Hamdard Laboratories (WAQF) Pakistan v Hamdard National Foundation (India)

[2023] ATMO 179

TRADE MARKS ACT 1995

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

Re:Opposition by Hamdard National Foundation (India) to registration of trade mark application 2073320 –HAMDARD ROOH AFZA Hamdard Laboratories (WAQF) Pakistan INSPIRED BY NATURE composite mark – in the name of Hamdard Laboratories (WAQF) Pakistan

Delegate:	Bianca Irgang
Representation:	Opponent: Siobhán Ryan of Counsel instructed by Davies Collison Cave Pty Ltd Applicant: Malcolm Bell of Phillips Ormonde Fitzpatrick
Decision:	2023 ATMO 179 Trade Marks Act 1995 (Cth) - Section 52 opposition – section 44 established in regards to majority of goods in class 5 – applicant unable to overcome objection – other grounds of opposition unsuccessful - amendment to goods completed by applicant – trade mark accepted for possible registration.

Background

1. Hamdard Laboratories (WAQF) Pakistan (‘the applicant’), filed trade mark application number 2073320 on 4 March 2020 in class 5 of the Nice Agreement Concerning the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:   (the ‘Trade Mark’)

   Trade mark application no: 2073320

   Priority Date:  4 March 2020

   Specification:  Class 5: Dietetic beverages adapted for medical purposes; dietetic foods adapted for medical purposes; dietetic substances adapted for medical use; herbal teas for medical purposes; medicinal tea; syrups for pharmaceutical purposes; waters (mineral-) for medical purposes.

2. Acceptance of the application for possible registration was advertised in the Australian Official Journal of Trade Marks dated 5 August 2020. Subsequently, Hamdard National Foundation (India) (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).

3. The applicant then filed its Notice of Intention to Defend. Thereafter, the opponent and the applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’).

4. I heard the opposition by teleconference as a delegate of the Registrar of Trade Marks on 7 September 2023. The opponent was represented by Siobhán Ryan of Counsel instructed by Davies Collison Cave Pty Ltd. The applicant was represented Malcolm Bell of Phillips Ormonde Fitzpatrick.

   Grounds of Opposition

5. The SGP nominated a number of grounds of opposition under the Trade Marks Act 1995 (Cth   ) (‘the Act’) and sections 42(b), 44, 58A and 60 were pursued at the hearing. The opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

   Evidence

6. The evidence filed in this matter consists of the following declarations being:

   Opponent’s evidence in support

   ·Declaration of Dr Aslam Khan dated 16 April 2021 together with Exhibits "AK-1" to "AK-24" (“Khan 1”) Including;

   oExhibit AK-4A  being the declaration of Murali Metlapalli dated 13 April 2021 together with Exhibit "MM-1"; and

   oExhibit AK-4B being the declaration of Vikas Makhija (“Makhija”) dated 15 April 2021

   Applicant’s evidence in answer

   ·Declaration of Shahid Mustafa Qureshi dated 23 August 2021 together with Exhibits "SMQ-1" to Exhibit "SMQ-29" including;

   oExhibit SMQ-5A being the declaration of Iqbal Dhedhy dated 8 February 2021 together with Exhibits "ID-1”.

   Opponent’s evidence in reply

   ·Declaration of Dr Aslam Khan dated 31 May 2022 together with Exhibit AK-25 to AK-28 (“Khan 2”); and

   ·Declaration of Elizabeth Godfrey dated 1 June 2022 together with Exhibits EKG-1 to EKG-7; and

   ·Declaration of Claire Groves dated 1 June 2022 together with Exhibits CG-1 to CG-9

   Discussion

   Section 44

7. Section 44 of the Act relevantly provides:

   44  Identical etc. trade marks

   (1)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

8. To establish its opposition in terms of section 44 of the Act the opponent must show all of the following:

   ·a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

   ·the trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

   ·the priority date(s) of the other person’s trade mark(s) is (are) earlier.

9. The opponent is the registered owner of trade mark registration 1633931 for ROOH AFZA which it has listed in support of its section 44 ground of opposition. The trade mark registration has an earlier priority date to the Trade Mark. Turning to the goods of interest to the parties I refer to the decision of Hearing Officer Smith in Hamdard National Foundation v. Hamdard Laboratories (WAQF) Pakistan[3] where he determined:

   In respect of the second factor the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews[4] stated as follows:

   The “same kind of thing” in respect of the goods or services of the parties does not equate to goods or services which may be “of the same description” (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership[5].

   I am satisfied that the ROOH AFZA product is of the same description as ‘non-alcoholic drinks, fruit drinks and fruit juices; syrups and other preparations for making beverages’ in class 32 and the SAFI and JOHSINDA products are of the same description as ‘Dietetic beverages adapted for medical purposes; dietetic foods adapted for medical purposes; dietetic substances adapted for medical use; herbal teas for medical purposes; medicinal tea; syrups for pharmaceutical purposes’ in class 5.  I am not satisfied that the ROOH AFZA, SAFI and JOHSINA products are the same kind of thing as the water products that the Applicant seeks to register the Trade Mark.

   I find that the Opponent has established the ground of opposition pursuant to s 58 for all the Applicant’s Goods other than Class 5: waters (mineral-) for medical purposes and Class 32: Mineral and aerated waters (collectively the ‘Remaining Goods’).

   [3] 2023 ATMO 69, [32]-[33]

   [4] Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14]-[18] (Hearing Officer Worth).

   [5] Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340.

10. While these comments were in relation the ground of opposition under section 58 of the Act, I am satisfied that similar reasoning will apply to determining whether the goods are the similar when it comes to section 44. While Hearing Officer Smith did not determine that all of the goods of interest to the applicant were the ‘same kind of thing’ to those goods of the opponent, I am satisfied that the Trade Mark covers goods of the same descriptive in class 5 to those that relate to the opponent’s trade mark in class 32[6] except for the applicant’s claim for dietetic foods adapted for medical purposes. I am not satisfied that dietetic foods adapted for medical purposes are similar to the opponent’s goods in class 32 as the opponent’s goods all appear to be liquids in the form of beverages and syrups rather than solids for mastication which would fall under the broad claim for food.

    [6] Energy Beverages LLC v M.D. Visage Pty Ltd [2018] ATMO 53 at [24] – [27] (Hearing Officer Brown); Chan Li Chai Medical Factory (1990) 19 IPR 140

11. Therefore, the issue for me to determine now is whether the Trade Mark is deceptively similar to the previously registered trade mark put forward by the opponent in regards to those goods which I have determined are similar. The details of the opponent’s listed trade mark registration are as follows:

    Trade mark:  ROOH AFZA
    Trade mark registration:     1633931
    Priority Date:  11 July 2014

    Specification:  Class 32: Fruit drinks, fruit juices, non-alcoholic drinks, syrups and preparation[s] for making beverages

12. The opponent has not argued that the trade marks are substantially identical and I agree. It is obvious that the trade marks are not substantially identical according to the side-by-side test set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[7]. While the respective trade marks contain the expression ‘ROOH AFZA’ this is where the similarities between them end.

    [7] (1963) 109 CLR 407, 414.

13. I now consider whether the Trade Mark is deceptively similar to the earlier registered trade mark. Deceptive similarity is defined by section 10 of the Act, which states ‘[f]or the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the opponent’s trade mark, to the impression they would get from the Trade Mark.[8] The probability of deception must be finite and non-trivial.[9]

    [8] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, 415 (Windeyer J).

    [9] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J).

14. The opponent’s trade mark consists of the words ROOH AFZA in plain text. The Trade Mark is a composite trade mark with the words ROOH AFZA prominently displayed in the centre of the Trade Mark. The additional word HAMDARD is contained within a small shield device along the top of the Trade Mark in small text, and the words Hamdard Laboratories (WAQF) Pakistan rendered in small text is located at the bottom of the Trade Mark in a banner next to a badge device containing the words INSPIRED BY NATURE in small text. Floral devices surround the entirety of the Trade Mark in a rectangular border. Looking at the Trade Mark it is clear that its most striking, prominent and memorable part is the expression ROOH AFZA which is in the center of the Trade Mark and rendered in a very large font size compared to the rest of the words within the Trade Mark. ROOH AFZA is the entirety of the opponent’s trade mark.

15. The opponent has argued:

    The Opponent contends that there is a real risk that consumers who are familiar with the Cited Mark, but have an imperfect recollection, will be caused to wonder whether the goods offered under the Opposed Mark come from the same source. The essential and distinguishing feature of both the Cited Mark and the Opposed Mark is the words “ROOH AFZA”.

    ROOH AFZA is the sole element in the Cited Mark and dominates in the Opposed Mark. The term is striking and unusual in the context of syrups for making beverages in Australia. It is not laudatory, nor descriptive. The additional matter in the Opposed Mark, namely the Applicant’s company name Hamdard/Hamdard Laboratories (WAQF) Pakistan, the slogan “Inspired by Nature” and the commonplace scrolls, rondels and garland devices do not distinguish it. The goods under both marks would be recalled and referred to by consumers by as “ROOH AZFA.”[10]

    It is also well established that the factors determining resemblance are not to be considered in isolation. As French J observed in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at [40]:

    In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question.

    As examined in detail below, there is proximity between the marks and the goods to which the marks are applied. That dual proximity, when taken into account with the nature of the goods being relatively inexpensive and likely to be self-selected and offered at the same outlets to the same consumers, suggests that a number of persons would be caused to wonder (or entertain a reasonable doubt) as to whether it might not be the case that the two products come from the same source.

    Given the substantial overlap between the goods for which the Cited Registrations are registered and the goods for which the Opposed Mark is sought to be registered, it is clear that the goods bearing the marks will compete in the same markets and be offered at the same outlets to the same consumers, further reinforcing the likelihood of confusion.

    [10] Re Application by Hardings Manufactures Pty Ltd T/A Wyandra Industries (1987) 8 IPR 147, at p 154.

16. I agree with the points made by the opponent. The applicant has argued:

    The degree of confusion likely to ensue between the marks in question: It is relevant to consider the two marks and the fact that the Applicant’s mark is a distinctive mark in the form of an intricate label, whereas the Prior Mark is a simple word mark.

17. While it is true that the Trade Mark does contain a number of elements which are not found in the opponent’s trade mark, the prominent and memorable part of both marks is the expression ROOH AFZA which has no understood meaning to the general monolingual Australian consumer. Therefore, I am satisfied there would be a real and tangible danger of confusion arising[11] between the respective trade marks. My finding is that the respective trade marks of the two parties are deceptively similar. As a result of this finding, the ground of opposition under section 44 has been made out. However, this is not necessarily fatal to the application.

    [11] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382 (French J).

18. The opponent has argued that subsection 44(4) does not apply as this was argued in a previous opposition between the parties dealing with an identical trade mark to the Trade Mark and was unsuccessful. This issue was contested in a previous opposition by the opponent against acceptance under subsection 44(4) of the opposed mark under Australian trade mark application 1961747 in class 32: Hamdard National Foundation (India) v Hamdard Laboratories (WAQF) Pakistan [2022] ATMO 83. In that case, Hearing Officer Tuohy found that the Earlier Mark and the opposed mark were not substantially identical (this same evidence is before me in this opposition) and that the provisions of section 44(4) had been wrongly applied. The applicant has also argued that subsection 44(4) does not apply and do not want to reagitate the point. Therefore, I accept that subsection 44(4) does not apply in this case because the applicant has not established use of the Trade Mark or a trade mark which is substantially identical to it before the priority date. However, the applicant has argued that subsection 44(3) will apply stating:

    “…it is relevant that if the earlier version of the Applicant’s mark had have been considered substantially identical to the Opposed Trade Mark then s 44(4) would have applied. Whilst the use of the earlier version of the ROOH AFZA mark by the Applicant was held not to satisfy s 44(4), the same does not apply to s 44(3). From a practical point of view, whether the Applicant used the Opposed Trade Mark or used different versions, there was still use by the Applicant of a mark which includes the words ROOH AFZA. The position as far as the market is concerned is the same regardless of which version of the mark was actually used. Therefore the criticisms of the Opponent regarding the form of the mark used are not to the point insofar as s 44(3)(b) is concerned.”

19. Subsection 44(3) of the Act states:

    (3)  If the Registrar in either case is satisfied:

    (a)  that there has been honest concurrent use of the 2 trade marks; or

    (b)  that, because of other circumstances, it is proper to do so;

    the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

20. The applicant has argued that under subsection 44(3)(b) it would not need to have used a substantially identical trade mark to the Trade Mark that has been applied for, rather that any use of a trade mark including the words ROOH AFZA would be sufficient to establish other circumstances which would warrant acceptance of the Trade Mark by the Registrar. I am not satisfied that this is the case.

21. Subsection 44(3)(b) is not a catch all for when a party is unable to overcome a ground of opposition through the provision of evidence of prior or honest concurrent use of the applied for Trade Mark. Just because the applicant has used a trade mark/s which contained the words ROOH AFZA does not prognosticate or permit registration of any permutation of trade marks which contain those same words. Such use may, however, have prevented other parties from seeking to register trade marks being or incorporating the words ROOH AFZA if the applicant had opposed them. I am not satisfied that the applicant has been able to overcome the section 44 ground of opposition. I will now consider the remaining grounds of opposition in light of the remaining goods in class 5 being dietetic foods adapted for medical purposes.

    Section 58A

22. The opponent has argued the section 58A ground of opposition. Section 58A of the Act is enlivened should the Trade Mark have been accepted under the provisions of subsection 44(4). The Trade Mark was not accepted under the provisions of subsection 44(4), nor do I propose to apply them now, so the opponent is also unable to establish this ground of opposition.

    Section 60

23. Section 60 of the Act relevantly provides:

    60  Trade mark similar to trade mark that has acquired a reputation in Australia

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

24. To establish the ground of opposition under section 60 the opponent relies on its use of and the acquired reputation in its ROOH AFZA trade mark.

25. Unlike section 44 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the opponent’s trade mark be substantially identical or deceptively similar to the Trade Mark.

26. It is for me to determine whether the opponent has established that before 4 March 2020 its ROOH AFZA trade mark was recognised by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the applicant of the Trade Mark would be likely to cause the public confusion.

1. In relation to reputation Kenny J states in McCormick & Co Inc v McCormick[12]:

   [i]n ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302 at 343 , Lockhart J said:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

   Justice Kenny continues:

   [i]n practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …[13]

   [12] (2000) 51 IPR 102, 128-129.

   [13] Ibid [86].

2. In considering whether the ROOH AFZA  trade mark has acquired a reputation in its syrup and beverage goods, I turn to the opponent’s evidence of use of its trade marks in Australia.

3. Khan 1 explains the common origins of the opponent’s and the applicant’s ROOH AFZA beverages and syrups and its unani medicinal purposes. Essentially, in 1906 a business known as the Hamdard Dawakhana Clinic was founded in Delhi by Janab Hakeem Hafiz Abdul Majeed which commenced manufacturing medicines and fruit beverages.  In 1922, Mr Majeed’s sons succeeded him.  Following the partition of India in 1947, the sons split the business, with one of the sons staying in India to run the Hamdard Dawakhana Clinic, the predecessor in title to the Opponent, while the other moved to Pakistan to set up the Applicant.  The parties are involved in a number of disputes globally, both in respect of trade mark oppositions and the construction of an alleged verbal agreement between the brothers.  The present case is one of those disputes.     

4. Mr Makhija, a director of Tapovan Impex Pvt Ltd, India, who has been associated with his company since 2004, declares that “My Company first exported beverage products under the ROOH AFZA Trade Mark to Australia in 2005. Since that time, my Company has continued to export beverage products under the ROOH AFZA Trade Mark on behalf of Hamdard National Foundation (India) to Australian importers of international groceries…” This statement is corroborated by exhibit AK-4C accompanying Khan 1. Further to this, Metlapalli avers that Indya Foods Pty Ltd purchased the opponent’s ROOH AFZA branded products and brought them to Australia from 2006 and continuing which is supported by the invoices and freight documents contained within exhibit AK-10 accompanying Khan 1.

5. The Australian sales revenue for the opponent’s products under the ROOH AFZA trade mark contained in exhibit AK-7 accompanying Khan 2 is for the financial years of 2010/11 to 2020/21 and the figures are reasonable. The opponent’s ROOH AFZA beverages and syrups are small grocery items sold in shops and supermarkets and on the internet.[14] I can appreciate that the revenue figures represent significant volumes of the relatively inexpensive item.

   [14] Exhibits AK-16 to AK-19 accompanying Khan 1; Exhibit AK-26 accompanying Khan 2

6. However, the advertising figures located in exhibit AK-12 accompanying Khan 1 are less helpful in establishing whether or not the opponent has a reputation for its ROOH AFZA branded goods in Australia. This is because the figures are world-wide advertising figures for the years 2011 to 2016. While Khan 1 has specified that a very modest amount of these figures may be attributed to the opponent’s advertising expenditure in Australia from 2014 to date. The applicant has correctly pointed out that this figure is without context and some of the advertising expenditure may well have been after the priority date. The opponent’s evidence does demonstrate long-term use of the ROOH AFZA trade mark from an international standpoint but the use within Australia is less long-standing or clear.

7. I note that the opponent has sold a reasonable amount of its low-cost product to a number of Australian retailers. However, taken all together and at its highest, the evidence does not demonstrate the type of reputation sufficient to trigger section 60 particularly when the size of the Australian beverage marketplace is taken into account.

8. In order to establish a section 60 ground of opposition the opponent must demonstrate that it has acquired a reputation in Australia because of which the use of the Trade Mark would be likely to deceive or cause confusion. This is more than the opponent merely indicating prior use, the opponent’s trade mark needs to be ‘associated in the minds of the Australian public’[15] to such a degree that confusion is likely. The opponent’s evidence falls short of establishing this sort of level of reputation particularly where there is significant divergence in the remaining goods of the Trade Mark and the syrups and beverages of interest to the opponent.

   [15] Seven Up Co v OT Ltd (1947) 75 CLR 203, 211 (Williams J).

9. The opponent has accordingly not established its ground of opposition under section 60 in regards to the remaining goods in class 5 being dietetic foods adapted for medical purposes.

   Section 42(b)

10. The opponent also submitted in its SGP that use of the Trade Mark for the relevant services would breach sections 18 and 29 of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010)(Cth) which proscribes misleading or deceptive conduct. These claims have been made by the opponent in respect of the applicant’s goods being syrups for making beverages. The opponent has argued that such use of the Trade Mark on these goods by the applicant would be misleading or deceptive, or likely to mislead or deceive, and/or would suggest some sponsorship, approval, affiliation or association with the opponent and its goods, which the Applicant does not have. As these goods were dealt with under section 44 they do not fall under the applicant’s remaining goods being dietetic foods adapted for medical purposes .

11. In regard to the remaining goods, as I have found that the use of the Trade Mark is not, at a minimum, likely to “confuse” under section 44 or 60, it follows that use is not, on the stricter test posited by Australian Consumer Law, likely to mislead or deceive, in terms of section 18. I thus find that the opponent has not established it ground of opposition under section 42(b).

    Decision

12. Section 55 of the Act relevantly provides:

    55  Decision

    (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)  to refuse to register the trade mark; or

    (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:          Forlimitationssee section 6.

13. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 44 in regard to the majority of the goods in class 5.

14. Accordingly, I wrote to the applicant on 23 October 2023 advising them that I would provide them with two weeks in which to delete the conflicting goods from the Trade Mark specification. I advised that if this was done, I would issue a decision whereby the Trade Mark with the amended specification would be able to proceed to Registration pending any appeal from the opponent. I also advised that if the applicant did not amend the specification to delete those goods in conflict that I would be issuing a decision whereby the Trade Mark would be refused in its entirety. The applicant has responded and requested an amendment that deletes the goods in conflict.

15. Accordingly I accept for possible registration trade mark application number 2073320 in respect of the amended specification for goods in class 5.

    Costs

16. The opponent has requested costs and having been successful in establishing the section 44 ground of opposition, it is so entitled. I award costs against the applicant in terms of Schedule 8 of the Regulations.

    Bianca Irgang
    Hearing Officer
    Trade Marks Hearings
    9 November 2023