairy frozen dessert products; Tortillas; Snack foods consisting principally of bread; Snack foods made of wheat; Cakes; Bibimbap (rice mixed with vegetables and beef); Flavoured rices; Foodstuffs made of rice; Freeze-dried dishes with the main ingredient being rice; Fried rice; Frozen prepared rice; Meals made predominantly from rice, pasta or noodles; Prepared meals containing (principally) rice; Prepared rice dishes; Rice; Sauces for rice; Crackers; Biscuit products; Biscuit rusks; Biscuits; Salted wafer biscuits; Meal; Pastries consisting of vegetables and meat (‘Designated Goods’)
After examination under s 33 of the Trade Marks Act 1995 (Cth)[1] (‘Act’) the Trade Mark was accepted subject to s 44(3)(a) of the Act. Acceptance was advertised on 23 July 2021. On 23 September 2021 Dawn Foods Inc (‘Opponent’) filed a Notice of Intention to Oppose. The Opponent filed its Statement of Grounds and Particulars (‘SGP’) on 12 October 2021. On 20 December 2021 the Applicant filed its Notice of Intention to Defend.
[1] Unless I have specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) (‘Act’) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The Opponent filed Evidence in Support (‘EIS’) on 21 March 2022, consisting of two declarations, one of Xanthippi Tsoutsas, General Manager for Frutex Australia Pty Ltd (‘Frutex’), dated 16 May [sic] 2022 (‘Tsoutsas-1’) and Scott Thayer, Chief Legal Officer and Corporate Secretary for the Opponent, dated 16 March 2022, with Exhibits ST-1 to ST-17 (‘Thayer Declaration’). On 23 June 2022, the Applicant filed its Evidence in Answer (‘EIA’) being a declaration of its Attorney, Olaf Kretzschmar, dated 23 June 2022, with Exhibits GH-01 to GH-04 (‘Attorney Declaration’). Relevantly, Exhibit GH-01 consists of a declaration made by Amir Sohail, Director of Marketing of the Applicant, dated 19 July 2021 (‘Sohail Declaration’), with its own attachments at Annexures A to G. The Opponent filed Evidence in Reply (‘EIR’) on 4 August 2022 being a second declaration by Xanthippi Tsoutsas (‘Tsoutsas-2’) dated 26 July 2022, with Exhibit 2XT-01.
On 9 September 2022 the Opponent requested a hearing and on 11 April 2023 the Applicant requested a hearing. The Opponent filed its outline of submissions on 5 May 2023 and the Applicant filed its written submissions on 15 May 2023. I heard the matter on 19 May 2023 as a delegate of the Registrar of Trade Marks. Thomas Huthwaite from AJ Park appeared on behalf of the Opponent. The Applicant elected to be heard by way of written submissions only.
Grounds and Onus
The Opponent nominated ss 42(b), 44 and 60 as grounds of opposition. The Opponent has the onus[2] to establish at least one ground of opposition for all or any of the Designated Goods. The standard of proof is that of the balance of probabilities.[3]
Evidence
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
EIS
The Thayer Declaration asserts 100 years of use of the trade mark ‘Dawn’ by the Opponent, starting in Michigan, United States of America, as the ‘Dawn Doughnut Company’. Throughout the evidence the Opponent’s registered trade marks (‘Opponent’s Trade Marks’) are shown, which I reproduce below:
Trade mark number: 1064934
Trade mark: (‘Earlier Trade Mark’)
Priority date: 14 July 2005
Goods: class 29: Bakery mixes being fruit-based fillings, concentrates and toppings in this class;
class 30: Bakery goods, yeast and yeast concentrates, icings, glazes and toppings in this class
---
Trade mark number: 746461
Trade mark: DAWN (‘Trade Mark 746461’)
Priority date: 16 October 1997
Goods: class 29: Bakery mixes being fruit fillings and concentrates;
class 30: Bakery goods being yeast concentrates
The Opponent’s activities are stated as occurring across 105 countries. Australia is part of the Opponent’s regional distribution group for Africa, the Middle East and Asia-Pacfic (‘AMEAP’). Screen captures which are dated before the Relevant Date, and some undated, of a website for AMEAP customers (‘Opponent’s Website’) are provided. The screen captures show individual depictions of finished foodstuffs apparently made using mixes, bakery mixes, toppings, compounds, flavourings, glazes, frostings, icings and fillings under the Opponent’s Trade Marks. Also shown are headings for categories of goods sold under the Opponent’s Trade Marks as follows:
‘bakery ingredients’ mentioning specifically mixes, bases and concentrates, fillings, frostings and icings, glazes, flavourings and toppings;
‘ready-to-sell products’ showing specifically brownies, cakes, cookies, muffins, doughnuts and pastry bases; and
‘American mixes, bases and concentrates’.
Importantly, the Opponent’s Website lists its four customer categories under the large heading ‘Customers we serve’ as being, ‘artisanal bakeries’, ‘food service’, ‘supermarket bakeries’ and ‘manufacturers’. From 2015 to 2022 there were 15,907 visits from Australia to the Opponent’s Website.[4]
[4] Thayer Declaration, [24].
Australian sales occur to and through four authorised distributors: Frutex, Polova, Eustralis Food Co (‘Eustralis’) and Allied Pinnacle (collectively ‘Distributors’). Customers of the Distributors who purchase goods under the Opponent’s Trade Marks include large retail businesses and bakeries. Tsoutsas-1 provides a direct statement from an employee of Frutex declaring that since 2016 Frutex had been dealing in products with the word ‘dawn’. It shows one example being a bag of tarte citron mix, bearing the Earlier Trade Mark. It also confidentially lists several large-scale customers to which the Opponent distributes goods under the trade mark Dawn. Tsoutsas-1 confirms that the declarant is familiar with the Opponent as a supplier of bakery ingredients, mixes, par baked and ready to sell bakery products and equipment in the food industry. It concludes that the declarant has no doubt that the Opponent’s trade marks ‘are used and known in Australia.’
Concerning sales to each of the Distributors, the Thayer Declaration provides a direct statement about annual sales figures for two years, though both years are after the Relevant Date. Otherwise, there are invoices which display the Opponent’s Trade Marks and addressed to each Distributor. In summary I consider the sales to each of the invoices to be of a low level and the sales as a total for each year to also be moderate for the goods in question. I note there is no demarcation between any specific goods and it was at times difficult to decipher the meaning of some product references on the invoices. Many invoices and a customer list for Allied Pinnacle’s customers who purchase goods of the Opponent are dated after the Relevant Date and so do not assist the Opponent. Some of the material is otherwise not dated, such as various website screen captures for the Frutex Website and Polava Website. The invoices for Polava are few and date from 2016 to 2019 showing sales for icing, base concentrates, cake mixes, bavarian cream bases, fillings, toppings and icings. The invoices for Eustralis date from 2016 to 2019 and show sales for fondants, syrups and glazes. The invoices to Allied Pinnacle invoices date from 2007 to 2014 and one in 2020, they show sales of mainly toppings, fillings, icing sugar, cake bases and spreads. The invoices to Frutex date from 2015 to 2021 and concern concentrates, fondants, syrup, compounds, flavourings, frosting, glazes, jelly powder, meringue mixes and vanilla starch.
Concerning advertising activities, the Thayer Declaration provides various written reports of attendance by an employee of the Opponent at demonstrations of the Opponent’s goods delivered in Australia and in cooperation with Frutex, for years 2016 and 2017. There is one visit report for 2019 which relates to events that took place after the Relevant Date. The goods shown at the demonstrations appear to be glazes, concentrates, mixes, fillings, fondants and flavourings, as well as various cake, brownie, doughnut and muffin mixes. The reported attendees at demonstrations include some major Australian retailers or bakery businesses. A report for participation of the Opponent at the Fine Food Australia exhibition is included, which took place in September 2019, though it provides no detail about the goods exhibited. A promotional document from 2019 for icing and others for unrelated promotional goods are also provided, with no circulation information. An extract from a social media account of the National Baking Industry Association, an apparent industry peak body, for events involving demonstration of the Opponent’s glazes and finishes, cake mixes, custards and fillings is also produced. The Opponent prints a magazine titled ‘Batter Up’ and provides examples from 2018, 2019 and 2020, which cover various baking related topics and contain images of finished baked goods with the Earlier Trade Mark; references to the Opponent and its trade mark ‘Dawn’ are made throughout. There is no indication of the number of readers of the magazine, or whether it is even distributed to Australian customers. Extracts of the Opponent’s various social media pages and follower counts are provided for Facebook, Instagram, Linkedin and YouTube; though these do not demarcate Australian consumers as they are global, regional or otherwise specific to countries other than Australia.
EIA
The EIA consists of the Attorney Declaration with:
Exhibit GH-01, being the Sohail Declaration and Annexures A to G, that gives history, sales and advertising expenditure information of the Applicant, as well as various invoices and examples of social media posts;
Exhibit GH-02 being a copy of the letter of acceptance regarding the examination;
Exhibit GH-03 being a notification dated 23 March 2022 indicating the Opponent had filed its two declarations for EIA; and
Exhibit GH-04 being invoices apparently supplementing the evidence shown in the Sohail Declaration.
EIR
The EIR consists of Tsoutsas-2, concerning a dating error in Tsoutsas-1, which includes a copy of an email at Exhibit 2XT-01 showing that a signed copy of the Tsoutsas-1 was sent to the Opponent’s representatives on 16 March 2022.
Preliminary matters
The Applicant’s Attorney notes Tsoutsas-1 is dated after its own filing date and argues I should not consider it. However, the evidence reflects that the month ‘May’ was mistakenly entered rather than ‘March’. Tsoutsas-2 soundly explains the irregularity. Therefore, I confirm that I have considered Tsoutsas-1 in making my decision.
Consideration
Section 44
Section 44 relevantly provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
…
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
To establish a s 44 ground of opposition all of the following must be shown:
that another trade mark application or registration exists which is in the name of a person other than the Applicant;
that the other trade mark application or registration has a priority date that is earlier than the Relevant Date;
the Trade Mark is substantially identical with, or deceptively similar to the other registered or applied for trade mark;
the Designated Goods are similar to the goods of the other registered or applied for trade mark.
For its s 44 ground of opposition, the Opponent relies on the Opponent’s Trade Marks.[5] The Opponent’s Trade Marks have priority dates which are earlier than the Relevant Date and both are in the name of a person other than the Applicant.
Substantial identity
[5] See paragraph 6 of these reasons.
The test for whether two trade marks are substantially identical is expounded in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[6]
[6] [1963] HCA 66, [12] (Windeyer J).
Comparing the Trade Mark and the Earlier Trade Mark side by side I note the only differences are in the capitalisation and fonts, and that the Earlier Trade Mark contains a depiction of part of a sun whilst the Trade Mark does not. These differences are unimportant when comparing the trade marks side by side, in the context of the identical word. The word ‘dawn’ is the essential feature of both trade marks and is reinforced by the depiction of what appears to be a rising sun integrated with the word ‘dawn’. Regardless I consider this additional depiction above the letters D and A to be a minor flourish and appendage to the essential element being the word ‘dawn’. A total impression of resemblance emerges from a side by side comparison of the trade marks. I consider the Trade Mark to be substantially identical to the Earlier Trade Mark. The Trade Mark is plainly also substantially identical to Trade Mark 746461. As the statement of goods of Trade Mark 746461 is wholly contained in the Earlier Trade Mark’s goods and because I consider the word ‘dawn’ and the Earlier Trade Mark substantial identical, I need only mention the Earlier Trade Mark from here.
Comparison of goods
I must next consider whether the Designated Goods are ‘similar’ to any of the Earlier Trade Mark’s goods. The word ‘similar’ is defined as (a) the same as the goods of the Earlier Trade Mark (b) of the same description as the goods of the Earlier Trade Mark[7] I should first construe the respective contents of the language in the Designated Goods and the Earlier Trade Mark’s goods. If not the same, I should consider whether any of the goods are ‘of the same description’. The principal factors in a comparison of goods to determine whether they are of the same description are: (1) the nature of the goods, including their origin and characteristics; (2) the uses, including their purpose and (3) the trade channels through which the goods are bought and sold.[8] Relevant also is how consumers might regard the goods, including practically whether they would be likely to view there as being a single trade origin. I should be concerned with the notional fair use of goods expressed in the specification of each trade mark and not actual use of the parties. The parties provide no evidence about the comparison of goods, other than a general statement of similarity between goods by the Opponent. The Applicant does not test the issue in any way.
[7] Section 14(1).
[8] Re Jellinek’s Application [1946] RPC 59 (Romer J); Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [280] and [286] (Burley J).
I should first construe what the respective claims have in their boundaries and whether anything is identical. I read the Earlier Trade Mark’s goods in class 30 for essentially various ‘bakery goods’ as referring to finished and pre-prepared baked goods being foodstuffs which might be prepared, finished or otherwise made to varying degrees of participation by a bakery, whether local or of a larger manufacturing nature. The words are also broad enough to refer to some foodstuffs intended for use by, or for finishing at, a baker or bakery, such as dough. It is readily apparent that some Designated Goods fit squarely within the bounds of the class 30 claim of the Earlier Trade Mark for bakery goods. These are: ‘Frozen pastry; Frozen pastry sheets; Meat dumplings (cooked meat in a pastry envelope); Pastry; Bread; Frozen dough; Frozen pastries; Frozen pizzas; Tortillas; Snack foods consisting principally of bread; Snack foods made of wheat; Cakes; Crackers; Biscuit products; Biscuit rusks; Biscuits; Salted wafer biscuits; Meal; Pastries consisting of vegetables and meat’.
I consider ‘non-dairy frozen dessert products’ and ‘frozen fruit desserts’ to be similar to the Earlier Trade Mark’s goods for ‘bakery mixes being fruit-based fillings, concentrates and toppings’. Many of these goods consist of cream or fruit, or other sweet matter used as a mix, concentrate or topping. All are forms of confectionary which are similar in nature to some confected bakery goods and consumed as deserts or sweets. However, ‘frozen ices; frozen lollipops’ on my assessment have different makers, are of a different nature and are consumed in a frozen state. They are made of different ingredients and manufactured by different processes. Consumers are not likely to consider them as being of the same trade source as bakery goods. I do not consider the Designated Goods ‘sauces for rice’ to be similar to the Earlier Trade Mark’s goods ‘[b]akery mixes being fruit-based fillings, concentrates and toppings in this class’, or any of the Earlier Trade Mark’s goods. I consider the Earlier Trade Mark’s goods in class 29 as being qualified as bakery goods and being fruit based, likely in the nature of desert or sweet-related goods, whereas sauce for rice is usually something savory. Makers of the goods are also likely different.
Without evidence or submissions regarding the comparison of the goods, I am not satisfied that the following Designated Goods are similar: ‘Bibimbap (rice mixed with vegetables and beef); Flavoured rices; Foodstuffs made of rice; Freeze-dried dishes with the main ingredient being rice; Fried rice; Frozen prepared rice; Meals made predominantly from rice, pasta or noodles; Prepared meals containing (principally) rice; Prepared rice dishes; Rice; Sauces for rice.’ I read the Designated Goods when they claim goods such as prepared meals or dishes, freeze-dried dishes or meals made from predominately rice, pasta or noodles, as all denoting for example a dish combining rice, pasta or noodles with a sauce mixture, gravy and/or vegetables, such as the specific Designated Good ‘bibimbap (rice mixed with vegetables and beef)’. As such they are different to ‘bakery goods’.
In summary, I consider the following Designated Goods to be similar to the Earlier Trade Mark’s goods, and the s 44(1) ground of opposition provisionally established:
Class 30: Frozen pastry; Frozen pastry sheets; Meat dumplings (cooked meat in a pastry envelope); Pastry; Bread; Frozen dough; Frozen fruit desserts; Frozen pastries; Frozen pizzas; Non-dairy frozen dessert products; Tortillas; Snack foods consisting principally of bread; Snack foods made of wheat; Cakes; Crackers; Biscuit products; Biscuit rusks; Biscuits; Salted wafer biscuits; Meal; Pastries consisting of vegetables and meat
Honest concurrent use
Even where a s 44 ground of opposition is provisionally established, if an applicant provides evidence of honest concurrent use, there is a discretion that the Registrar may exercise to register a trade mark regardless of earlier registered confusing trade marks. It is the Applicant’s onus to establish that a trade mark should be accepted subject to s 44(3)(a)[9] and reliance should be made on circumstances before the Relevant Date.[10] The factors usually considered include the honesty of adoption and continued use; the extent of use in terms of time, geographical area, and sales volume and value; the degree of likely confusion; the manner of use; the relative inconvenience caused by allowing or denying the registration of the Trade Mark; and any instances of actual confusion.[11] Knowledge of an earlier trade mark is not itself necessarily fatal[12], though adoption and use might require explanation in the face of an especially high likelihood of confusion.
[9] Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [85], number (5) (Reeves, Jagot and Rangiah JJ); Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490, [186] (Gleeson J) (‘Trident’); Hills Industries Limited v Bitek Pty Ltd (Includes Corrigendum dated 4 May 2011) [2011] FCA 94, [147] (Lander J) (‘Hills Industries’); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [238] (Besanko, Jagot and Edelman JJ).
[10] Hills Industries ibid [177] (Lander J); Trident ibid [186] (Gleeson J).
[11] Alex Pirie & Sons Ltd’s Application (1933) 50 RPC 147, 159-160 (HL) (Lord Tomlin); Re Fitton’s Application (1949) 66 RPC 110, 112 (UK Reg) which have been widely adopted and applied in Australia.
[12] McCormick & Co Inc v McCormick [2000] FCA 1335 (Kenny J); Baume & Co Ltd v Moore (A H) Ltd [1958] RPC 226, 235 (CA) (Romer J); Joseph Rodgers & Sons Ltd v W N Rodgers & Co (1924) 41 RPC 277, 291 (Ch) (Romer J).
The Applicant filed evidence during the examination, which the examiner found to be sufficient to exercise the discretion and register the Trade Mark subject to s 44(3)(a). I must consider the issue afresh with regard to the evidence filed in this opposition. In this respect, the Applicant relies on the Sohail Declaration and the Attorney Declaration. The Applicant supplies evidence it says shows ‘honest concurrent use’ and claims use since 2006. The earliest documented evidence of first use is dated from November 2008 for small quantities of paratha, sheermal and puri and tandoori nan. I note most assertions of the Attorney Declaration simply repeat those of the Sohail Declaration and are matters which would not clearly fall within the direct knowledge of the Attorney. Throughout all of the Applicant’s evidence there is no indication of when the Applicant, or Mr Sohail, became aware of the Earlier Trade Mark. The Applicant claims there have been no reported actual instances of confusion and that this should be persuasive. It asserts that coexistence would not interfere with the respective businesses.
Crucially important for s 44(3)(a) is that the use relied upon is honest use and that it be concurrent use. The Sohail Declaration states that, ‘…when the trade mark was first used in [sic], I was not aware of other trade marks containing “DAWN”’. This statement omits reference to any particular country after the word ‘in’. The statement is limited to the personal knowledge of Mr Sohail, the individual declarant. What Mr Sohail’s role in the company entails, his access to documents or any inquiries he made is not specified. It is not for example clear what knowledge the Applicant might have aside from that of Mr Sohail, for example, by other office holders or employees. Nor is it clear that Mr Sohail was for example responsible for filing the Trade Mark. The statement regarding knowledge of the Trade Mark is limited to Mr Sohail’s own knowledge. This contrasts with another statement which is more general and refers to the Applicant itself: ‘the Applicant has not received any correspondence from the owners of an earlier trade mark, or its representative, to suggest confusion or infringement of an earlier trade mark through the use of the trade mark.’[13] This appears at least partially contradicted insofar as overseas jurisdictions are concerned, given various disputes between the parties. The Opponent submits that there is no explanation about the conception of the Trade Mark evident in the Sohail statement nor is there any indication of a search conducted before adoption or use in Australia. It also submits that the Applicant should not be able to claim an unawareness when it was aware of various disputes in other jurisdictions. I do not accept that a dispute overseas compels a conclusion about honesty for the purposes of adoption and use in Australia. However, I do consider the evidence to be incomplete in what it can demonstrate regarding honesty and note that the Trade Mark is substantially identical to the Opponent’s Trade Marks. In these circumstances further explanation around the conception of the Trade Mark and adoption for use in Australia is warranted. I recall that it is the Applicant who bears the onus,[14] including the crucial element of honesty. I cannot be satisfied on the brief, incomplete and vague statements of Mr Sohail or other evidence before me, that the use upon which the Applicant seeks to rely was ‘honest’.
[13] Sohail Declaration, [15].
[14] Medicon eG Chirurgiemechaniker-Genossenschaft v Medison Co Limited [2000] ATMO 12 (Hearing Officer Thompson). The Opponent also refers me to Chris-telle Pty Ltd v Australian Swimming Inc [2004] ATMO 60 (Hearing Officer Dunn), NSE Products Ltd v International Waters Pty Ltd [2011] ATMO 35, [43] (Hearing Officer Thompson) and Climate Technologies Pty Ltd v Carrier Air Conditioning Pty Ltd [2011] ATMO 49, [23]-[55] (Hearing Officer Thompson).
There are further issues with the evidence concerning honest concurrent use. The limited geographical expanse of the Applicant’s use, which can be relevant, is reflected in the invoices as being made out to only three businesses; two of which are in New South Wales and one in Victoria. Much of the other evidence is simply irrelevant as it relates to goods other than the Designated Goods or is dated after the Relevant Date, including all of the material in GH-04 to the Attorney Declaration. There is no information about the rate of visitation to any websites referred to in the materials. The social media activity is also not clearly targeted at consumers in Australia, the extracted Facebook page having a contact number overseas referring to availability of products to consumers in Karachi, Pakistan in one post. Various claims of use are general and without indication of it being in Australia and no evidence for certain years of alleged use. The Sohail Declaration declares the Applicant has 400 customers, though it is not clear they are in Australia. As mentioned, there are perhaps 3 shown in corroborating documentation. The Applicant’s Attorney makes an unsupported argument that the market for the goods is with persons with connections to Pakistan, though a significant number of these people would be outside Australia. This assertion does not go beyond speculation and is without supporting evidence.[15]
[15] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 48, [27]-[28] (Kennet J)
Some limited use by the Applicant of Trade Mark is shown in invoices since November 2008 and in 2009, 2010, 2013 to 2016. As will be seen this is for a limited category of goods. Importantly, many materials, especially invoices, are not clear about whether itemised goods bear the Trade Mark, and the brand title in the list appears as ‘Dawn / Mezban branded goods’, examples include those in invoices dated 30 April 2019, 5 April 2018, 14 January 2017, 25 October 2016, 2 February 2015, 28 January 2014 and the 4 August 2013 bills of lading. Similar words occur in the list for a 10 May 2010 bill of lading. It appears ‘Mezban’ is another brand of the Applicant. Some invoices are dated after the Relevant Date and do not assist. Some invoices show a logo including the word ‘Dawn’ in the header, with goods labeled ‘Mezban’ in the list. I do not consider the use of this logo as remedying the issue I mention above and these invoices appear to be evidence of wholesaling or distribution services rather than use of the Trade Mark for the Designated Goods in question. Considering all invoices, the Trade Mark appears to have only been used in respect of more limited goods than in the language of the Designated Goods being specifically plain paratha, onion paratha, lachha paratha, sheermal, puri and tandoori nan; all being forms of breads or flat-breads. Overall, the invoices reflect a low sales volume even if I do not discount the items listed on the invoices for the ‘Mezban’ goods, or even if I do not discount the materials dated after the Relevant Date.
The Sohail Declaration provides an annual turnover figure in a general statement without specification for particular years. The amount is also not declared as a figure specifically relating to Australia other than to say it has increased by 30% in the last four years. The Sohail Declaration indicates an annual turnover as approximately $300,000; this appears to be an average figure per year. The Applicant’s Attorney appears to update this amount since the date the Sohail Declaration was made, this additional amount does not assist. In my estimation these are also low figures and even as a total figure I consider this low for the goods in question. Whilst the Designated Goods are solely for goods the statement regarding turnover concerns ‘goods/services [emphasis added] using the Trade Mark’, which further confounds the relevance of these figures. I consider the future sales forecasts and projected advertising expenditure (that is after the Relevant Date) to be of limited assistance to the Applicant. What they do show is a limited relative inconvenience of the Applicant. In summary, the quantum of concurrency of use that is also shown is low. The evidence does not demonstrate that the trade marks can coexist in the way asserted by the Applicant. Aside from the issues regarding honesty, the evidenced use is insubstantial. The use shown otherwise is not such that I should apply the discretion, and register the Trade Mark noting the clear inconvenience to the Opponent.
Low amounts for advertising and promotion have been expended. It is unclear whether the figure given is a total figure or it is for a specific year. It is also unclear how much of this spend was on advertising to Australian consumers. A low amount is specified as allocated for the year 2020/2021 with an anticipated increase in advertising expenditure. There is also material of unclear relevance as it simply shows perhaps concepts for advertising on a truck and t-shirts with the word ‘Dawn’, without any context about how these are commercially used or how they demonstrate honest concurrent use.
I am not satisfied that s 44(3)(a) is applicable or that I should apply it to register the Trade Mark. For completeness I also note that I am also not satisfied on the evidence that other circumstances would make it proper to apply s 44(3)(b).
Conclusion on s 44
Accordingly, I am satisfied that the s 44 ground of opposition is established for the following goods:
Class 30: Frozen pastry; Frozen pastry sheets; Meat dumplings (cooked meat in a pastry envelope); Pastry; Bread; Frozen dough; Frozen fruit desserts; Frozen pastries; Frozen pizzas; Non-dairy frozen dessert products; Tortillas; Snack foods consisting principally of bread; Snack foods made of wheat; Cakes; Crackers; Biscuit products; Biscuit rusks; Biscuits; Salted wafer biscuits; Meal; Pastries consisting of vegetables and meat
I now must consider whether the remainder of the Designated Goods (‘Residual Designated Goods’) should be the subject of a ground of opposition under ss 60 or 42(b). I reproduce the Residual Designated Goods below for ease of reference:
Class 30: Frozen ices; Frozen lollipops; Frozen meals consisting primarily of pasta; Frozen meals consisting primarily of rice; Bibimbap (rice mixed with vegetables and beef); Flavoured rices; Foodstuffs made of rice; Freeze-dried dishes with the main ingredient being rice; Fried rice; Frozen prepared rice; Meals made predominantly from rice, pasta or noodles; Prepared meals containing (principally) rice; Prepared rice dishes; Rice; Sauces for rice.
Section 60
The Opponent relies upon s 60, which I need only address for the Residual Designated Goods. Section 60 section provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
What the Opponent must show is that because of a reputation acquired in a trade mark, usually based on its use and other factors, use of the Trade Mark for the Residual Designated Goods would likely deceive or cause confusion. What is required is that there would be a real and tangible danger of deception or confusion for the Trade Mark to be used for the Residual Designated Goods. It is the circumstances at the Relevant Date which are relevant to establishing a reputation has been acquired in a trade mark.
The Opponent relies on its use of the Opponent’s Trade Marks as having acquired a reputation such that use of the Trade Mark for the Residual Designated Goods is likely to cause deception or confusion. I note that much of the Opponent’s evidence regards sales and other activities which are often dated after the Relevant Date and do not assist. The Opponent provides evidence of a reputation by mainly invoices and advertising expenditure/activities. Those sales have been low in amount. However, much of the evidence shows sales to professional bakers or manufacturers of foods, including some prominent ones. No information was provided about the industry for provision of bakery ingredients, though the Opponent’s business is international and it appears to work by scale, and across small to large bakeries. The reputation does not appear to be with the end consumer of finished goods, especially not of prepared meals, rice products or dishes, frozen ices, ice-lollipops or otherwise as for the Residual Designated Goods. If there is a reputation in any of the Opponent’s Trade Marks, it would be for various doughs, frostings, icings, sugar, concentrates and compounds, bases and mixes, toppings and icings, as well as prepared cakes, muffins; all being sweet bakery goods. The evidence reflects a particular reputation in this regard. It is not clear that the end consumers ever even see the Opponent’s Trade Marks when they consume goods prepared by the bakeries purchasing the Opponent’s goods. Overall, my opinion is that to the extent that the Opponent’s Trade Marks may have a reputation (albeit a limited one) it is in respect of particular specialist goods for bakeries.
I must now ask whether, because of that acquired reputation for each of the Opponent’s Trade Marks, deception or confusion is likely to follow from use of the Trade Mark for the Residual Designated Goods.[16] I must consider the hypothetical use of the Trade Mark for the Residual Designated Goods in the whole of Australia.[17] It is enough if a person would be caused to wonder whether the goods derive from the same trade source. The Opponent’s Trade Marks and the Trade Mark are substantially identical, which does add to the risk of deception or confusion. However, the differences between an applicant’s goods and the nature of the reputation can be a factor to consider. I consider the Residual Designated Goods to be finished goods, sometimes as meals, whereas the reputation is specialised and for more upstream ingredients, par prepared and prepared sweet goods, for preparation and sale by bakeries to consumers for consumption. I am not satisfied that consumers would see the source for the reputed bakery goods as likely extending into the Residual Designated Goods.
[16] Section 60(b).
[17] Sym Choon & Co Ltd v Gordon Choon's Nuts Ltd (1949) HCA 54, [6] (Latham CJ).
Taking account of the reputation demonstrated in the Opponent’s Trade Marks I am not satisfied that use of the Trade Mark in relation to the Residual Designated Services is likely to deceive or cause confusion. Accordingly, the ground of opposition under s 60 has not been established.
Section 42(b)
Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of the Trade Mark would not could be contrary to law.[18]
[18] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
The Opponent submits that use of the Trade Mark would be contrary to ss 18, 29 and 33 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 of the Competition and Consumer Act 2010 (Cth). The Opponent also asserts that use of the Trade Mark would amount to the common law tort of passing off. At the hearing the Opponent’s Attorney conceded its ground of opposition under s 42 would advance no further than the ground of opposition under s 60.
Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL. Section 33 of the ACL specifically provides that a person must not, in trade or commerce, engage in conduct that is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose or the quantity of any goods.
As already indicated in respect of s 60, I am not satisfied that use of the Trade mark for the Residual Designated Goods is likely to cause deception or confusion with the Opponent’s Trade Marks. It follows that on the stricter test posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive, or amount to a false or misleading impression under ss 18 and 29 of the ACL. As I have found that s 18 of the ACL has not been contravened, it also follows that use of the Trade Mark does not amount to passing off. On the evidence and submissions, I am also not satisfied that there is conduct liable to mislead the public in the manner required for s 33 of the ACL.
The Opponent has not established that use of the Trade Mark would be contrary to law. Consequently, the ground of opposition under s 42(b) has not been established.
Decision
Section 55 relevantly provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(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.
The Opponent has established at least one ground of opposition under s 44 in respect of some of the Designated Goods.
On 16 August 2023, I wrote to the Applicant’s Attorney expressing my intention to refuse to register the Trade Mark unless the Applicant agreed to amend the Designated Goods as follows (the struck-out elements are Designated Goods which must be deleted):
Class 30:
Frozen pastry; Frozen pastry sheets; Meat dumplings (cooked meat in a pastry envelope); Pastry; Bread; Frozen dough; Frozen fruit desserts; Frozen ices; Frozen lollipops; Frozen meals consisting primarily of pasta; Frozen meals consisting primarily of rice;Frozen pastries; Frozen pizzas; Non-dairy frozen dessert products; Tortillas; Snack foods consisting principally of bread; Snack foods made of wheat; Cakes;Bibimbap (rice mixed with vegetables and beef); Flavoured rices; Foodstuffs made of rice; Freeze-dried dishes with the main ingredient being rice; Fried rice; Frozen prepared rice; Meals made predominantly from rice, pasta or noodles; Prepared meals containing (principally) rice; Prepared rice dishes; Rice; Sauces for rice;Crackers; Biscuit products; Biscuit rusks; Biscuits; Salted wafer biscuits; Meal; Pastries consisting of vegetables and meatOn 17 August 2023, the Applicant’s representative confirmed that the Applicant agreed to the amendment.
The Trade Mark should proceed to registration after the usual appeal period lapses. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued. The application for the Trade Mark should otherwise be treated in accordance with the Court’s order or direction
Costs
The Opponent has sought costs, which generally follow the event. As both parties have had some measure of success, I decline to make an award of costs.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
25 August 2023
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12
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