Global Commodities Inc v Nadi Holding GmBH

[2023] ATMO 62

TRADE MARKS ACT 1995

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

ReOpposition by Global Commodities Inc to application by NADI Holding GmBH for removal of trade mark 895562 (30) – AAHU BARAH - in the name of Global Commodities Inc

Delegate:                 Robert Wilson

Representation:       Opponent: Ian Horak SC, instructed by Madderns Pty Ltd

Applicant: Susan Gatford of Counsel, instructed by Baxter Patent Attorneys Pty Ltd

Decision:                   2023 ATMO 62

Trade Marks Act 1995 (Cth) - Section 96 opposition: opposition to application for removal pursuant to ss 92(4)(a) and 92(4)(b) unsuccessful – trade mark to be removed from Register

Background

1. Global Commodities Inc (‘Opponent’) is the registered owner of trade mark registration 895562, relevant details of which are as follows:

Trade Mark Number:	895562
Filing Date:	21 November 2001
Specification of Goods:	Class 30: Rice, rice meal, rice flakes, rice flour, cereal preparations, pastry products made from rice and from rice preparations (‘Challenged Goods’)
Trade Mark:	AAHU BARAH	(‘Challenged Trade Mark’)

2. Unless otherwise indicated, any references to parts, sections or regulations, below, are references to parts, sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.

3. On 10 March 2020, NADI Holding GmBH (‘Applicant’) filed an application for removal of the Challenged Trade Mark from the Register of Trade Marks (‘Application’). The Application was made under both ss 92(4)(a) and 92(4)(b). The Applicant alleged that on the Filing Date the Opponent had no intention in good faith to use the Challenged Trade Mark in Australia in relation to the Challenged Goods: s 92(4)(a).  The Applicant also alleged that the Challenged Trade Mark was not used by the Opponent in good faith in relation to the Challenged Goods at any time during the three year period ending on 10 February 2020 (‘Relevant Period’): s 92(4)(b). In response, the Opponent filed a Notice of Opposition, consisting of a Notice of Intention to Oppose and a Statement of Grounds and Particulars. The Removal Applicant subsequently filed a Notice of Intention to Defend the Application.

Evidence

4. The Opponent filed the following Evidence in Support of its opposition (‘EIS’):

• Declaration made on 23 November 2020 by Nazifa Anum Bakhtari, the General Manager of the Opponent, with Exhibits NAB1 to NAB7 (‘NB 1’);

• Supplementary Declaration made on 23 November 2020 by Nazifa Anum Bakhtari, with Exhibits NAB8 to NAB11 (‘NB 2’); and

• Declaration made on 23 November 2020 by Fishta Sayed, a sole trader trading under the name Ariana Distributors, with Exhibits FS1 to FS6 (‘Sayed 1’).

5. The Removal Applicant filed the following Evidence in Answer (‘EIA’):

• Declaration made on 26 May 2021 by Ahmad W Ghowsi, the Managing Director of ABZ Group Pty Ltd (t/a ABZ Foods), with Exhibit AG-1 (‘Ghowsi declaration’);

• Declaration made on 26 May 2021 by Ataullah Amini, the founder and managing director of Ataco Pty Ltd; and

• Declaration made on 26 May 2021 by Warren Goodwin Chandler, a registered patent and trade mark attorney at Baxter IP Patent Attorneys Pty Ltd, with Exhibits WGC-1 to WGC-6 (‘Chandler declaration’).

6. The Opponent filed the following Evidence in Reply (‘EIR’):

• Declaration made on 22 July 2021 by Muhammad Khurram Javed, a legally qualified lawyer with the right to practice in Pakistan;

• Declaration made on 24 July 2021 by Waleed Ahmad, the owner of Nasir Rice Industries;

• Declaration made on 23 July 2021 by Saad Tariq, the Chairman and Chief Executive Officer of Safariq Enterprises, with Exhibit ST1 (‘Tariq declaration’);

• Declaration made on 27 July 2021 by William Grant McFarlane, a registered patent and trade marks attorney at Madderns Pty Ltd, with Exhibits WGM1 and WGM2;

• Declaration made on 25 July 2021 by Nazifa Anum Bakhtari with Exhibits NAB12 and NAB13 (‘NB 3’);

• Declaration made on 25 July 2021 by Zarghouna Bakhtari, the sole shareholder and president of the Opponent (‘ZB declaration’);

• Declaration made on 25 July 2021 by Fishta Sayed with Exhibits FS7 and FS8 (‘Sayed 2’).

7. Once the time allowed for filing evidence had ended the parties requested an oral hearing. I note that there were delays during the evidence stages as a result of extensions of time for filing evidence. I heard the matter on 15 February 2023 as a delegate of the Registrar of Trade Marks. Ian Horak SC, instructed by Madderns Pty Ltd, appeared for the Opponent. Susan Gatford of Counsel, instructed by Baxter Patent Attorneys Pty Ltd appeared for the Applicant. Both representatives’ oral submissions were supplemented by written submissions which were filed with IP Australia prior to the hearing.

The Opponent

8. According to NB 1:

The term AAHU BARAH means ‘fawn’ in the Persian language. My father, Abduhl Qader Bakhtari, started using this brand name in connection with the sale of rice in Pakistan in 1990 and then popularised the brand within the United States in the 1990s after my father moved to the US. The brand took off because of decades of hard work that my father put into developing and marketing the rice and the high quality of the rice which was distributed under the brand. …

Over the years the AAHU BARAH brand became a hit amongst the Persian diaspora in the United States of America and the popularity of the brand then expanded to other countries around the world, including Australia. …

When my father passed away in 2016, ownership of the business was transferred from my father to my mother, Zarghouna Bakhtari.

The Applicant

9. There is no declaration filed in this matter by any office holder of the Applicant; however, for the purpose of providing a brief background of the Applicant, the Applicant’s submissions state that:

[T]he Applicant is a German company based in Hamburg. It is the owner of numerous long standing AAHU BARAH marks registered in Germany, including for the word mark AAHU BARAH since 4 March 2020, but also for some 20 years before that for other marks including that word. …

The Applicant sources basmati rice in Pakistan and, as well as supplying it in Europe, ships it by the container load from Pakistan to Australia to its exclusive Australian distributor, ABZ Group Pty Ltd trading as ABZ Foods.

1. The Applicant is the owner of the application detailed below:

Application Number:

2051983

Filing Date:

20 November 2019

Specification of Goods:

Class 29: (including) Rice; Flour of rice; Rice crackers; Prepared rice dishes; Steamed rice; Husked rice; Flavoured rices

Full specification appears in the annexure to this decision.

(‘Applicant’s Goods’)

Trade Mark:

(‘Applicant’s Trade Mark’)

Legal Framework

1. Part 9 governs the removal of trade marks from the Register for non‑use. The sections of Part 9 which are most relevant to the matter in hand are ss 92, 96, 100 and 101.

2. The Application specified that it was made according to the provisions of both ss 92(4)(a) and 92(4)(b). Section 92 relevantly provides:

   Section 92.  Application for removal of trade mark from Register etc

   (1)  … a person may apply to the Registrar to have a trade mark that is … registered removed from the Register.

   (2)  The application: 

   (a) must be in accordance with the regulations; and

   (b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

   …

   (4)  An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds: 

   (a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)  to use the trade mark in Australia; or

   (ii)  to authorise the use of the trade mark in Australia; or

   (iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

   (iv)  has not used the trade mark in Australia; or

   (v)  has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

   (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner: 

   (i) used the trade mark in Australia; or

   (ii) used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates. 

3. An application under s 92(4)(a) may be made at any time after the filing date in respect of the application for registration of a trade mark. An application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application to register a trade mark.[1] I confirm that five year period has passed in respect of the Challenged Trade Mark.

   [1] Per s 93(2) prior to the amendments made to the Act as a result of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) as applies in the present matter.

4. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. However, because of the formulation of these provisions, paragraph (a), in effect, merges with paragraph (b) once a trade mark has been registered for three years. As the Challenged Trade Mark has been registered for a period longer than three years as at the date of the Application it is necessary only for me to consider the application for removal under s 92(4)(b). Section 92(4)(a) will not be considered further in this decision.

5. Sections 100(1)(c) and 100(3) indicate that the Opponent bears the onus of rebutting the allegation made under s 92(4)(b), either by establishing that the Challenged Trade Mark (or the Challenged Trade Mark with additions or alterations which do not substantially affect its identity) was used in good faith in Australia during the Relevant Period, or that there was a relevant obstacle to use. The Opponent has not asserted that there was a relevant obstacle to use, so that factor need not be considered further. I proceed on the basis that the standard of proof required is on the balance of probabilities.[2]

   [2] Following Gyles J’s approach in Pfizer Products Inc v Karam (2006) 70 IPR 599 with respect to oppositions under s 52 of the Act. See also the recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133] affirming Gyles J’s approach.

6. Section 101(1) provides the Registrar with the discretion to remove the Challenged Trade Mark from the Register ‘in respect of any or all of the goods and/or services to which the [removal] application relates’. Section 101(3) explicitly provides that the Registrar has the discretion not to remove the impugned trade mark (if the Registrar is satisfied that it is reasonable to do so), even if the grounds on which the application was made have been established.

7. Subject to the discretion discussed above, to successfully oppose the Application the Opponent must establish that it used the Challenged Trade Mark during the Relevant Period. It is necessary that the Opponent provide evidence of use which is clearly dated and shows use during the Relevant Period. Evidence of use which falls outside of the Relevant Period is generally of little or no assistance to the Opponent in establishing use during the Relevant Period.

Instances of use relied upon by Opponent

1. It is conceded by the Opponent that any use of the Challenged Trade Mark by the Opponent is in connection with rice only. The Opponent relied upon a number of uses of the Challenged Trade Mark which it submits are, taken individually and together, sufficient to establish use during the Relevant Period. Those uses are:

   ·     Use 1: Importation into Australia of bags of rice bearing the Challenged Trade Mark in September 2019;

   ·     Use 2: Re-packaging and local sale to Thornie Continental and Huntingdale Halal Meats;

   ·     Use 3: Sale to others;

   ·     Use 4: Specific promotion via Facebook and YouTube; and

   ·     Use 5: Presentation and use of the Challenged Trade Mark in social media accessible in Australia.

2. As an indication of the possible milieu in which this dispute sits, I note the statement of Nazifa Bakhtari in NB 3 that, ‘The rice export business is very competitive and some would say ruthless’, and that, ‘it is my experience that false claims have been reported to export and import inspectors that have delayed shipments and increased costs’.

3. Overall, the evidence of use in this matter is weak. There are many bald statements and little documentation provided to support many of the statements made. The Opponent appears to have recognised this and emphasised that the Registrar should consider the evidence as a whole rather than dissect it, and that the burden of proof is not ‘beyond reasonable doubt’. Nevertheless, it is possible that a single bona fide use of an impugned trade mark during a relevant period might be sufficient to rebut an allegation of non‑use.[3] Where a single use is relied upon, that use should be established by ‘overwhelmingly convincing proof’.[4] The Opponent pointed to a number of cases ‘where a single act of use was sufficient to avoid removal’.[5] While there is more than one instance of asserted use relied upon here, there are very few. In any case, as indicated above, the Registrar need only be satisfied on the balance of probabilities that there was use during the Relevant Period.

   [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

   [4] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).

   [5] Prosimmon Gold (Aust) Pty Ltd v Dunlop (Aust) Ltd (1987) 9 IPR 425 (Williams); Pd Licensing Pty Ltd v Brunswick Corporation (2001) 54 IPR 64 (Purvis-Smith); Bickford’s Australia Pty Ltd v Tata Sons Limited [2013] ATMO 100 (Worth).

Opponent / distributor relationship

1. Before moving to consider in detail the uses listed above, it is useful to provide some background of the relationship between the Opponent and its asserted distributor (during the Relevant Period, in Australia). The distributor is a sole trader, Frishta Sayed (‘Sayed’), who trades under the name Ariana Distributors. The first three uses, listed above, involve Sayed and her business.

2. There are two persons with the surname of Bakhtari who have made declarations in connection with this matter. According to the ZB declaration, Zarghouna Bakhtari is the sole shareholder and President of the Opponent—Zarghouna Bakhtari made a single declaration which forms part of the EIR. According to NB 1, Nazifa Bakhtari is the General Manager of the Opponent and the daughter of Zarghouna Bakhtari—Nazifa made three declarations, two in EIS and one in EIR. For ease of reference in the remainder of this decision Zarghouna Bakhtari will be referred to as ‘ZB’, and Nazifa Bakhtari as ‘NB’.

3. Sayed declared in Sayed 1, that she had known ZB for approximately fifteen years and, ‘I now also deal with Ms Nazifa Bakhtari’. Sayed also declared:

   [I]n 2016, I started discussions with Mrs Bakhtari about creating a business in Australia to sell AAHU BARAH branded rice. …

   I travelled to the USA to visit Mrs Bakhtari at her business premises in New York on 29/30 March 2019. I stayed for a few months between April and June 2019. I was there to learn about the business. Mrs Bakhtari showed me how to market the AAHU BARAH brand in Australia. I returned to Australia 10/12 June 2019. …

   Attached to this Declaration … is a copy of the sales agreement I made with Mrs Bakhtari to be the distributor for AAHU BARAH branded rice in Australia (‘Sales Agreement’). The sales agreement committed to the delivery of an agreed quantity of goods which included AAHU BARAH branded rice to me at my address in Western Australia … in August 2019 …

4. It is apparent from the Sales Agreement that the ‘Mrs Bakhtari’ referred to above is ZB. Additionally, to support this conclusion, is a reference to NB by Sayed as ‘Ms Nazifa Baktari’. There is no indication in the evidence as to the nature of the relationship between Sayed and ZB prior to the commencement of the 2016 discussions.

5. I note that beyond stating that ‘I now also deal with Ms Nazifa Bakhtari’ there is no suggestion in Sayed 1 that: NB was involved in the discussions between ZB and Sayed that commenced in 2016; or, that Sayed had any contact with NB during Sayed’s 2019 visit to New York; or, that NB was involved in the delivery of the rice, discussed above. Neither NB 1 nor NB 2 indicate that NB had any contact or discussions with Sayed during the 2019 visit or before. However, in NB 3, NB states that, ‘I consulted with Ms Sayed about her new business in Australia and it was decided in May 2019 that Global Commodities Inc would arrange to ship to her (rice)’. Depending on how that sentence is interpreted it may, or may not, indicate that discussions occurred between NB and Sayed during the 2019 visit. Sayed 2 does not indicate that Sayed discussed the possibility of being a distributor with NB, rather Sayed 2 makes reference to dealings with the Opponent, such as ‘Global Commodities Inc and I wanted to start small to keep costs low …’. Insofar as it is relevant, I am not satisfied that NB was involved in either the discussions regarding possible distributorship, or the arrangement of the delivery of rice which was the subject of the Sales Agreement. Whether the rice the subject of the Sales Agreement was actually delivered and, if so, when is discussed below.

Use 1: Importation into Australia of bags of rice bearing the Challenged Trade Mark in September 2019

1. In respect of Use 1, the Opponent submitted:

   The evidence shows that a shipment of 126 x 20 kg bags was received in Adelaide in September 2019 and then transported to the Opponent’s distributor in Perth. These bags were branded with [the Challenged Trade Mark] in the same way as bags typically sold in the United States market.

2. I note that there are two shipments of rice referred to in the evidence and submissions. A second shipment of rice is said to have been received by Fayed on 10 May 2020. The Opponent acknowledged that this date falls outside of the Relevant Period; accordingly, the second shipment is not relied upon by the Opponent to establish use during the Relevant Period.

3. For Use 1 to assist the Opponent it must be established that the imported rice was the subject of a distribution agreement between the Opponent and Sayed (rather than simply a purchase of rice, in the US, by Sayed—as is asserted by the Applicant). While Sayed has referred to ‘the sales agreement I made with Mrs Bakhtari to be the distributor’ there is no mention in the Sales Agreement of such a commercial relationship. The Sales Agreement is simply ‘Seller’, ZB, agreeing to sell, and ‘Buyer’, Sayed, agreeing to purchase two items (one of which is a quantity of rice). I note that the Sales Agreement is between ZB and Sayed, not between the Opponent and Sayed—the Opponent is not mentioned in the document. There is no assertion that the second item in the Sales Agreement was ever delivered, and in any case, is not relied upon by the Opponent.

4. The Applicant has described the Sales Agreement as ‘a one-off sale made in America on 3 May 2019’ and submitted that it ‘was also a sale allegedly made by Ms Zarghouna Bakhtari personally, not by the Opponent’. The Applicant submitted:

   [T]he Opponent is not a party to the sale agreement, and there is no evidence that it authorised Mrs Zarghouna Bakhtari to make that sale. What the evidence does show, however, is that:

   (a) the sale occurred wholly within America, under American law; and

   (b) the brand of the rice the subject of the sale is not stated. …

The sales agreement appears to be a contract, as submitted, which was executed in America, ‘under American law’. The Sales Agreement, indeed, makes no reference to the Opponent, however, it does refer to AAHUBARAH BASMATI SELA RICE.

1. Exhibit FS3 to Sayed 1 is declared to be ‘a copy of [an invoice] dated 5 May 2019 which was provided to me while I was in the USA’. Sayed has indicated that the invoice is confidential; nevertheless, it is safe to say the invoice is for an equal quantity of rice as that contained in the Sales Agreement and is taken to be for that rice. The invoice was issued not by the Opponent but by ‘Aahubarah USA, Inc’. The company address shown is the same as that shown for ZB in her declaration. ZB also declared that she is ‘the sole shareholder and President of Aahubarah USA’ and that ‘Aahubarah USA is a licensee of [the Opponent] of the mark AAHU BARAH pursuant to an oral license which permits Aahubarah USA to sublicense use of the mark AAHU BARAH to others’. There are no company searches, or similar, in evidence to support ZB’s statements about her shareholding or Presidency of either the Opponent or Aahubarah USA Inc.

2. The common shareholding and control of the Opponent, and Aahabarah USA is supported very poorly by the evidence in this matter. I note that the addresses shown for ZB (in her declaration) and Aahubarah USA Inc (on the invoice in FS3) are the same. I note, too, that the address given for NB in her declaration is the same as those. However, the address provided for the Opponent on the Register and in the SGP differs; although they share ‘Hicksville, New York’ as part of the address. That there is an ‘oral license’ between the Opponent and Aahubarah USA Inc is also noted. These shortcomings are noted and will be considered in the light of the evidence as a whole.

3. The Opponent relied on a number of statements to establish Use 1. These include statements made by Sayed in Sayed 1 and Sayed 2, by NB in NB 3, and by Saad Tariq (‘Tariq’) in his declaration. Many of the statements referred to in those declarations concern matters other than the date of arrival of the rice in Adelaide (such as the repackaging and local sale of the rice). Clearly, the rice could not have been re‑packaged and sold during the Relevant Period (or at all) if it had not been received, but many of the statements regarding the repackaging itself are of limited assistance at this point and will be dealt with under the appropriate heading. Sayed 1 indicated that the shipment of bags of rice ‘arrived on 30 August 2019’; however, Sayed revised this date in Sayed 2, declaring:

   My recollection that it was 30 August 2019 was slightly off and it is more likely they arrived about a week later on or about 9 September 2019 … I was estimating its arrival based on reviewing phone calls and text messages … because I did not have copies of documents of the shipment arrival.

4. The Tariq declaration refers to a Bill of Lading. This document and associated statements warrant close analysis as they purport to show when the rice arrived in Australia.

5. Exhibit ST1 of the Tariq declaration is declared to be

   an image of a Bill of Landing (sic) dated September 6 2019 which shows the arrival in Adelaide of 1202 20kg bags of 1121 Sella Rice. The customer details are not shown (for privacy reasons) but I declare that a portion (being 126 20kg bags) were on my instruction separated and on-transported to Mrs Sayed in Perth using an Australian transport company.

1. According to his declaration, Tariq is the Chairman and Chief Executive Officer of Safariq Enterprises. Tariq declared that his company ‘has produced and exported basmati rice from Pakistan Internationally since 2005’. Given Tariq’s credentials some errors in his statement, above, are surprising. The first error is that Tariq has described the document in Exhibit ST1 as a ‘Bill of Landing’ when it is clearly a ‘Bill of Lading’ and is labelled as such. A Bill of Lading is a document commonly used in the transport industry; on the other hand, there appears to be no such thing as a ‘Bill of Landing’. It is possible that this error was made by the person who drafted the Tariq declaration—that person likely being a lawyer or attorney who might not be familiar with such documents. The benefit of the doubt regarding the nomenclature is given to Tariq.

2. A Bill of Lading is a document issued by a Carrier (somebody who transports and delivers goods) to a Consignor (someone who supplies and/or owns the goods) confirming goods were received by the Carrier in an acceptable condition and are ready to be shipped. Those goods will then be delivered by the carrier to the Consignee (the person to whom the goods are to be shipped).[6] The copy of the Bill of Lading in Exhibit ST1 (‘BoL’) is blurry and difficult to read; however, that it concerns 1202 bags of Sella Rice can be made out. It appears that Safariq Enterprises is the Consignor and a Consignee located in South Australia is listed. The name of the Consignee has been redacted.

   [6] ‘Bill of Lading Explained: The Complete Beginner’s Guide’, Ice International Cargo Express (Web Page, 28 October 2022) <>

   A Bill of Lading typically bears an ‘On Board’ date and a place of issue. The only date which appears on the BoL is ‘6 SEP 2019’ and this appears in the typical location in which an ‘On Board Date’ appears in a such a document. Beneath that date appears to be the word ‘LAHORE’. The date agrees with the date referred to by Tariq. As Lahore ‘is one of Pakistan’s major industrial and economic hubs’[7] the conclusion to be drawn from the BoL is that the rice was received by the Carrier, in Lahore, on 6 September 2019.

   [7] ‘Lahore’, Wikipedia (Web Page, 15 Feb 2023) <>

   What a Bill of Lading does not include is the date the shipment was received at its intended destination. I do not accept that the Tariq declaration in conjunction with the BoL is evidence that the rice, the subject of the BoL, arrived in Adelaide on 6 September 2019. A copy of a Bill of Lading in possession of a Consignor is evidence only that the Carrier accepted the goods at the place of departure. It is not evidence when, or even if, the goods were received at the intended destination.

3. Tariq declared that ‘I sent a container to my usual vendor in Australia in August 2019’. It can safely be assumed that the ‘container’ referred to is a shipping container and that such a container destined to travel from Lahore to Adelaide would be sent by sea and road. That Tariq declared he sent the container in August 2019 supports the view that the BoL shows the date the rice was received by the Carrier in Lahore and not the date it arrived in Adelaide. The logical conclusion, therefore, is that the rice was shipped from Lahore to Adelaide and did not depart Lahore before 6 September 2019.

4. Tariq declared that the after the rice arrived in Adelaide ‘a portion …  [was] separated and on-transported to Mrs Sayed in Perth using an Australian transport company’. That Sayed received the rice the subject of the Bill of Lading on 9 September 2019, as is asserted, seems, on the face of it, impossible. There are three days, at most, for this shipment to have occurred. The distance by road between Adelaide to Perth alone is some 2,700 km, a journey which if undertaken non-stop at an average speed of 100 km/h would take 27 hours. Aside from the length of the journey by sea, there is also the loading and unloading at the various ports and any delays which might arise from the need to deal with customs and biosecurity.

5. Ahmad Ghowsi declared in his declaration that he is the Managing Director of ABZ Group Pty Ltd ‘the authorised distributor for [the Applicant’s] goods in Australia’. Ghowsi—referring in part to the delivery of the rice to Fayed at her home address in suburban Perth—declared, that, ‘a genuine importer would have a secure location, a shipping Bill of Lading, import entry declarations, biosecurity Direction and biosecurity inspection documents (compulsory for rice)’. Exhibit AG-1 to the Ghowsi declaration is declared to be ‘the type of documents required to show genuine sales and imports of rice products into Australia’. AG-1 includes a number of documents associated with the shipment of rice. One of the documents is a ‘Fumigation Certificate’. The certificate shows that fumigation services were ‘carried out … in accordance with Treatment schedules and internationally accepted standards’. The certificate shows that a container of 23 tons of rice was fumigated at the port of Karachi for a period of 48 hours. AG-1 also includes a ‘Biosecurity Direction – Inspection: Inspect (unpack)’ issued by the Commonwealth Department of Agriculture, Water and the Environment. The direction indicates that an inspection for ‘the presence of a germ, paddy grains, rice hull, germ and other BRM including Khapra beetle’ is carried out. This evidence from the Ghowsi declaration serves to add significant weight to the view that it is impossible for a shipment of rice to travel from Pakistan to Perth via Adelaide in three days.

6. It is not accepted that the BoL evidences arrival of a shipment in Australia of rice destined for Sayed during the Relevant Period.

7. A further question with this shipment concerns the trade mark which appeared on the bags of rice referred to by Tariq. It is submitted that the bags of rice ‘were branded with [the Challenged Trade Mark] in the same way as bags typically sold in the United States Market’. The Opponent referred to a number of statements in Sayed 1 and Sayed 2 to support this submission. However, it is apparent from the Tariq declaration that the entire shipment of rice was originally intended for another customer and that on his instructions a portion of the shipment was ‘separated and on-transported to Ms Sayed in Perth’. As the shipment was intended for a different customer, it seems unlikely that the bags of rice would have borne the Challenged Trade Mark. If the whole shipment bore the Challenged Trade Mark the Opponent would surely have pointed to this as use of the Challenged Trade Mark in Australia, by the original intended recipient. This leads into the discussion of Use 2.

Use 2: Re-packaging and local sale to Thornie Continental and Huntingdale Halal Meats

1. It is declared in Sayed 2 that:

   [I]n September 2019 I received a shipment of 2 pallets including 126 bags at 20kgs each of Aahu Barah branded rice from Global Commodities Inc. …

   I received the 126 20kg bags of Aahu Barah branded rice and repacked all of that rice into different sized bags including 480 4.5kg bags and 240 1kg bags … Those US 10lb/4.5kg bags had Global Commodities Inc on the bottom of [the Challenged Trade Mark] that is typically sold in the US. I was also sent empty 1kg bags that were printed with my distribution name and contact information, because I had complained to Global Commodities inc that the 4.5kg had their information and my customers would not be able to contact me. So Global Commodities Inc made arrangements with a bag printing company they have worked with to send me 1kg bags bearing [the Challenged Trade Mark] and also having my contact details, as depicted in Exhibit FS6 to [Sayed 1].

2. It is not stated, when the bags used for the described repackaging of the rice were sent to Sayed, where they were sent from, or when Sayed came into possession of them. Nor is there evidence from the ‘bag printing company’ about printing or supply of bags to Sayed. It is unclear whether Sayed requested the bags following arrival of the rice and thereby becoming aware of the unsuitable packaging, or whether, perhaps the bags were sent to her in anticipation of the arrival of the rice on the assumption that the rice would need to be repackaged. That Sayed would be sent approximately 2.5 tonnes of rice with the expectation that she re-package it by hand and, in anticipation of this, bags were sent to her prior to the arrival of the rice seems unlikely. It seems far more likely that Sayed would have been sent rice in packaging which the sender deemed appropriate, and then having received the rice Sayed would have requested replacement bags for the repackaging. In the latter scenario, if the rice were received in September 2019 there would likely be a significant delay between arrival of the rice and receipt of replacement bags—in particular the 1kg bags following the complaint about the 4.5kg bags.  This leads into discussion of the local sale of rice to two businesses.

3. Sayed declared in Sayed 2, ‘by mid-September 2019 I began to supply rice in the 1Kg (some as samples and others I sold) and also sold 4.5kg bags to customers and prospective customers’. It was declared in Sayed 1 that Sayed’s customers included Thornie Continental and Huntingdale Halal Meats. Sayed 1 exhibits invoices to both of those businesses. The first invoice, dated 20 September 2019, is headed Ariana Distributors and is for a small quantity of goods described as ‘AHUUBARAH RICE’. The second invoice is dated 10 December 2019, and is for a small quantity of ‘AHUBARAH RICE’ (sic). The Opponent submitted that these invoices constitute use of the Challenged Trade Mark during the Relevant Period. Because of the significant weaknesses with the evidence and the question marks which remain, I am not inclined to afford these invoices significant evidentiary weight.

Use 3: Sale to others

1. Use 3 is submitted to be sales by Sayed ‘of 4.5 and 1kg bags to other not identified customers’. These sales are not supported by any documentary evidence.

Use 4: Specific promotion via Facebook and YouTube

1. The Opponent submitted that it

   promoted the Challenged Trade Mark to consumers in Australia through a specific promotion on Facebook during [the Relevant Period]. This promotion involved a YouTube video that people in Australia viewed. The advertising data obtained shows that there were at least 59 and 55 views from Queensland and New South Wales, respectively, during the Non-Use Period.

2. In Ward Group Pty Ltd v Brodie & Stone Plc, Merkel J stated:

   [The use of a trade mark on the Internet, uploaded to a website outside of Australia, without more, is not use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However … if there is evidence that the use was specifically intended to be made in, or directed at, a particular jurisdiction then there is like to be use in that jurisdiction where the mark is downloaded. [8]

   [8] [2005] FCA 471, [43].

3. The evidence does not establish that the promotion was specifically targeted at Australian consumers. The Applicant submitted, ‘the evidence is overwhelmingly to the contrary, with the audience reach being located over 99.5% elsewhere’. I concur with the Applicant’s submissions on this point.

Use 5: Presentation and use of the Challenged Trade Mark in social media accessible Australia

1. The Opponent submitted:

   The Opponent also used [the Challenged Trade Mark] on its website, accessible from Australia. The sample website printouts in Exhibit NAB1 show extensive use of [the Challenged Trade Mark] concerning rice. A screenshot from the website features a photograph of the packaging of rice together with contact details. The contact details listing a location in Australia have been included on the website since 22 November 2019.

2. Exhibit NAB1 to NB 1 is declared to be

   print-outs from our websites at and featuring information about the AAHU BARAH business … These websites prominently feature the AAHU BARAH Logo and the print outs include images of products featuring the AAHU BARAH Logo including rice …

3. NB declared in NB 3 that, ‘the inclusion of [Sayed’s address] for the supply of Aahu Barah brand rice in Australia … was available information [on the website] as of 22 November 2019’. It is noted that the examples provided were retrieved on 19 November 2020 (some nine months after the end of the Relevant Period).

4. Snapshots of how particular websites looked at a particular time are often available using an internet archive service, such as the Wayback Machine: no such evidence has been provided. Of note, it was declared in the Chandler declaration at paras 6 and 7:

   From my firm’s review of the internet archive ‘Wayback Machine’, we have found no evidence of use of [the Challenged Trade Mark] by [the Opponent] within the relevant period.

   From my firm’s review of the website we have found no evidence of use of [the Challenged Trade Mark] by [the Opponent] within the relevant period.

5. With respect to the above, the Applicant submitted:

   [NB] asserts that the website of November 2020 was in that form a whole year earlier. This should not be accepted, however, without documentary proof, particularly in the light of Mr Chandler’s evidence at [6] and [7] as to the negative outcome of his Wayback Machine searches.

Assessment of the evidence of use

1. Each of the asserted uses has serious evidentiary shortcomings and many leave unanswered doubts. The documentary evidence to support that a shipment of rice was received by Sayed during September 2019 is particularly poor, if not non-existent. The repacking and sale of rice during the Relevant Period can only have occurred if Sayed actually received rice during the Relevant Period. There are questions as to what trade mark appeared on the bags of rice if it was actually received. There is doubt whether the Sales Agreement is any more than that. It is not clearly established by documentary evidence that Sayed was acting as a distributor for the Opponent. This leaves aside the question of whether an agreement for sale of rice by ZB is actually a sale by the Opponent. The website evidence is also unpersuasive. The evidence is far from convincing. Even when considered as a whole, I am not satisfied that the Opponent used the Challenged Trade Mark during the Relevant Period.

Determination of the opposed application

1. Section 101 deals with the determination of the opposition to the Application. Section 101(1) states, essentially:

   If the Registrar is satisfied that the grounds on which the application was made have been established the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

2. The inclusion of ‘may decide to remove’ in s 101(1) indicates that the decision of the Registrar to remove a trade mark from the Register is discretionary. Section 101(2) provides a similar discretion to ‘the court’. Section 101(3) explicitly states, seemingly redundantly, that there is a discretion available to the Registrar; although the discretion under s 101(1) is expressed as a discretion to remove, whereas the discretion under s 101(3) is expressed as a discretion not to remove. The Opponent has submitted that in this case the discretion available to the Registrar ought to be exercised in the Opponent’s favour.

Consideration of the Registrar’s Discretion 

1. The discretion available to the Registrar is ‘limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act’.[9] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[10] Nevertheless, the subject-matter, scope and purpose of Part 9 is the removal of unused trade marks from the Register and this should be the starting point of any consideration of the exercise of the discretion. Where an opponent has not established that a challenged trade mark was used during the relevant period, the exercise of the discretion in favour of the opponent is not one which should be exercised lightly: there must be good reason to do so. As stated by Jacob J in Laboratoire De La Mer Trade Marks:

   There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[11]

   [9] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35].

   [10] Ibid [69].

   [11] [2002] FSR 51 (Ch) 790, [19].

1. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited,[12] Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[13] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[14] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[15]

   [12] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934.

   [13] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [14] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [15] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210]. (Note that Flick J’s decision was overturned on appeal to the Full Federal Court, although not on this point.)

2. Flick J also referred to a non-exhaustive list of factors which may provide some assistance in considering the discretion, they are:

• whether there has been abandonment of the trade mark;

• whether the registered proprietors of the mark still had a residual reputation in the mark;

• whether there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;

• whether the applicant for removal had entered the market without having taking steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.[16]

  [16] Ibid, [202]–[203].

1. The Opponent bears the onus of establishing that the discretion should be exercised in its favour: it is not for the Applicant to establish that it should not.[17]

   [17] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44].

2. In asserting the Applicant’s ownership of the Challenged Trade Mark it was declared in the Ghowsi declaration:

   I was informed by several Rice producers in Pakistan that the owner of this brand was, as I had suspected, Mr Ahmad Fawad Nadi from [the Applicant] in Germany.

   I contacted Mr Nadi and invited him to Australia in November 2019. A follow up trip was needed to conclude the business transaction between [the Applicant] and My Company, therefore Mr Nadi visited us in Australia in December 2019 for the second time.

   AAHU BARAH means ‘little deer’ and or ‘deer calf’ and the only rice grade supplied is super basmati variety. The AAHU BARAH brand from NADI Holding comes from Pakistan and that is the place where I gathered the initial information about the owner of this brand.

3. With respect to ownership of the Challenged Trade Mark, the Opponent submitted:

   The Applicant asserts that it was the owner of the owner of the AAHU BARAH brand in Australia. To the extent that this is relevant to the present dispute, it should not be accepted. The Opponent is listed as the owner of the registered trade mark in Australia. It cannot be accepted that the Applicant is the owner when the Register contradicts that position.

   The Opponent is also listed as the owner of [the Challenged Trade Mark] in Pakistan, so rice imported from that country bearing [the Challenged Trade Mark] originates from the Opponent. The Opponent is also the owner of an extensive reputation in that country. The Applicant was previously denied permission to export rice products from Pakistan bearing the trade mark.

4. The Opponent submitted the following in respect of the discretion:

   First, the Opponent has shown an existing business in relation to [the Challenged Trade Mark] in Australia both before, during and after [the Relevant Period]. It cannot be said that the Opponent has abandoned [the Challenged Trade Mark]

   Second, the Opponent is using [the Challenged Trade Mark] internationally, and the position in Australia is entirely consistent with the international position.

   Third, the Opponent, not the Applicant, has a claim to [the Challenged Trade Mark] in the circumstances [of asserted ownership by the Applicant (discussed above)]. The Applicant cannot establish any legitimate claim to ownership of [the Challenged Trade Mark] to support reasons why it should be removed.

5. The Applicant’s submissions in respect of the discretion are as follows:

   There is evidence that the Opponent abandoned [the Challenged Trade Mark] in the years leading up to [the Relevant Period] and during the bulk of the 3-year period.

   There is no evidence that the [Challenged Trade Mark] is well known in Australia. To the extent (if at all) that the position internationally is relevant (which the Applicant disputes) the nature and extent of the Opponent’s use in the USA (past and present) is not at all clear.

   There is also no direct evidence of subsequent sales by the Opponent under [the Challenged Trade Mark]. The ‘post use’ evidence is largely that rice has been promoted for sale or giveaway under [the Challenged Trade Mark] on Facebook in Western Australia commencing in mid-2020. However, the Opponent ought not to be able to rely on that limited and subsequent us, most likely prompted by the non-use application itself, to save a registration that has sat on the Register unused for well in excess of the statutory 3-year period.

   On the other hand, the Applicant in 2019 appointed an exclusive distributor in Australia and substantial quantities of Nadi Aahu Barah brand rice have since arrived in Australia (more than 24,000kg). [The exclusive distributor] has also appointed a sub-distributor in Western Australia … The Applicant has also applied for a trade mark and has a legitimate interest in obtaining registration of that mark, which is currently deferred pending the outcome of this opposition. …

   In short, the Opponent, who bears the onus of establishing persuasive evidence sufficient to affirmatively satisfy the Registrar’s delegate that a positive exercise of the discretion in its favour is reasonable, has failed in this task.

6. I find the Applicant’s submissions persuasive. The Opponent has not established that it is appropriate for the Registrar’s discretion to be exercised in its favour. The Challenged Trade Mark is, therefore, to be removed from the Register in respect of all of the Challenged Goods.

Decision

1. As the Opponent has not rebutted the allegation of non-use, the ground for removal has been established. I decide therefore that the Challenged Trade Mark be removed from the Register after one month from the date of this decision. In the event of an appeal from this decision, the trade mark will not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that decision.

Costs

1. The Applicant sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
16 May 2023