Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited - [2023] FCAFC 175

FEDERAL COURT OF AUSTRALIA
Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited [2023] FCAFC 175

Appeal from: Halal Certification Authority v Flujo Sanguineo Holdings Pty Ltd [2021] FCA 1399

File number: NSD 1286 of 2021

Judgment of: NICHOLAS, BURLEY AND CHEESEMAN JJ

Date of judgment: 2 November 2023

Catchwords:
TRADE MARKS – where appellant’s trade mark registered in respect of services comprising (inter alia) issuing halal certifications to businesses and individuals for goods and services if religious and technical requirements are met (“the registered services”) – whether primary judge erred in finding that the respondents’ use of a logo on their packaging (“the Packaging Logo”) that was substantially identical to the appellant’s registered trade mark (“the Trade Mark”) was not “use” as a trade mark pursuant to s 120 of the Trade Marks Act 1995 (Cth) (“the Act”) – whether primary judge erred in finding that respondents’ use of the Packaging Logo was otherwise outside the scope of s 120(1) and (2) of the Act – consideration of whether Packaging Logo was used in relation to the registered services or services closely related to the registered services or goods closely related to the registered services – whether primary judge erred in finding that respondents’ use of the Packaging Logo was in good faith – whether primary judge erred in finding that the use of the Trade Mark was likely to deceive or cause confusion – whether primary judge erred in finding that the Trade Mark was not capable of distinguishing the appellant’s services from the services of other persons in relation to the registered services – whether primary judge erred in ordering cancellation of the Trade Mark and not exercising the discretion not to make such an order

Held: appeal dismissed

Legislation: Export Control Act 1982 (Cth)
Export Control Act 2020 (Cth)
Trade Marks Act 1955 (Cth) s 62
Trade Marks Act 1995 (Cth) ss 17, 41, 88, 89, 120, 122
Export Control (Orders) Regulations 1982 (Cth)
Export Control (Meat and Meat Products) Rules 2021 (Cth) r 2-12
Export Control (Meat and Meat Products) Orders 2005 (Cth)
Trade Mark Regulations 1995 (Cth) reg 8.2
Trade Marks Act 1905 (UK) s 39
Trade Marks Act 1938 (UK)

Cases cited:
Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 124 IPR 264
Anchorage Capital Partners Pty Limited v ACPA Pty Ltd (2018) 259 FCR 514
Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182
Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2013) 250 CLR 640
Australian Woollen Mills Limited v FS Walton & Co Ltd (1937) 58 CLR 641
Banque Commerciale SA (in liq) v Akhil Holdings Ltd (1990) 169 CLR 279
Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft (1965) 120 CLR 285
Betfair Pty Ltd v Racing New South Wales and Another (2010) 189 FCR 356
Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd (2018) 129 IPR 482
Blount Inc v Registrar of Trade Marks [1998] 40 IPR 498
Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45
Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337
Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511
Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511
Colorado Group Limited v Strandbags Group Pty Limited (No 2) (2006) 69 IPR 281
Dunlop Aircraft Tyres Ltd v The Goodyear Tire and Rubber Company (2018) 262 FCR 76
E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144
Federal Commissioner of Taxation v Consolidated Media Holdings Ltd (2012) 250 CLR 503
Firebird Global Master Fund II Ltd v Republic of Nauru (No 2) (2015) 90 ALJR 270
Gould v Mount Oxide Mines Ltd (In Liq) (1916) 22 CLR 490
Halal Certification Authority Pty Limited v Scadilone Pty Limited (2014) 107 IPR 23
In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd (2020) 150 IPR 73
Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326
Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 166 FCR 312
Nature’s Blend Pty Ltd v Nestlé Australia Ltd (2010) 87 IPR 464
Pantino Inc’s Application [1966] RPC 527
Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355
R v Khazaal (2012) 246 CLR 601
Re Bali Brassiere Co Inc’s Registered Trade Mark and Berlei Ltd’s Application (1968) 118 CLR 128
Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365
Renold Chains Limited’s Application [1966] RPC 487
Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8
Shell Co Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592
Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2013] FSR 29
SZTAL v Minister for Immigration and Border Protection (2017) 262 CLR 362
Vale v Sutherland (2009) 237 CLR 638
Warnaco US Inc v Estee Lauder Cosmetics Ltd (2000) 50 IPR 143

Shanahan, Australian Trade Mark Law and Practice (Law Book Co, 1^st ed, 1982)

Division: General Division

Registry: New South Wales

National Practice Area: Intellectual Property

Sub-area: Trade Marks

Number of paragraphs: 187

Date of hearing: 19-20 May 2022

Counsel for the Appellant: Mr M Hall SC with Ms F McNeil

Solicitor for the Appellant: O’Connor Legal

Counsel for the Respondents: Mr J Castelan

Solicitor for the Respondents: Actuate IP

ORDERS

NSD 1286 of 2021

BETWEEN:
HALAL CERTIFICATION AUTHORITY PTY LIMITED ACN 068 275 203

Appellant

AND:
FLUJO SANGUINEO HOLDINGS PTY LIMITED
ACN 608 519 731

First Respondent

STEVIA SWEETENER CO PTY LTD
(FORMERLY KNOWN AS NATVIA PTY LTD)
ACN 139 748 575

Second Respondent

RAW EARTH SWEETENER CO PTY LIMITED
ACN 609 110 956

Third Respondent

NATVIA IP PTY LTD
ACN 608 519 740
Fourth Respondent

ORDER MADE BY:

NICHOLAS, BURLEY AND CHEESEMAN JJ

DATE OF ORDER:

2 NOVEMBER 2023

THE COURT ORDERS THAT:
1.The appeal be dismissed.
2.The appellant pay the respondents’ costs of the appeal.
3.Each party has liberty to make an application for a variation of order 2 by giving notice in writing of a different costs order sought and the matters to be relied on in support of the application within 14 days.

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

REASONS FOR JUDGMENT
THE COURT:
BACKGROUND

The appellant (“HCA”) appeals from a judgment of the primary judge dismissing its claim against the respondents for infringement of HCA’s registered trade mark (“the Trade Mark”) and partially allowing the respondents’ cross-claim by cancelling HCA’s trade mark registration.
Although the respondents admitted that their marks were substantially identical to the Trade Mark, his Honour found that none of the respondents used their marks as a trade mark within the meaning of s 120 of the Trade Marks Act 1995 (Cth) (“the Act”) and that, even if they had, they were entitled to the benefit of the defence under s 122(1)(b)(i) of the Act on the basis that the marks were used in good faith to indicate that the respondents’ products had a particular quality or characteristic, namely, that they were “Halal” meaning that they had been prepared, processed and managed in conformity with Islamic rites.
His Honour concluded that the use of the Trade Mark was likely to deceive or cause confusion and that HCA’s registration should be cancelled pursuant to s 88(1) and (2)(c) of the Act. His Honour also concluded that the Trade Mark was not capable of distinguishing the applicant’s services from the services of other persons contrary to s 41(2) of the TM Act (as it stood at the date of registration) and that HCA’s registration should be cancelled pursuant to s 88(1) and (2)(a) of the Act. His Honour decided not to exercise his discretion under s 88(1) and s 89 of the Act not to rectify the register.
The Trade Mark (number 1005647) is in the following form:
The Trade Mark is described in the Certificate of Registration as “figurative”. Marks of this kind are often called composite marks in that they consist of a combination of one or more words and a device.
The Trade Mark was registered to HCA with effect from 8 June 2004 in respect of the following services:
Class 42:Scientific and technical services; issuing halal certification to businesses and individuals for goods and services if religious and technical requirements are met
Class 45:Personal and social services rendered by others to meet the needs of individuals
The certificate of registration also includes the following endorsement:
The applicant has advised that the Arabic characters appearing in the trade marks may be transliterated as HALAL and translated into English as ALLOWED OR PERMITTED IN ACCORDANCE WITH ISLAMIC RITES.
It was common ground at the trial that the Arabic characters at the centre of the annulus can be transliterated as “Halal”, which translated into English means “allowed or permitted in accordance with Islamic rights”.
HCA was registered as a company in February 1995 under the name Halal Certification Services Pty Ltd. HCA adopted its current name, Halal Certification Authority Pty Ltd, on 8 June 2004, the same date on which it applied to register the Trade Mark. His Honour found that HCA is a private company that provides halal certification to businesses and individuals who are engaged in the provision of halal goods as well as related services. In June 2004 HCA was one of approximately a dozen companies that were involved in halal certification in Australia. By October 2020, the number had risen to around 25.
The marks applied to the respondents’ products were essentially identical and admitted by the respondents to be substantially identical to the Trade Mark. The primary judge referred to the mark used by the respondents to signify that their goods were halal as the “Packaging Logo” and we will do the same.
The Packaging Logo is in the following form:
We have also reproduced in Annexure A to these reasons photographs of two examples of the respondents’ products on which the Packaging Logo appeared. The first is an example of what the primary judge referred to as the “Natvia Products” (Natvia 40 x 2g sachets 80g pack sweetener) and the other is an example of what the primary judge referred to as the “Raw Earth Products” (Raw Earth Stevia and Monk Fruit All Natural Sweetener 40 x 2g sachets 40g pack).
The first respondent is a company known as Flujo Sanguineo Holdings Pty Ltd (“Flujo”) and it is the parent company of the other three respondents (collectively, the “Flujo Group”), Stevia Sweetener Co Pty Ltd (“Stevia”), Raw Earth Sweetner Co Pty Ltd (“Raw Earth”), and Natvia IP Pty Ltd.
His Honour’s reasons refer to two other companies, neither of which was a party to the proceeding, called Techniques Incorporated Pty Ltd (“Techniques”) and Hellay Australia Pty Ltd (“Hellay”). His Honour found that from 2009 until July 2015 and from October 2018 until the date of judgment, Techniques produced Natvia Products on a toll manufacturing basis with Stevia (formerly known as Natvia) sourcing all ingredients and packaging used in their manufacture. Techniques blended the ingredients in accordance with Stevia’s formulation and packaged the product at its site. The finished product was then delivered to the Flujo Group’s warehouse for distribution. His Honour found that from around May 2015, after a dispute between Techniques and the Flujo Group, Hellay manufactured Natvia Products as a toll manufacturer, using the same formula, manufacturing process and packaging as Techniques. His Honour also found that from around March 2017 until at least November 2020, Hellay manufactured Raw Earth Products.
THE RELEVANT STATUTORY PROVISIONS
The statutory provisions relevant to the issues of infringement include ss 17, 120 and 122 of the Act.
Section 17 provides:
17 What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note: For sign see section 6.
Section 120 relevantly provides:
120     When is a registered trade mark infringed?
(1)A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
Note 1:   For registered trade mark see section 6.
Note 2:   For deceptively similar see section 10.
Note 3:In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
(2)A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
(a)goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or
(b)services that are closely related to registered goods; or
(c)services of the same description as that of services (registered services) in respect of which the trade mark is registered; or
(d)goods that are closely related to registered services.
However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.
Note 1:   For registered trade mark see section 6.
Note 2:   For deceptively similar see section 10.
Note 3:In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
…
Section 7(5) provides that “use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services”.
Section 122 relevantly provides:
122 When is a trade mark not infringed?
(1) In spite of section 120, a person does not infringe a registered trade mark when:
…
(b) the person uses a sign in good faith to indicate:
(i)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
…
(2)In spite of section 120, if a disclaimer has been registered in respect of a part of a registered trade mark, a person does not infringe the trade mark by using that part of the trade mark.
As to the respondents’ cross-claim, s 88(1) of the Act provides (inter alia) that the Court may on the application of an aggrieved person order that the Register be rectified by cancelling the registration of a trade mark. The grounds on which a trade mark may be cancelled are set out in s 88(2) and relevantly include in subparagraph (a) any of the grounds on which the registration of the trade mark could have been opposed under the Act. In this case, the respondents relied on s 41(2) of the Act as it stood at the date of application for the registration of the Trade Mark. At that time s 41 relevantly provided:
41 Trade mark not distinguishing applicant’s goods or services
…
(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a)the Registrar is to consider whether, because of the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.
Note 1:For goods of a person and services of a person see section 6.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6)If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b)the time of production of goods or of the rendering of services.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
The respondents also relied on s 88(2)(c) which allows for the cancellation of a registered trade mark if “because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion.”
With regard to the discretion not to cancel a registered trade mark, s 89 of the Act relevantly provides:
89Rectification may not be granted in certain cases if registered owner not at fault etc.
(1)The court may decide not to grant an application for rectification made:
(a)       under section 87; or
(b)on the ground that the trade mark is liable to deceive or confuse (a ground on which its registration could have been opposed, see paragraph 88(2)(a)); or
(c)       on the ground referred to in paragraph 88(2)(c);
if the registered owner of the trade mark satisfies the court that the ground relied on by the applicant has not arisen through any act or fault of the registered owner.
Note:    For registered owner see section 6.
(2)      In making a decision under subsection (1), the court:
(a)       must also take into account any matter that is prescribed; and
(b)may take into account any other matter that the court considers relevant.

Regulation 8.2 of the Trade Marks Regulations 1995 (Cth) (“the Regulations”) provides:
8.2 Amendment or cancellation—matters for the court
For the purposes of paragraph 89(2)(a) of the Act (which deals with amendment or cancellation by a prescribed court), a prescribed court, in making a decision under subsection 89(1) of the Act on an application for rectification of the Register, must take into account the following matters, so far as they are relevant:
(a) the extent to which the public interest will be affected if registration of the trade mark is not cancelled;
(b) whether any circumstances that gave rise to the application have ceased to exist;
(c) the extent to which the trade mark distinguished the relevant goods and/or services before the circumstances giving rise to the application arose;
(d) whether there is any order or other remedy, other than an order for rectification, that would be adequate in the circumstances.
THE PRIMARY JUDGE’S REASONS
Certification Arrangements
The primary judge made a number of findings in relation to agreements made between Techniques and HCA. On 3 September 2003 HCA (then known as Halal Certification Services Pty Ltd) entered into the first of a number of agreements with Techniques by which HCA agreed to provide halal certification and to allow for the use of its logo (which at that stage had not yet been registered as a trade mark) to evidence that certification. On the same date HCA sent to Techniques a copy of the completed agreement and a certificate whereby HCA certified that Techniques was accredited to prepare halal goods identified in the certificate.
His Honour found that the terms of the HCA agreement dated 3 September 2003 required that Techniques agree only to market and sell as halal goods that were in fact halal. Techniques ageed to ensure that it prepared food with equipment that had been cleansed, keeping halal food separate from non-halal food, and obtaining ingredients for the preparation of halal food only from suppliers approved by HCA. The agreement provided for the payment of a licence fee by Techniques to HCA plus an inspection fee.
His Honour found that various other agreements were entered into between HCA and Techniques between January 2005 (shortly after the first agreement expired) and December 2016, all of which are in terms similar to the 2003 agreement. His Honour referred to evidence from the CEO of HCA, Ms El-Mouelhy, indicating that the various agreements were in standard form with the schedule completed for each client as appropriate to their circumstances.
His Honour found that in early to mid-2010, Mr Mark Hanna and Mr Samuel Tew, who had each been involved in establishing companies in the Flujo Group, decided it would be beneficial to have halal and kosher certifications for the Natvia products. This was because it would give some customers comfort that the products were made in a controlled environment, and would provide members of the relevant cultural and religious groups with a means to make food decisions. His Honour found that Mr Hanna and Mr Tew considered it was important that customers know who certified the product halal or kosher, and that the certification symbol should therefore be applied to the packaging.
In order to obtain certification, Techniques required evidence from the Flujo Group that the ingredients had been certified which his Honour inferred had been obtained and passed on to HCA by Techniques. In about mid-2010, Mr Hanna was notified by Techniques that the Natvia products had been certified halal and kosher. Natvia obtained reproductions in electronic form of both the HCA logo (which had by now been registered as a trade mark) and the Kosher logo (which also appears on the packaging of the relevant products) from Techniques for inclusion on the packaging. His Honour found that the two logos were first included on the Natvia products from about 2011.
On or about 10 July 2010, HCA issued a further certificate, in its standard form, signed by the Chairman of HCA, Mr El-Mouelhy, referring to Natvia goods. Further certificates were reissued to Techniques between January 2010 until December 2015. The certificate issued on about 10 December 2014, which purported to be valid until 31 December 2015, was signed by Ms El-Mouelhy (Mr El-Mouelhy’s daughter), as CEO and included the additional words, (emphasis in original) “This certificate is for the use and display by Techniques Incorporated Pty Ltd only, is valid until 31^stDecember 2015 and remains the property of this Authority”.
His Honour found that in about May 2015, there was a dispute between the Flujo Group and Techniques which resulted in Techniques ceasing to manufacture the Natvia products until October 2018. As a result of this dispute, Mr Hanna contacted Mr Ashley Hawley at Hellay, who agreed to produce a run of Natvia products urgently. His Honour found that, as a result of communication between Techniques and HCA, Natvia was removed from HCA’s list of certified halal products on 22 July 2015.
On 1 April 2016 HCA issued a certificate to Hellay which certified that it was accredited to prepare various halal goods including “Natvia”. Another certificate to like effect was issued to Hellay on 31 December 2017. A further certificate was issued to Hellay on 20 December 2018 which referred to various Natvia products (including “Natvia Stevia”) and “Raw Earth Stevia and Monk Fruit 200g Canister”. Later on the same date, Ms El-Mouelhy re-issued the certificate after deleting references to Natvia and Raw Earth. However, the re-issued certificate still referred to (inter alia) “Stevia” and “Stevia with Vanilla” and “Stevia and Monk Fruit”.
The final certificate was issued in July 2019. His Honour referred to an email sent by HCA to Hellay on 25 July 2019 attaching the certificate which no longer made any reference to Stevia or any Stevia product. This was approximately 10 months after HCA commenced its proceeding against the respondents. The email stated that the certificate had been “updated” to exclude the Flujo products “due to a continuous breach of our agreement”. His Honour noted that the dates for all three certificates issued in 2018 and 2019 was the same, viz. 20 November 2018.
The primary judge also referred to email correspondence in 2009 between HCA and Techniques concerning the procedure for adding products to a certificate issued by HCA and which indicated that the manufacturer could have other products manufactured by Techniques for other companies added to the certificate. His Honour found that HCA would have appreciated that any use of the registered mark would be by both Techniques and by the retailer for whom it produced the relevant goods. His Honour rejected evidence from HCA’s witnesses suggesting that they did not know whether Techniques was itself a retailer of the relevant goods.
His Honour found at [61]-[63]:
[61]I find that on the balance of probabilities, Mr El-Mouelhy and Ms El-Mouelhy, and through them HCA, knew that Techniques was not a retailer, and that HCA correspondingly knew that Hellay and Techniques filled the packaging of customers, and that any application of any version of the Trade Mark would be for the purposes of the packaging of the customers of Techniques. The evidence carries the clear implication that they must have been aware that any approval, express or implied, conveyed by HCA to any such contract manufacturer to use any version of the Trade Mark on packaging as a practical matter was likely to be treated as approval for such use by the contract manufacturer’s customers. This is particularly so in the present circumstances, where Techniques had indicated via email to HCA that they were seeking to incorporate a logo onto packaging, which HCA knew they did not design or produce, logically removing them from the purported category of toll manufacturer customer who only sought the certification to display on their own premises.
[62]While there was no express provision permitting any sublicensing by Techniques of the use of the Trade Mark, there is a surreal quality to HCA relying upon the non-existence of such a provision in circumstances where Techniques was a contract manufacturer, so was not obtaining the certification or applying the Trade Mark for its own products. Certification without that taking place was practically useless and would probably have resulted in no revenue for HCA. HCA must have been aware of this, as is clear enough from email traffic in evidence. In context, the certificates and approval to apply the Trade Mark logo was hollow and of no practical use to Techniques unless it applied to use on the packaging of contract manufactured goods. This is reflected in HCA’s conduct in relation to the Natvia products, by which halal certificates in relation to Natvia were issued to Techniques by HCA on numerous occasions over a number of years.
[63]Techniques did not seek any further certification or re-certification from HCA in relation to Natvia goods after the termination of the last certificate on 22 July 2015. Nor was any request received to apply the Trade Mark from that time onwards. It follows that if the presence of the Packaging Logo on either the Natvia or Raw Earth Products did constitute use of the Trade Mark, it almost certainly would have been an infringing use for the relatively limited period in which there was no certification in place, which was the only source of any right to use the Packaging Logo as a trade mark. The goods might well have been halal, but they would not have been certified halal. The key live issue is therefore the characterisation of that use.
These paragraphs appear to suggest that the primary judge was not persuaded that, if the respondents had used the Packaging Logo as trade marks on goods manufactured by Techniques, there was any infringing use before 22 July 2015, which was the date which Ms El-Mouelhy removed Natvia from HCA’s list of certified halal products. This is because up until that time, the use of the Trade Mark on the packaging of the Natvia products was authorised by HCA as signifying that the goods to which the Packaging Logo had been applied were certified by HCA as prepared, processed and managed in accordance with Islamic rites. However, that interpretation of his Honour’s reasons is at odds with his consideration of the issue of permission at [120]-[121] of his reasons where he concludes that the respondents’ use of the Packaging Logo on their products occurred without HCA’s permission. His Honour said at [121]:
As outlined above, the commercial arrangement was that HCA certified the toll manufacturers for Flujo Group, where they were likely aware that at least some of the products manufactured within the factory were not retailed by that manufacturer, and knowing at least that the manufacturer did not produce packaging for retail. This makes the proposition that no implied permission was given to the retailer to use the logo, purely because of an absence of a direct contractual relationship, difficult to accept, as it would certainly not be the toll manufacturer obtaining the benefit of having permission to use the logo. However, failure to take steps to prevent use, or giving samples of the logos to the toll manufacturer, or not actively disallowing use is not the same as giving permission. Equally, a mistaken assumption or perception as to permission is not a substitute for permission actually being given. It follows that I find that permission was not given. While the issue of permission is not determinative in and of itself, the existence of such a perception, fairly arrived at, is relevant to good faith.
The respondents’ notice of contention does not challenge his Honour’s finding as to lack of permission. Instead they relied in their submissions on the matters referred to in [121] in support of the good faith exception, which is precisely what his Honour did.
It is apparent that the primary judge found that Techniques was not certified by HCA to manufacture Natvia products from any time after 22 July 2015. In its submissions to this Court the appellant sought to emphasise that this finding related to Techniques’ manufacturing activities with respect to the Natvia products but that it did not relate to the respondents’ activities in respect of the production and supply of the Natvia products bearing the relevant mark. In essence, the appellant submitted that although Techniques had been certified by HCA to manufacture the Natvia products at all relevant times up to 22 July 2015, HCA never gave the respondents permission to use the Trade Mark on the packaging of the Natvia products. We will explain why we do not accept HCA’s submissions on this topic later in these reasons.
With regard to manufacturing by Hellay, his Honour found that Hellay manufactured Natvia Products as a toll manufacturer, using the same formula, manufacturing process and packaging as Techniques from around mid-2015. Hellay commenced manufacturing Raw Earth Products in about May 2017.
To summarise his Honour’s findings in relation to HCA’s approval of Hellay’s manufacturing operations, there was no certification in force in relation to the Natvia Products from June 2015 to 1 April 2016 and from July 2019, or, in the case of the Raw Earth Products, from July 2019. The respondents’ notice of contention does not challenge those findings.
Trade Mark Use
Having referred to the relevant statutory provisions and a number of well-known authorities concerned with the issue of trade mark use, the primary judge observed at [93]:
A practical and realistic approach permeates many of the authorities as to the inquiry required to be undertaken to assess whether infringement has occurred, as considered in some detail by Sackville J in Pepsico. It is an objective inquiry of substance, rather than mere form, although form in the sense of appearance is doubtless also a feature of substance. The assessment is to be made from the perspective of a person looking at the impugned mark and what such a person would take from it as to the purpose and nature of its use: Anheuser-Busch at 186, citing Shell Co at 425; and Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH[2001] FCA 1874; 190 ALR 185 (Full Court) at [22]-[24] and [76].
His Honour noted that HCA bore the onus of establishing trade mark infringement including that the relevant use was trade mark use.
His Honour found that the words “Halal Certification Authority Australia” were “purely descriptive”. His Honour said at [97]:
… This is so despite those words constituting the bulk of HCA’s company name. In the absence of the full company name on either the Packaging Logo or the Trade Mark, HCA has an immediate problem in relying upon the words “Halal Certification Authority Australia”, or even the subset words “Halal Certification Authority” as themselves indicating to a consumer the trade origin of the services it supplied. Even this much assumes that it is realistic to conclude that a consumer would even trouble to read those words, which is doubtful given the greater importance of the Arabic lettering signifying halal, and the small size of the logo on the packaging.
His Honour continued at [98]-[102]:
[98]The live question then is whether a member of the general public, or an ordinary and reasonable reader, would consider that there is any practical difference in using the Packaging Logo as part of a registered trade mark to signify that the products were halal. A recurring example throughout this proceeding was the comparison with the Kosher Logo which also appeared on the relevant Natvia Products and Raw Earth Products. The oral evidence as to the similarities and differences between kosher and halal food indicated that the only substantial difference is that the Islamic faith generally permits rabbits, camels, horses and shellfish to be eaten, while the Jewish faith (and thus kosher) does not. That is certainly not an exhaustive account of the differences, but it does indicate a reasonably high degree of commonality and that much of the food that is kosher is very likely also to be halal. Core limitations of both concern not using porcine products with the addition of limitations on the method of slaughter of other animals.
[99]The small display size and relatively obscure placement on the packaging for both the Packaging Logo and the Kosher Logo starkly contrast with the large and dominant size of the “Natvia” and “Raw Earth” trade marks. These trade marks were registered to Flujo Sanguineo, and were the names by which the two types of products in issue were overtly sold. The English words on the Packaging Logo and the Kosher Logo are difficult to read. While it is true the words “Halal Certification Authority Australia” are clearer than the equivalent words on the Kosher Logo, they are both more troublesome to read than just the more immediate “K” symbol and the Arabic lettering indicating halal.
[100]Most consumers or other casual readers would probably not even notice that the logo was there, even when they are on the shelf at home, given that the logos are situated on the side of the packaging, usually underneath or near the nutritional information. Annexures MOC-1, 3, 4, 6, 7, 12 and 13 to Mr O’Connor’s affidavit demonstrate this. Annexure MOC-10 to the same affidavit also provides a useful view of what a shopper would see when viewing the Raw Earth and Natvia Products at the supermarket: nearly all of the products are displayed such that the Packaging Logo is not visible. Even when one of the Natvia Products is turned on its side (specifically, either the Natvia 40 x 2g sachets 80g pack sweetener, or the Natvia 80 x 2g sachets 160g pack sweetener) the Packaging Logo is not discernible at any level of clarity, let alone sufficient to see the printing of the words “Halal Certification Authority Australia” while browsing. Finally, in Annexure MOC-8, there is a closer-up picture of some of the Natvia Products, where they appear to have been turned such that the Packaging Logo is clear to the camera. Even in this close-up view, where the products have been positioned for better clarity, it is impossible to make out the words which are on the Packaging Logo or the Kosher Logo from that distance. A shopper would most likely go no further than the immediate “K” symbol and the Arabic lettering indicating halal, which are still somewhat clearer at that distance.
[101]In the absence of any direct evidence from any consumer or any independent experts as to how packaging of this kind either was, or was likely to be, read by a consumer, the Court is left to make inferences and draw other conclusions on the face of the packaging. The respondents addressed this briefly; HCA barely at all. The above consideration is more detailed than any submission made.
[102]HCA also sought to make use of the evidence of Mr Hanna in cross-examination, and the pleading in relation to the good faith defence in s 122(1)(b)(i) of the Trade Marks Act at [17(d)] of the defence, both of which went to the subjective purpose of using the Packaging Logo. However, it is difficult to see how that subjective purpose will ordinarily serve any useful purpose in relation to the objective assessment of whether there has been use as trade mark, unless, perhaps, it has some direct bearing on the objective assessment required to be carried out. I found that evidence, pleading point, and argument, of no assistance at all in that objective assessment.
His Honour referred at [104] to evidence given by Mr Hanna who, referring to the respondents’ use of the Packaging Logo on their products, said “… in essence, it was for us to be able to simply clearly [sic] demonstrate to consumers that it was Halal”. However, his Honour went on to reiterate at [105] that he did not consider the subjective intention of officers of the Flujo Group to be of any assistance in determining whether or not there had been trade mark use but that Mr Hanna’s evidence (which we have just quoted) “correctly reflects what ultimately did occur”.

His Honour said that he was not satisfied that the whole of the device used by the respondents conveys more than the sum of its parts. By this we understand his Honour to mean that the annulus was not itself distinctive and that the mark as a whole was purely descriptive. His Honour observed at [106]:
The use of the word “kettle” in Pepsico, and the use of the words “luscious Lips” in Nature’s Blend were essentially descriptive, while the use of the phrase “Tub Happy” in the Tub Happy case was not. Unless the situation fits into the latter scenario, so as to be useful beyond being descriptive (here as to the goods being halal, or even perhaps certified as halal) there would be no infringement. That is a substantial hurdle for HCA in this case. The Arabic characters in the Trade Mark are starkly of that descriptive character, conveying in context that the goods are halal. The rest of the Trade Mark is otherwise substantially made up of words that have been refused registration as a trade mark because they are “entirely” of that descriptive character. These are the two main elements of the Trade Mark, plus the annulus. It is difficult in this case to see how these two descriptive elements could be more than descriptive when paired together, short of a level of market recognition which would create recognition of the Trade Mark beyond description. I am not satisfied that, in this case, the whole of the device conveys more than the sum of its parts.
His Honour referred at [107] to the size of the Arabic lettering and the need for a person to read and comprehend the phrase “Halal Certification Authority Australia” and to perceive that it is that entity that is the source of the certification for the product. His Honour said “that is quite a lot to predict and infer that a person shopping at a supermarket is likely to bother to do”. It is apparent that his Honour regarded the message conveyed by the use of the Arabic lettering and the word halal as allowed or permitted in accordance with Islamic rights and that this was the dominant message conveyed by the respondents’ use of the Packaging Logo. In this regard, his Honour drew assistance from two well-known High Court authorities concerned with misleading conduct in advertising (Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2013) 250 CLR 640) and branding and get-up (Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45).
In addition, his Honour had regard to the class of consumer to whom the products were directed (which his Honour said was “not entirely homogenous”) and the nature of the products themselves (products not likely to be perceived as being at high risk of not being halal). His Honour concluded at [114]:
There is nothing that I discern about the use of the Packaging Logo, having regard to its size and location, that meets the threshold of it being used as a trade mark for services. It simply would not be likely to be regarded by any reasonable consumer as any kind of indication of trade origin of any certification service. I am therefore not satisfied that applying the Packaging Logo to the Natvia or Raw Earth products entailed use as a trade mark for a service for the purposes of s 120(1) of the Trade Marks Act. This reasoning applies with equal force and effect to the halal certification services which HCA provided, and in relation to the Natvia Products and Raw Earth Products which were closely related to those services for the purposes of s 120(2)(c) or (d). This is because the threshold of use as a trade mark at all, in the chapeau to s 120(2), is not overcome, for the same reasons: see Lion Nathan at [71].
The primary judge went on to consider submissions made by the parties concerning the application of s 120(2) of the Act. His Honour concluded at [115]-[116] that the requirements of s 120(2) were not satisfied. We will return to that topic when considering the respondents’ notice of contention.
The Good Faith Exception
Having found that none of the respondents used the Packaging Logo as a trade mark, the primary judge proceeded to consider whether the good faith exception in s 122(1)(b)(i) of the Act would apply in the event that he was wrong about trade mark use.
His Honour found at [67]-[71]:
[67]After the dispute between Techniques and Flujo Group in 2015, Hellay continued to manufacture Natvia products as a toll manufacturer, using the same formula, manufacturing process and packaging as Techniques. It became clear later that halal certification was not obtained by Hellay. The evidence of Mr Hanna, and the case for the respondents, is that this was an oversight, which was sought to be rectified once discovered. The case for HCA was that this was not merely an oversight, but rather a reflection of the respondents’ callous attitude to the use of the Packaging Logo, which reflected no concern that this had taken place. This characterisation is relied upon to demonstrate a lack of good faith for the purposes of the defence in s 122(1)(b)(i) relied upon by the respondents. I ultimately conclude later in these reasons that the evidence establishes that the failure to get Hellay to obtain halal certification was no more than an oversight and falls short of indicating a lack of good faith or worse. In drawing that conclusion, I had regard to the detailed discussion on this topic by Beach J in Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; 118 IPR 239, especially at [108]-[111].
[68]In early 2016, Mr Hawley from Hellay told Flujo Group that he had contacted HCA regarding certification. Soon after that, in about March 2016, Mr Hawley was asked by Ms Azrina Iqbal of Flujo Group to obtain halal certification. Mr Hanna was told by Mr Hawley that an application form was completed with HCA and that the Natvia product was certified on 1 April 2016. Mr Hanna was not very familiar with the process because it was the manufacturer who looked after certifications.
[69]As noted above and again below, Flujo Group resumed manufacturing arrangements with Techniques in about October 2018, while continuing also to use Hellay. There was no change in the formulation or production and Mr Hanna understood that Techniques maintained the relationship with HCA, including implicitly halal certification for their manufactured products. It is likely that Mr Hanna relied upon knowledge that Techniques was certified by HCA up until 2018, which was the case based on Ms El-Mouelhy’s evidence. It is relevant that no representative of Flujo Group was copied to the email from Techniques to HCA of 22 July 2015 terminating the certificate, apparently solely in respect of the Natvia products. There is otherwise no indication that Techniques, or HCA for that matter, notified Flujo Group that the halal certification had been terminated in respect of either Natvia or equivalent generic ingredients.
[70]In about March 2017, Hellay commenced manufacturing a natural sweetener, Raw Earth Sweetener. The sweetener was made from monk fruit, stevia and erythritol, for Raw Earth as a toll manufacturer. When Flujo Group received a letter of demand from HCA on 3 August 2018, and checked with Hellay, the oversight in not obtaining halal certification was discovered. Mr Hanna asked Mr Hawley shortly after that to immediately rectify this and obtain certification for the Raw Earth product. HCA commenced this proceeding on 5 September 2018.
[71]Mr Hanna kept in contact with Mr Hawley on the certification issues, and was told in September-October 2018 that certification of Raw Earth was being approved by HCA, but that the new certificate was being withheld due to the court case. I infer from this that there was no issue as to the product in fact being halal, or any factual impediment to certification as such, other than HCA’s interests arising out of this litigation.
His Honour later found that the respondents used, and intended to use, the Packaging Logo to indicate that their products had the quality and characteristic of being halal and certified as such by HCA. His Honour said at [122]:
I am satisfied that the respondents genuinely used, and intended to use, the Packaging Logo to indicate that the Natvia Products and Raw Earth Products had the quality and characteristic of being halal and certified as such by HCA, notwithstanding my conclusion that this goes much further than a reasonable consumer or other reader would conclude. There was no issue of the respondents engaging in any clandestine use, or that HCA had not been on notice of this use, both past and potential. That much is to be gleaned from the reasoning leading to the conclusion as to use. However, discharging the burden of good faith was a more exacting task.
In considering the legal test to be applied for the purpose of a good faith defence, his Honour said at [123] “… the essential concern going to good faith is that the infringing use be honest”. His Honour also observed that other matters relevant to good faith are the absence of any conscious and deliberate act to undermine the registered owner or the integrity of the registered mark, and the absence of any “ulterior motive” citing Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 166 FCR 312 (“Mayne Industries”) at [105] and Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 354-5 (“Johnson & Johnson”).
His Honour considered that the respondents’ approach to ensuring the certification had been obtained was lax. His Honour said at [124]:
On the evidence, I accept that the approach to ensuring that certification had been obtained was lax. While there was no apparent issue as to the goods in fact being halal, the issue of certification was addressed in an ad hoc and incomplete way. For some time, there was no halal certification in place at all: Mr Hanna’s evidence was that it may have been seven months for Hellay after they were first engaged Flujo Group. HCA submitted that this period was not an oversight. It further submitted that the “trigger” for Flujo Group’s compliance was the point at which they wished to retail in the United Arab Emirates. While I do accept it was the trigger for discovering the oversight, I do not accept that the seven month lapse in certification was intended.
In his reasons the primary judge refers to a letter of demand that was in evidence sent on 3 August 2018 by HCA’s solicitor to the Flujo Group. It is not necessary to refer to the content of the letter of demand in detail, but it alleged that the Flujo Group had engaged in trade mark infringement and made various demands including for payment of an amount of $500,000 as damages for trade mark infringement. As his Honour found at [135], the demand for payment was made without any indication of how that sum was calculated. In a finding that was not challenged by HCA, his Honour also found at [135] that, as a practical matter, the demands made in the letter of demand were nearly impossible for Flujo Group to comply with within the five business days allowed before HCA proposed to commence legal proceedings.
Having referred to evidence from Mr Hanna as to the reasons for the Flujo Group not ensuring that the respondents’ products were halal certified, his Honour found at [125] that Mr Hanna, and through him, Natvia and the other relevant members of the Flujo Group, at all times believed that their products were halal certified. His Honour found that when it was brought to Flujo Group’s attention by a retailer in the United Arab Emirates that there was no certification, the situation was rectified.
However, the position in relation to the certification of Raw Earth products manufactured by Hellay was more complicated. As to this, his Honour said at [126]-[127]:
[126]As to the later certification issue concerning Raw Earth, Mr Hanna’s evidence was that the absence of certification by Hellay was ascertained upon HCA issuing the letter of demand on 3 August 2018, and shortly after Mr Hanna asked for certification to be obtained by the manufacturer Hellay. HCA then commenced these proceedings in September 2018. Mr Hanna was informed by Hellay in September-October 2018 that the new certificate was being withheld because of these proceedings. As detailed above, it was only in July 2019 that HCA retroactively amended the last certificate issued to Hellay, removing products which encompassed the Raw Earth and Natvia Products, because of asserted “continuing non-compliance”. In this circumstance, it is again clear that Flujo Group quickly took, or attempted to take, necessary steps to seek certification where it became clear that it was not in place. It was only HCA itself which seemingly prevented this.
[127]It is significant that whenever a lack of certification has been brought to their attention (up to the point of the commencement of this proceeding, which I will address below) the respondents have attempted to rectify it by seeking certification of the relevant product in the manner which would be most appropriate to do so in the context of the operation of their business – that is, via the toll manufacturer, who holds the certification relationship with HCA. I do not accept HCA’s submission that Flujo Group did not seek to make amends in respect of the Natvia Product certification issue in 2015-16. Subsequently requesting that the contracted manufacturer seek certification of the products, which they did, seems to be the most complete way of making those amends. No doubt HCA’s preferred means of amends would have been the payment of $500,000 in damages that it initially requested in its 3 August 2018 letter of demand, an issue to which I will return.
These findings are of relevance to the respondents’ good faith defence because, as his Honour plainly recognised, they provide context to any use of the Trade Mark by the respondents both prior to and after receipt of the letter of demand. We will return to this topic later in these reasons but leaving aside those periods in respect of which there was no certification in place, there does not appear to have been any reason why HCA would not have approved the respondents’ use of the Packaging Logo except for what his Honour described as an “opportunistic” demand for $500,000 by way of damages. In that regard, there was no evidence to suggest that any of the respondents’ products were not halal. While much was made in HCA’s submissions about the possibility that packaging or products might not be halal (eg. because of the use of forbidden images), there was no suggestion by counsel for HCA in his submissions, much less any evidence, that any of the respondents’ packaging was non-halal.
Use of mark likely to deceive or cause confusion (ss 88(1) and 88(2)(c))
His Honour also found that the use of the word “Authority” in the Trade Mark was likely to deceive or cause confusion because it would be likely to be understood as referring to a body having some “official role” or “official authority” of some kind. His Honour considered that the word implied that the Trade Mark was used by a body that has some status of an official or formal kind that necessarily involves more than expertise. In that regard, his Honour rejected HCA’s submission that the word was merely being used to denote the company name or to indicate that HCA was an authority on what is or is not halal.
His Honour said at [157]-[162]:
[157]In relation to the use of the word “Authority”, both the cross-claimants and HCA rely upon dictionary definitions as to its meaning to demonstrate the nature of its use. The cross-claimants rely upon the part of the Lexico.com dictionary definition that refers to a “person or organization having political or administrative power and control”; and the part of the Collins Online Dictionary definition that refers to “an official organization or government department that has the power to make decisions”. They submit that HCA does not have any such power or control, and is not an official organisation or government department with power to make decisions. They point to the evidence of Mr El-Mouelhy where he described himself as a “knowledge authority”, and submit that the Trade Mark is likely to confuse or deceive because it conveys a false impression. They submit that HCA is one of some 25 organisations recognised by the Commonwealth Department of Agriculture and Water Resources for the halal certification of meat. None of these, apart from HCA, describes themselves as an “Authority”. Accordingly, the cross-claimants submit that HCA is not the only organisation that provides such services and cannot be an authority for that purpose.
[158]HCA asserts that the use of the word “Authority” in the Trade Mark, which encompasses its use on at least some of the accreditation certificates that it issued, does not suggest it has any official status. It submits that it rather expresses a status as to knowledge, having the quality that other people take notice of what is said on a topic. It submits that it falls within the broader dictionary definition of having “a quality which makes other people take notice of what they say” and also refers to “Someone who is an authority on a particular subject [being someone who] knows a lot about it”. HCA submits that the word “Authority” is being used only in a denotive way to say expressly who it is. That is, in context, it refers to no more than part of its corporate name and the expertise it asserts to hold by that name. It submits that it is not used in a connotative way to imply status, let alone any kind of official status. I am unable to accept that reasoning and find that the arguments advanced by the cross-claimants are more compelling, when coupled with the reasoning below.
[159]The various iterations of the accreditation certificates reproduced earlier in these reasons bear the Trade Mark to give them an authoritative look. They do not refer to HCA by its full corporate name. The Trade Mark is used on the later-in-time certificates as an anti-forgery tool, similar to the way some Australian driver licenses bear a holographic state seal, or other holographic official marking, to prevent counterfeiting. The Trade Mark does not refer to “Halal Certification Authority Pty Ltd”, which would have served to limit to some extent the impact of the use of the word “Authority” by making it clear that this was only part of a private company name, although this is offset to some extent by the use of the company seal on a number of certificates in evidence. The accreditation certificates also refer to “this Authority”. None of this sits well with the suggestion that the word “Authority” in the Trade Mark alone was being used, or intended to be used, merely to denote the company name. Rather, the usage on the face of the accreditation certificate, and on the face of the Trade Mark considered on its own, accords with the usage of that Trade Mark in a connotative way to imply and convey not just some measure of expertise, but also authoritative status.
[160]The usage of “Authority” as it appears on the Trade Mark indicates a body that has a particular status of an official or formal kind, necessarily involving, but going beyond, expertise. That is, akin to the dictionary definitions relied upon by the respondents, strongly suggesting an “organization having political or administrative power and control” approaching or amounting to “an official organization or government department that has power to make decisions”. It may readily be inferred that HCA overtly sought to convey by the usage of the Trade Mark on its certificates not just that it was a body that possessed authoritative knowledge, but rather than it was a body having some official role; that it had the status of being an official authority of some kind. It was successful in that endeavour.
[161]Does the Trade Mark on its own achieve anything materially less deceptive or confusing than its use on the certificate? While the Trade Mark on its own probably does achieve less, even on its own, it is deceptive and likely to confuse by reason of, inter alia, the use of the word “Authority”. If examined closely, it similarly tends to convey the same impression on its own as is conveyed by its use on the accreditation certificate. Unlike the Packaging Logo, this is not saved by very small presentation as the evidence does not suggest that the Trade Mark is only used in such a small size. To the contrary, it was used on at least some certificates. HCA also stipulated a minimum size of 10mm on packaging, albeit that such additional packaging was not in evidence. I conclude that the Trade Mark was used in various sizes that included the size at which it is registered, as well as the size at which it is deployed on the certificates in evidence. I accept that it was not necessarily used in any larger size than 10mm on food packaging.
[162]In the findings on use, I did not consider that the Packaging Logo was capable of conveying a descriptive quality such that it would convey that it was HCA specifically who provided halal certification services. This may seem inconsistent with the finding here that it is likely that the Trade Mark would be capable of creating a deceptive and confusing impression as to the word “Authority”, but the two findings can go together. The Trade Mark and Packaging Logo are such that they are likely to convey a more general impression: if a person actually reads the words “Halal Certification Authority Australia”, presented in the form of an official stamp or seal, they would most likely be left with the impression that there was some official, authoritative body that was saying that the goods were in fact halal, as opposed to the specific certification of a private company, Halal Certification Authority Pty Ltd. This is simply not true. That is therefore deceptive and likely to confuse in the manner in which it was deployed by HCA.
[163] I consider that the cross-claimants have made good their application for rectification of the register by the removal of the Trade Mark upon the basis of the use of the word “Authority” that is liable to deceive or confuse, especially when used in a larger size, such as on certificates.

It is apparent from what his Honour said at [163] that he considered that the likelihood of deception or confusion was especially strong when the Trade Mark was used in its larger size on, for example, certificates issued by HCA to manufacturers such as Techniques and Hellay. In expressing that conclusion it is apparent that his Honour was mindful of the small size in which the Trade Mark appears on packaged products which may make it difficult for some consumers to read.
Lack of Distinctiveness (ss 41(2), 88(1) and 88(2)(a))
The primary judge was required to apply s 41 of the Act as it stood at the date HCA applied to register its trade mark (8 June 2004) in deciding whether the registered mark should be cancelled on the ground that it was not, at the date of application for registration, capable of distinguishing HCA’s goods or services in respect of which the Trade Mark was sought to be registered from the goods or services of other persons. In the heading to this section of his Honour’s reasons, his Honour referred to s 41(2) of the Act and the phrase “not inherently capable of distinguishing”. HCA made the point in their submissions on appeal that s 41(2) uses the expression “not capable of distinguishing” and that it was only in other subsections that the expression “inherently adapted to distinguish” is used. Having set out s 41 as it stood at the relevant time, his Honour referred at [173] to the respondents’ submission that “… the Trade Mark was not to any extent inherently adapted to distinguish HCA’s services from like services provided by anyone else”.
His Honour referred to various well-known authorities concerned with the concept of distinctiveness and, in particular, the phrase “adapted to distinguish” including Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (“Clark Equipment”), Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337 (“Cantarella Bros”), and the summary of the relevant principles in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 124 IPR 264 (“Accor”). His Honour noted, at [177], that this case is not concerned merely with a word mark, but a logo constituting a device mark made up of a number of elements comprising the Arabic letters, the words Halal Certification Authority, and the annulus. His Honour also noted at [178] that the relevant enquiry was whether the Trade Mark as a whole, being the combination of elements in the manner in which they are arranged, is capable of distinguishing the relevant goods or services.
His Honour said at [182]:
The substantive difference between the competing arguments boils down to whether the combined effect of the Trade Mark viewed as a whole, comprising the combined effect of the words “Halal Certification Authority Australia”, the annulus, and the Arabic lettering which conveys halal, meets the description of being adapted to distinguish the service provided by HCA from a like service provided by anyone else. This is also bearing in mind that, at the time of registration in 2004, there were approximately a dozen companies who provided this service.
His Honour at [183]-[184] recorded the parties’ submissions including, in particular, HCA’s submission that the three key words from its corporate name were a direct reference to an entity (ie. itself) as a provider of the relevant service. His Honour also noted HCA’s submission that if someone else, actuated by proper motives, legitimately wanted to use a word or phrase for the purpose of indicating the quality of their services, they could not legitimately wish to use all of the elements of the Trade Mark in that specific format and arrangement.
His Honour expressed his conclusion in relation to the capacity of the mark to distinguish HCA’s goods or services as follows at [185]-[186]:
[185]The conclusion I have reached is that HCA has not met or answered the arguments advanced by the cross-claimants. The combination of the components of the Trade Mark, being the words “Halal Certification Authority Australia”, the annulus, and the Arabic lettering meaning halal, is not capable of distinguishing the service provided by HCA from a like service provided by anyone else. As to the words “Halal Certification Authority Australia”, while it is not determinative that a word trade mark over those words was rejected, there was no evidence, let alone overwhelming evidence, that the ordinary meaning of those words had been overshadowed in the marketplace by their significance as that aspect of the device Trade Mark. They remain words at best implying some significance, but without sufficient evidence, even by inference, to support that implication in any meaningful way. Further, there is no marked, if even measurable, improvement on that impression by combining the three components of the Trade Mark. By “its own nature”, the Trade Mark viewed as a whole does nothing to distinguish the services HCA provides from those capable of being provided by any other person providing a like service.
[186]It is in every sense a mark that would convey to the eye of a purchaser in a descriptive or laudatory sense that goods were halal, and possibly that somebody was certifying them to be so … Nothing about that combination is any more capable of distinguishing the service provided by HCA from a like service provided by anyone else than are the individual constituent parts. There was never a proper basis for giving such a logo a statutory monopoly by registration.
(citation omitted)
Discretion
The primary judge then turned to consider the question of whether to exercise the discretion not to rectify the register by cancelling the mark.
His Honour referred to a number of factors relied on by HCA in support of its contention that the mark should not be cancelled. These included the public interest and the length of time over which HCA had used its trade mark. As to the public interest, his Honour said at [194]-[195]:
[194]As to public interest, reliance is placed upon the recognition of HCA by the Australian government and by governments and other entities overseas, said to be in connection with the trade mark. It is asserted that the Trade Mark is an important part of international mutual recognition, and that the form of identification required by slaughtermen to satisfy AUS-MEAT standards includes the Trade Mark. It is pointed out that red meat is economically important to Australia, and that HCA is required to maintain the integrity of the Trade Mark to meet international standards requirements.
[195]More generally, HCA asserts that the Trade Mark performs an important role in indicating to the public a connection between it and particular goods and services, referring again to its recognition by government and other organisations both in Australia and overseas. This is said to be particularly significant by reason of the religious and technical requirements attached to the Trade Mark when approved for use. It is asserted that there is a public interest in facilitating consumers to identify halal products, and that if the Trade Mark is removed from the register, HCA will have no power to prevent it from being applied to products which have never been tested or certified, which may result in the public losing faith in halal certification marks or in the Trade Mark. I note that HCA, in other arguments advanced, relied upon the Trade Mark not being a certification trade mark and not having to be so in support of its validity.
His Honour considered that none of the factors relied on by HCA necessarily depend on the continuation of the registration but that, to the extent they do, they do not provide a sufficient public interest basis for not ordering cancellation of the mark. His Honour said at [197]:
I am of the view that none of these considerations necessarily depend upon continuation of registration of the Trade Mark. But to the extent that they do, they do not provide a sufficient public interest basis for refraining from ordering that the register be rectified by cancellation of the Trade Mark. These considerations are overblown by conflating HCA’s assessment and certification activities with the collateral and secondary use of the Trade Mark. There may be cost and inconvenience to HCA in, for example, seeking to register a proper trade mark to fulfil those objectives, but that is the product of its own conduct. Nor do any of the arguments advanced address any of the bases upon which rectification was sought. I am of the view that the seriousness of the successful grounds for rectification comfortably outweighs HCA’s arguments against it.
When his Honour refers to a “proper trade mark” it is clear that he is referring to a mark the use of which is not likely to deceive or cause confusion.
THE APPEAL
It is convenient to deal with each of HCA’s grounds of appeal in turn and to consider the parties’ submissions with respect to each ground.
Ground 1 – Trade Mark Use and infringement
Ground 1 was directed to the primary judge’s findings in relation to infringement and whether the respondents’ application of the Packaging Logo on their products was use as a trade mark within the meaning of s 120(1) and (2) of the Act. HCA sought to attribute a number of errors to the primary judge under the rubric of ground 1. First, HCA submitted that the primary judge failed to consider the respondents’ subjective intention. Second, HCA submitted that the primary judge erred in his consideration of the context in which the Packaging Logo was used on the respondents’ products. Third, HCA submitted that the primary judge failed to have regard to the Trade Mark as a whole. Fourth, HCA submitted that the primary judge did not give sufficient weight to the fact that the Packaging Logo was used on a food product for human consumption. Fifth, HCA submitted that the primary judge gave excessive weight to the size of the Packaging Logo. Sixth, HCA submitted that the primary judge gave undue weight to the appearance of the Natvia and Raw Earth brands on the packaging of the respondents’ products. In the result, HCA submitted that the primary judge erred in concluding that the use of the Packaging Logo on the respondents’ products was not use “as a trade mark” within the meaning of s 120 of the Act.
Like the notice of appeal, HCA’s submissions focused on the primary judge’s finding at [122] (set out above). HCA relied on the following statement of Katzmann J in In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd (2020) 150 IPR 73 (“In-N-Out Burgers”) at [120]:
… although the owner of a registered trade mark is not obliged to prove intention in order to establish a case of infringement, the alleged infringer’s intentions are not irrelevant. An inference may be drawn from evidence disclosing an intention to deceive or confuse, that deception or confusion is likely to occur …
It was in that context her Honour referred to the well-known judgment of Dixon and McTiernan JJ in Australian Woollen Mills Limited v FS Walton & Co Ltd (1937) 58 CLR 641 (“Australian Woollen Mills”) at 657 who said:
The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive.
There are several points to make about HCA’s first submission.
The question in In-N-Out Burgers to which Katzmann J’s observations were directed concerned the issue of deceptive similarity. There was no issue in that case that the mark found to infringe had been used by the respondent as a trade mark. Similarly, the observations of Dixon and McTiernan JJ in Australian Woollen Mills were directed to the likelihood of deception or confusion arising from the defendant’s use of its mark as a trade mark.
HCA submitted that the principle considered in Australian Woollen Mills is not confined to an intention to deceive and may be invoked more generally including in a case in which it is found that a defendant had an intention to use a trade mark for an identified purpose. It submitted that the identified purpose in this case was “to indicate that the … products had the quality and characteristic of being halal and certified as such by HCA”.
Whether or not a mark has been used as a trade mark for the purpose of (inter alia) s 120 of the Act requires a consideration of the way in which the mark has been used. The question is to be determined objectively without reference to the subjective intentions of the user and from the perspective of a person looking at the relevant packaging: E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 (“E & J Gallo”) at [33] per French CJ, Gummow, Crennan and Bell JJ citing (inter alia) Shell Co Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 (“Allergan”) at [24] citing E & J Gallo at [33], Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182 (“Anheuser-Busch”) at [186] per Allsop J.
The High Court (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) said in Allergan at [24]:
[24]Whether a sign has been “use[d] as a trade mark” is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not “as a trade mark” was in Irving’s Yeast-Vite Ltd v Horsenail [(1934) 51 RPC 110], where the phrase “Yeast tablets a substitute for ‘Yeast-Vite’” was held to be merely descriptive and not a use of “Yeast-Vite” as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.
(some citations omitted)
The primary judge gave no weight to the subjective intention of the respondents and their officers on the question of trade mark use. We do not consider that this involved any error by the primary judge.
HCA’s next submission was that the primary judge failed to have regard to the Packaging Logo as a whole.
His Honour had regard to each of the elements of the Packaging Logo – the Arabic lettering, the words Halal Certification Authority and the annulus – in the course of his analysis. That was a necessary part of understanding what function the Packaging Logo performed and, in particular, whether it would be likely to indicate to potential purchasers that the relevant goods were not just halal but had also been certified by the owner of the relevant mark as halal. His Honour’s findings that the Arabic characters in the Trade Mark are descriptive in that they convey that the goods are halal and that the words “Halal Certification Authority Australia” are also descriptive in that they convey that an authority has certified such goods as halal were findings directly relevant to the question of what impression the use of the Packaging Logo would have on potential purchasers. The same is also true of his Honour’s finding in relation to the annulus which he said at [110] “… may perform the additional function of conveying to the consumer that the representation is more than a bare assertion, even if the concept of certification may or may not be conveyed”. Ultimately, his Honour was not persuaded that the Packaging Logo, as used on the respondents’ products, conveyed more than the sum of its parts.
When deciding what effect the use of a sign is likely to have on the mind of consumers and whether it would be likely to function as a badge of origin, the sign as a whole must be considered in the context in which it has been used. It follows that it is wrong in principle to dismember the sign into its constitute elements disregarding the presence of some, and only having regard to others. But the constituent elements of a sign may make different contributions to the message conveyed by the sign as a whole and it is not only permissible, but necessary to consider what contribution is made to that message by the constituent elements. We will say more on this topic when considering the capacity of HCA’s Trade Mark to distinguish the registered services from services provided by other persons. However, we are not persuaded that the primary judge, in determining the question of trade mark use, failed to have regard to the Packaging Logo as a whole.
HCA also contended that the primary judge should have concluded that the Packaging Logo was being used to denote a trade source connection between HCA and the respondents’ products or that a service had been performed in respect of them, not merely that the goods were halal. HCA says that the primary judge gave insufficient weight to the context in the way the Packaging Logo was used including, in particular, the fact that it was used on a food product, the size of the Packaging Logo as used on the respondents’ products, and the presence of what we will refer to as the K logo appearing next to the Packaging Logo, which HCA says indicates certification by Kosher Australia Pty Ltd that the respondents’ products were kosher.
The primary judge attached some significance to the size of the Packaging Logo on the respondents’ goods which, we accept, might make it difficult for consumers to read and clearly discern its features including, in particular, the English text extending around the perimeter of the annulus. However, it does not follow from this that there has not been trade mark use. The Packaging Logo as used on the respondents’ products is small in appearance (relative to the Natvia brand) but its various features are all discernible by a consumer interested to know whether the goods are halal. We do not consider that there is anything about the size or location of the Packaging Logo on the respondents’ goods which suggests that it would not be perceived as a badge of origin in the relevant sense.
It is important to note that the use of a sign on product packaging may perform more than one function by conveying a descriptive message as well as a trade mark message: Anheuser-Busch at [189], [191], Allergan at [25]. In Johnson & Johnson Gummow J said at 347-348:
Where the trade mark allegedly used by the defendant comprises ordinary English words (such as “Page Three”, considered by Slade J in News Group Newspapers Ltd v The Rocket Record Co Ltd [1981] FSR 89 at 102) then, as this decision illustrates, that circumstance may be taken into account by the court in the process of reasoning by which it accepts or rejects a submission that the use in question is not a trade mark use but a description of the goods in question. To say that is not to gainsay the point made by Dixon CJ in Mark Foys Ltd v Davies Coop and Co Ltd (the Tub Happy case) (1956) 95 CLR 190 at 194-195 that language is not always used to convey a single, clear idea; a mark may have a descriptive element but still serve as a badge of trade origin. However, where the issue is one of infringing use by use of a word mark (as in the present case), the fundamental question remains, to paraphrase what was said by Williams J in the same case (supra) (at 205), whether those to whom the user is directed are being invited to purchase the goods (or services) of the defendants which are to be distinguished from the goods of other traders “partly because” (emphasis supplied) they are described by the words in question.

There was other evidence which was relied on by HCA as showing that it had an official status or role in the certification of halal products. HCA is registered as a halal certifier by the Emirates Authority for Standardization & Metrology which is the authorised halal certification body of the United Arab Emirates. It is also a recognised foreign halal certification body and authority of the Department of Islamic Development Malaysia, and a member of the World Halal Council, a worldwide federation of halal certifying bodies.
What is clear from the relevant statutory provisions is that Halal certificates are issued pursuant to the statutory scheme in respect of red meat and red meat products jointly by a relevant Islamic organisation and the Secretary. While it may be correct to say that HCA has an official status or role in the certification of halal products, that official status or role is closely prescribed and applies only to red meat and meat products.
It is not necessary to decide whether the use of the Trade Mark by HCA in relation to red meat and meat products would be likely to deceive or cause confusion. The evidence established that HCA uses its Trade Mark in relation to a wide range of goods that are outside the statutory scheme governing the issue of Halal certificates for red meat and meat products. In our opinion, the use of the Trade Mark in relation to the halal certification by HCA of non-meat products is likely to deceive or cause confusion. At the very least, it will cause a significant number of consumers to wonder whether the Trade Mark is that of an official or authoritative body authorised by government (whether by statute, regulation or otherwise) to certify as halal non-meat products. The existence of the statutory scheme with respect to red meat and meat products does not negative or diminish the misleading impression likely to be conveyed by the Trade Mark when used in relation to the certification of other food products.
Ground 5 and 6 – Cancellation of the trade mark pursuant to s 88(1) and (2)(a) of the Act by reason of s 41(2) of the Act
Grounds 5 and 6 were directed to the primary judge’s finding that the Trade Mark was not capable of distinguishing the appellant’s services from the services of other persons within the meaning of s 41(2) of the Act and his Honour’s order to rectify the register by cancellation of the Trade Mark pursuant to s 88(1) and (2)(a) of the Act.
HCA sought to attribute several errors to the primary judge under the rubric of ground 5. First, it was contended that the primary judge erroneously conflated the terms “capable of distinguishing” as used in s 41(2) of the Act and “inherently adapted to distinguish” as used in s 41(3), (5) and (6) of the Act by using the expression “not inherently capable of distinguishing”. Second, HCA contended that the primary judge failed to consider whether other traders “actuated only by proper motives” would desire to use the Trade Mark or some other mark closely resembling it. The appellant argued that the primary judge erred by focusing on particular elements of the Trade Mark rather than the Trade Mark as a whole and by placing excessive reliance on an earlier decision of a Delegate of the Commissioner of Trade Marks who found that the words “Halal Certification Authority Australia” (without any device) were purely descriptive. Third, HCA contended that the primary judge erred in giving undue weight to the presence of the word “Authority” in the Trade Mark. Fourth, HCA contended that the primary judge failed to give due consideration to the “applicant’s goods or services in respect of which the trade mark is sought to be registered” in applying the statutory requirements of s 41(2) of the Act.
Given the conclusion we have reached with respect to the challenge to the primary judge’s finding under s 88(2)(c) of the Act, it is not necessary for us to consider the challenge to his Honour’s findings under s 41 of the Act to the effect that the Trade Mark is liable to be removed from the Register because it lacks distinctiveness as required by s 41 of the Act. However, for completeness we will deal with HCA’s submissions on this ground of appeal. The question is whether the Trade Mark was, at the date of application for registration, capable of distinguishing the Halal certification services provided by the owner of the Trade Mark from the services of other traders providing Halal certification services. His Honour concluded that it was not, and we are not persuaded that his Honour’s conclusion was wrong.
We do not accept HCA’s submission that the primary judge conflated the statutory language. His Honour’s conclusion at [185], reiterated at [186], indicates that the question addressed by his Honour was whether the Trade Mark was capable of distinguishing the service provided by HCA from a like service provided by anyone else. In arriving at that conclusion his Honour had regard, as required by s 41(3), to the extent to which the Trade Mark was inherently adapted to distinguish. His Honour’s reasons do not disclose any error in the application of the statutory language. Nor do we accept that the primary judge failed to have regard to the Trade Mark as a whole or that he placed excessive weight on any of its individual components including the word “Authority”. It is clear from his reasons that he had regard to the combination of elements that make up the Trade Mark as a whole and his conclusion on the issue of capacity to distinguish makes this clear.
Most cases in which the question of capacity to distinguish has been an issue involve word marks consisting of ordinary English words or phrases that are descriptive of the relevant goods or services. But the issue may also arise in cases involving figurative marks in which the relevant sign consists of, or includes, a device which may itself be descriptive of the relevant goods or services or otherwise incapable of distinguishing the goods or services of the owner of the mark from those of other traders.
A device may be refused registration on the ground that it lacks distinctiveness if it is descriptive of the goods or services in respect of which it is sought to be registered. A decision to refuse registration of a device consisting of representations of a chain and sprocket separated by a blank space in respect of chains and wheels was upheld by the English Court of Appeal in Renold Chains Limited’s Application [1966] RPC 487; see also the decision of Mr Tookey QC in Pantino Inc’s Application [1966] RPC 527 upholding the Registrar’s refusal to register a trade mark consisting of a sketch of a female figure in blouse and slacks in respect of clothing. Similarly, in Blount Inc v Registrar of Trade Marks [1998] FCA 440; 40 IPR 498 at 507 (Branson J) the use of upper-case letters and an oval device surrounding the word “Oregon” were not sufficient, by themselves, to give the word within the mark inherent adaptability to distinguish.
In Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2013] FSR 29, [2012] EWHC 3074 (Ch) Arnold J held that a figurative mark comprising the word “now” in lower case letters with six fine lines arranged in a star or sun shape emanating from the letter “o” was “devoid of distinctive character” and thus unregistrable as a community trade mark by virtue of Art 7(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (since repealed; see now Art 7(1)(b) Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark). His Lordship referred at [97] of his reasons to a number of other examples of figurative marks that had been held unregistrable under Art 7(1)(b) for lack of distinctiveness. Those decisions provide examples of trade marks that conveyed a descriptive message even though the descriptive words used had been combined with figurative elements, because those figurative elements did not make any significant contribution to the descriptive message conveyed by the word component of the sign, or to the distinctiveness of the sign as a whole. See also Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft (1965) 120 CLR 285 at 293 (Kitto J).
With regard to the Arabic lettering in the Trade Mark, the majority (French CJ, Hayne, Crennan and Kiefel JJ) observed in Cantarella Bros at [48]:
These authorities show that it is not the meaning of a foreign word as translated which is critical, although it might be relevant. What is critical is the meaning conveyed by a foreign word to those who will be concerned with the relevant goods.
Their Honours also said at [71]:
…[I]f the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it.
(footnote omitted)
In our view the Arabic lettering is likely to convey to many people within the target audience the meaning of Halal or, translated into English, allowed or permitted in accordance with Islamic rites.
Both the English and Arabic in the Trade Mark refer directly to a relevant characteristic of the goods to which the Trade Mark is applied and the certification services provided by the owner of the Trade Mark in respect of such goods and services. The other component of the Trade Mark, which his Honour correctly described as a non-distinctive annulus of a kind in common use, does not either alone or in combination with the other elements contribute significantly to the distinctiveness of the Trade Mark as a whole. It seems to us that other traders acting honestly and not actuated by any improper motive, may well desire to use both the English and Arabic words in the stylised form of an annulus of the Trade Mark to indicate that the goods had been certified as Halal by that person.
Ground 7 – Discretion not to rectify the Register
Ground 7 was directed to his Honour’s finding not to exercise his discretion not to grant the application for rectification of the Register by cancellation of the Trade Mark pursuant to s 88 or 89 of the Act. HCA contends that his Honour’s exercise of the discretion to cancel the Trade Mark was affected by a number of errors and that his Honour should have decided not to make any order for cancellation.
According to HCA’s notice of appeal, the first of the errors concerned the meaning that his Honour gave to the word “Authority” as used in the Trade Mark. This was a matter directly relevant to the question of whether the use of the Trade Mark was likely to deceive or cause confusion within the meaning of s 88(2)(c) of the Act. For reasons previously explained, we agree with his Honour’s finding on that matter. It is not necessary to revisit that issue in the context of his Honour’s exercise of discretion.
The other matters on which HCA relied in relation to his Honour’s exercise of discretion were concerned with what HCA alleged was his Honour’s failure to have proper regard to matters prescribed by reg 8.2 of the Regulations, which by reason of s 89(2) of the Act, are mandatory considerations under s 89(1) of the Act.
The particular matters that HCA relied on before the primary judge as relevant to the exercise of the discretion were said by HCA to be as follows:
(a)The manner in which HCA has used the Registered Trade Mark in the past has been in the public interest both in relation to activities within Australia and in relation to the production of goods by third parties for export from Australia.
(b)The Registered Trade Mark has a substantial reputation in Australia, having been used in relation to HCA’s business over an extended period with thousands of certificates bearing the Registered Trade Mark having been issued to HCA’s clients.
(c)The interest of consumers favours the Registered Trade Mark remaining on the Register. There is a risk that, were the Registered Trade Mark to be removed from the register, unscrupulous traders might employ the mark in a manner giving rise to deception or confusion.
(d)The interest of HCA, as the owner of the mark, favours the Registered Trade Mark remaining on the Register.
Although the primary judge does not refer in terms to reg 8.2 in his reasons, it appears to us that his Honour has given consideration to each of the matters relied on by HCA before his Honour in support of its contention that the Trade Mark should not be cancelled.
The matters relied upon by HCA were closely considered by the primary judge at [193]-[197] of his reasons. In particular, his Honour considered at [194] the public interest and what was said to be the recognition of HCA by the Australian Government and by governments and other overseas entities and what was said to be the important role of the Trade Mark in ensuring compliance with religious and technical requirements, enabling (inter alia) consumers to identify halal products.
His Honour noted the matters relevant to HCA’s reputation and goodwill at [196] where his Honour refers to (inter alia) the number of HCA’s clients in Australia and overseas and the number of applications received for halal certification each year. His Honour also noted at [197] that, in his view, none of the matters relied on by HCA necessarily depended on the continuation of registration of the Trade Mark but that, to the extent they did, they did not provide a sufficient public interest for not ordering the cancellation of the mark.
In this Court HCA submitted:
Contrary to his Honour’s findings, the removal of the Trade Mark from the register will directly undermine HCA’s ability to prevent unscrupulous traders from employing the mark in a manner giving rise to deception or confusion, by applying the mark to products that have not been tested or certified by HCA. This will necessarily adversely affect the interests of consumers and HCA. The primary judge erred in his findings to the contrary, and in failing to decide not to grant the application for rectification pursuant to s88 and 89 of the TM Act.
While it is clear that HCA will, if the Trade Mark is cancelled, not enjoy the statutory monopoly conferred by the Act, it is apparent that his Honour considered that it would still be open to HCA to obtain registration of a different trade mark, the use of which was not likely to deceive or cause confusion. To the extent that it was suggested in HCA’s submissions that it would not be open to HCA to use a different mark or to prevent unscrupulous traders from using the existing Trade Mark in a false or misleading way, we are not persuaded that either of those propositions is correct. It would remain open to HCA to take action against unscrupulous traders falsely representing that their goods or services had been certified as halal by HCA by taking action under the Australian Consumer Law. We also reject HCA’s submission that his Honour failed to take into account the public interest matters to which we have referred or the private interests of HCA, which were matters also directly addressed by his Honour at [196] of the reasons.
HCA also challenged the primary judge’s finding that HCA was guilty of blameworthy conduct that contributed to the likelihood that the use of the Trade Mark would give rise to deception or confusion. The particular matter relied on by the primary judge in support of that finding was the decision by HCA to use only part of its corporate name in the Trade Mark which his Honour found increased the risk of deception or confusion occurring. That conclusion was based on inferences that his Honour was in our view entitled to draw and which we would also draw. The failure to refer to HCA’s status as a proprietary company would encourage consumers to mistakenly believe that HCA was something other than a private company and that it enjoyed some official status with respect to all of the goods or services in respect of which the Trade Mark might be used.
The primary judge was not satisfied on the material before him that sufficient reasons appeared for not cancelling the Trade Mark: see Anchorage Capital Partners Pty Limited v ACPA Pty Ltd (2018) 259 FCR 514 (Nicholas, Yates and Beach JJ) at [146]-[148] and Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd (2018) 129 IPR 482 (Burley J) at [244]. We are not persuaded that his Honour’s exercise of discretion to cancel the Trade Mark was affected by any material error.
Ground 8 – Costs
Ground 8 of the notice of appeal is directed to the costs orders made by his Honour which are said to have been made in error. No particulars of the error are included in either HCA’s notice of appeal or its written submissions.
At the conclusion of the hearing of the appeal, Senior Counsel for HCA indicated that there may be matters relating to costs on which the parties would wish to be heard. He also stated that in the event that either party was only partially successful, then there were matters that the Court may wish to have drawn to its attention. What these matters might be was not disclosed.
In circumstances where HCA’s appeal is to be dismissed, we do not see any reason based on the outcome of the appeal which would warrant us disturbing the costs order made by the primary judge.
Although HCA has succeeded before us on two issues (ie. trade mark use and, to a limited extent, the s 122(1)(b)(i) defence), the respondents have been successful both in relation to HCA’s application alleging infringement of the Trade Mark and the respondents’ cross-claim seeking orders for cancellation of the Trade Mark. We do not think any more specific consideration of the parties’ success on individual issues is warranted.
In our view, given that the appeal is to be dismissed, the appropriate order for costs of the appeal is that they be paid by HCA. This reflects the usual approach in which costs follow the outcome of the appeal: see Firebird Global Master Fund II Ltd v Republic of Nauru (No 2) (2015) 90 ALJR 270 at [6]. However, against the possibility that there is some particular matter that a party wishes to bring to the Court’s attention on the question of costs (for example, a relevant offer of compromise) we will give each party liberty to apply for a variation of the costs order we propose to make. Any application to vary the costs order must be made within 14 days.
DISPOSITION
For the reasons set out above we have found:
(a)That HCA has established error on the part of the primary judge in his conclusion that there was no trade mark use within s 120 of the Act, but failed to establish error in the primary judge’s conclusion that the trade mark use was not in respect of the services for which the Trade Mark was registered, or such goods or services closely related to such services as required by either s120(1) or s120(2), with the consequence that the respondents did not contravene s 120 (ground 1);
(b)The primary judge did not err in finding that the good faith exception to infringement under s 122(1)(b)(i) of the Act would have applied for the period up until 3 August 2018 (if infringement had been established under s 120), although we respectfully disagree with his conclusion as to its potential applicability after that date (ground 2);
(c)HCA failed to establish that the primary judge erred in finding that the Trade Mark was liable to be cancelled because it was likely to deceive or cause confusion within the meaning of s 88(2)(c) of the Act (grounds 3 and 4);
(d)HCA failed to establish error on the part of the primary judge in the conclusion that the Trade Mark was liable to be cancelled under 88(2)(a) of the Act because it lacked distinctiveness in the sense required by s 41(2) of the Act (ground 5 and 6);
(e)HCA failed to establish error on the part of the primary judge in the exercise of the discretion not to remove the Trade Mark from the register under s 88(1) and 89 of the Act (ground 7); and
(f)HCA failed to establish error on the part of the primary judge on the question of costs (ground 8).

The orders of the Court will be as follows:
(1)The appeal be dismissed.
(2)HCA pay the respondents’ costs of the appeal.
(3)Each party has liberty to make an application for a variation of order 2 by giving notice in writing of a different costs order sought and the matters to be relied on in support of the application within 14 days.
In the event any notice is given in accordance with order 3 then the Court will, if it considers it appropriate, make further directions for the filing of written submissions in relation to the application.

I certify that the preceding one hundred and eighty-seven (187) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justices Nicholas, Burley and Cheeseman.
Associate:
Dated: 2 November 2023
Annexure A
Natvia 40 x 2 g sachets 80 g pack sweetener (approximately actual size)

Raw Earth Stevia and Monk Fruit All Natural Sweetener 40 x 2 g sachets 80g pack (approximately actual size)

Appeal from:	Halal Certification Authority v Flujo Sanguineo Holdings Pty Ltd [2021] FCA 1399
File number:	NSD 1286 of 2021
Judgment of:	NICHOLAS, BURLEY AND CHEESEMAN JJ
Date of judgment:	2 November 2023
Catchwords:	TRADE MARKS – where appellant’s trade mark registered in respect of services comprising (inter alia) issuing halal certifications to businesses and individuals for goods and services if religious and technical requirements are met (“the registered services”) – whether primary judge erred in finding that the respondents’ use of a logo on their packaging (“the Packaging Logo”) that was substantially identical to the appellant’s registered trade mark (“the Trade Mark”) was not “use” as a trade mark pursuant to s 120 of the Trade Marks Act 1995 (Cth) (“the Act”) – whether primary judge erred in finding that respondents’ use of the Packaging Logo was otherwise outside the scope of s 120(1) and (2) of the Act – consideration of whether Packaging Logo was used in relation to the registered services or services closely related to the registered services or goods closely related to the registered services – whether primary judge erred in finding that respondents’ use of the Packaging Logo was in good faith – whether primary judge erred in finding that the use of the Trade Mark was likely to deceive or cause confusion – whether primary judge erred in finding that the Trade Mark was not capable of distinguishing the appellant’s services from the services of other persons in relation to the registered services – whether primary judge erred in ordering cancellation of the Trade Mark and not exercising the discretion not to make such an order Held: appeal dismissed
Legislation:	Export Control Act 1982 (Cth) Export Control Act 2020 (Cth) Trade Marks Act 1955 (Cth) s 62 Trade Marks Act 1995 (Cth) ss 17, 41, 88, 89, 120, 122 Export Control (Orders) Regulations 1982 (Cth) Export Control (Meat and Meat Products) Rules 2021 (Cth) r 2-12 Export Control (Meat and Meat Products) Orders 2005 (Cth) Trade Mark Regulations 1995 (Cth) reg 8.2 Trade Marks Act 1905 (UK) s 39 Trade Marks Act 1938 (UK)
Cases cited:	Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 124 IPR 264 Anchorage Capital Partners Pty Limited v ACPA Pty Ltd (2018) 259 FCR 514 Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182 Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2013) 250 CLR 640 Australian Woollen Mills Limited v FS Walton & Co Ltd (1937) 58 CLR 641 Banque Commerciale SA (in liq) v Akhil Holdings Ltd (1990) 169 CLR 279 Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft (1965) 120 CLR 285 Betfair Pty Ltd v Racing New South Wales and Another (2010) 189 FCR 356 Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd (2018) 129 IPR 482 Blount Inc v Registrar of Trade Marks [1998] 40 IPR 498 Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337 Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511 Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 Colorado Group Limited v Strandbags Group Pty Limited (No 2) (2006) 69 IPR 281 Dunlop Aircraft Tyres Ltd v The Goodyear Tire and Rubber Company (2018) 262 FCR 76 E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 Federal Commissioner of Taxation v Consolidated Media Holdings Ltd (2012) 250 CLR 503 Firebird Global Master Fund II Ltd v Republic of Nauru (No 2) (2015) 90 ALJR 270 Gould v Mount Oxide Mines Ltd (In Liq) (1916) 22 CLR 490 Halal Certification Authority Pty Limited v Scadilone Pty Limited (2014) 107 IPR 23 In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd (2020) 150 IPR 73 Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 166 FCR 312 Nature’s Blend Pty Ltd v Nestlé Australia Ltd (2010) 87 IPR 464 Pantino Inc’s Application [1966] RPC 527 Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355 R v Khazaal (2012) 246 CLR 601 Re Bali Brassiere Co Inc’s Registered Trade Mark and Berlei Ltd’s Application (1968) 118 CLR 128 Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 Renold Chains Limited’s Application [1966] RPC 487 Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 Shell Co Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2013] FSR 29 SZTAL v Minister for Immigration and Border Protection (2017) 262 CLR 362 Vale v Sutherland (2009) 237 CLR 638 Warnaco US Inc v Estee Lauder Cosmetics Ltd (2000) 50 IPR 143 Shanahan, Australian Trade Mark Law and Practice (Law Book Co, 1^st ed, 1982)
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	187
Date of hearing:	19-20 May 2022
Counsel for the Appellant:	Mr M Hall SC with Ms F McNeil
Solicitor for the Appellant:	O’Connor Legal
Counsel for the Respondents:	Mr J Castelan
Solicitor for the Respondents:	Actuate IP

ORDER MADE BY:	NICHOLAS, BURLEY AND CHEESEMAN JJ
DATE OF ORDER:	2 NOVEMBER 2023