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

[2025] ATMO 169

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 numbers 2279408 (Class 32) – Rooh Afza – and 2279409 (Class 32) - HAMDARD ROOH AFZA SUMMER DRINK OF THE EAST Hamdard Laboratories (WAQF) Pakistan composite mark – in the name of Hamdard Laboratories (WAQF) Pakistan

Delegate:	Bianca Irgang
Representation:	Opponent: Siobhán Ryan of Kings Counsel instructed by Davies Collison Cave Pty Ltd Applicant: Shauna Ross of Counsel instructed by IP Solved (ANZ) Pty Ltd
Decision:	2025 ATMO 169 Trade Marks Act 1995 (Cth) - Section 52 opposition – Section 44 established for both trade marks – evidence insufficient to overcome the s 44 ground of opposition – both trade marks refused.

Background

1. Hamdard Laboratories (WAQF) Pakistan (‘the Applicant’), filed trade mark application numbers 2279408 and 2279409 on 25 June 2022 in class 32 of the Nice Agreement Concerning the International Classification of Goods and Services. Current details of the applications are set out below (collectively ‘Applicant’s Trade Marks’).

Trade mark:    (the ‘Rooh Afza Trade Mark’)

Trade mark application no: 2279408

Priority Date:  25 June 2022

Specification:  Class 32: Syrup for making beverages (‘Applicant’s Goods’)

Endoresements:  Provisions of subsection 44(4) and/or Reg. 4.15A(5) applied.

Trade mark:    (the ‘Trade Mark’)

Trade mark application no: 2279409

Priority Date:  25 June 2022

Specification:  Class 32: Syrup for making beverages

Endoresements:  Provisions of subsection 44(4) and/or Reg. 4.15A(5) applied.

1. Acceptance of the applications for possible registration was advertised on 16 and 15 November 2023. Subsequently, Hamdard National Foundation (India) (‘the Opponent’) filed its Notices of Intention to Oppose registration followed by Statements of Grounds and Particulars (‘SGP’).

2. The Applicant then filed its Notices 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’).

3. I heard the opposition by videoconference as a delegate of the Registrar of Trade Marks on 4 June 2025. The Opponent was represented by Siobhán Ryan of Kings Counsel instructed by Davies Collison Cave Pty Ltd. The Applicant was represented Shauna Ross of Counsel instructed by IP Solved (ANZ) Pty Ltd.

Grounds of Opposition

1. The SGP nominated a grounds of opposition under ss 42(b), 44, 58, 58A, 60 and 62A of the Trade Marks Act 1995 (Cth) (‘the Act’). In the Opponent’s written submissions, the Opponent indicated it was not pressing the s 58 ground of opposition. I therefore treat this ground as abandoned. The onus is upon the Opponent to establish one or more of its grounds of opposition. The Full Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd[1] affirmed the approach in Pfizer Products Inc. v Karam[2] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.

   [1] [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [2] [2006] FCA 1663, [26].

Evidence

1. The evidence filed in these matters consists of the following declarations being:

Opponent’s evidence in support

• Declaration of Mohd Aslam Khan dated 11 June 2024 together with Exhibits AK-1 to AK-24 and Confidential Exhibit AK-A to AK-E (‘Khan 1’); and

• Declaration of Vikas Makhija dated 6 June 2024 together with Exhibit VM-1; and

• Declaration of Murali K Metlapalli dated 30 May 2024 together with Exhibit MM-1.  

Applicant’s evidence in answer

• Declaration of Shahid Mustafa Qureshi dated 6 September 2024 together with Exhibits SMQ-1 to Confidential Exhibit SMQ-29 (‘Qureshi’); and

• Declaration of Iqbal Dhedhy dated 6 September 2024 together with Exhibit ID-1 (‘Dhedhy 1’); and

• Declaration of Jawed Dhedhy dated 12 September 2024 together with Exhibits JD-1 to JD-3 (‘Dhedhy 2’).

Opponent’s evidence in reply

• Declaration of Mohd Aslam Khan dated 16 November 2024.

Discussion

Section 44

1. 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.

2. To establish its opposition in terms of s 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.

1. The Opponent listed its trade mark registration number 1633931 in support of its s 44 ground of opposition. Details of the registration are as follows:

Trade mark:  ROOH AFZA (the ‘Opponent’s Trade Mark’)

Trade mark registration no:1633931

Priority Date:  11 July 2014

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

1. The trade mark registration is owned by the Opponent and has an earlier priority date to the Applicant’s Trade Marks. Turning to the goods of interest to the parties I am satisfied that the Applicant’s Trade Marks cover the same goods in 32 to those that relate to the Opponent’s Trade Mark in class 32 as the goods claimed by both parties are syrups for making beverages.

2. Therefore, the issue for me to determine now is whether the Applicant’s Trade Marks are substantially identical or deceptively similar to the Opponent’s Trade Mark.

3. When I consider the respective trade marks, I am not satisfied that they are 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[3]. While the respective trade marks all contain the prominent expression ‘ROOH AFZA’ this is where the similarities between them end. In the Rooh Afza Trade Mark the words are presented in a fancy script which is visually and cognitively different from the Opponent’s Trade Mark which is plain text. I do not accept the Applicant’s suggestion that the script makes the words Rooh and Afza appear joined in the Rooh Afza Trade Mark, given the capitalisation of the letter “R” and “A” which effectively split the Rooh Afza Trade Mark into two distinct words which will be pronounced as such. However, I do note that the fancy script of the Rooh Afza Trade Mark does make it visually different to the Opponent’s Trade Mark with the letter ‘z’ being presented quite differently. In the Trade Mark, the same fancy script forms the words Rooh Afza in the center of an oval device which is surrounded by a detailed and intricate framework of flowers and rope elements along with the additional expressions HAMDARD along the top in its own crest and the words SUMMER DRINK OF THE EAST along the bottom of the central oval. The words HAMDARD LABORATORIES (WAQF) PAKISTAN appear inside a scroll device underneath the oval device. These are all significant oral, visual and cognitive cues which preclude a finding of substantial identity with the Opponent’s Trade Mark.

   [3] (1963) 109 CLR 407, 414.

4. I now consider whether the Applicant’s Trade Marks are deceptively similar to the Opponent’s Trade Mark. Deceptive similarity is defined by s 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.[4] The probability of deception must be finite and non-trivial.[5]

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

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

5. The Opponent’s Trade Mark consists of the words ROOH AFZA in plain text. The Rooh Afza Trade Mark is the same words but presented in a fancy script with a particularly interesting rendition of the letter ‘z’. ROOH AFZA is the entirety of the Opponent’s Trade Mark and the Rooh Afza Trade Mark.

6. 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 underneath the expression SUMMER DRINK OF THE EAST in small text. Floral devices surround the entirety of the Trade Mark in a rectangular border.

7. Looking at the Opponent’s Trade Mark and the Trade Mark it is clear that its most striking, prominent and memorable part of each trade mark 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.

8. 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 ROOH AFZA Label Mark come from the same source.

   The distinctive term “Rooh Afza” is the sole element in the Cited Mark and is dominant in the Opposed Mark. The additional matter in the Opposed Mark, namely the Applicant’s company name HAMDARD/HAMDARD LABORATORIES (WAQF) PAKISTAN and the 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”.[6]

   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[7]:

   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.

   Here 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 (syrups) 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.

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

   [7] Woolworths [40]

9. I agree with the points made by the Opponent. The Applicant has argued:

   The Applicant accepts that the words “ROOH AFZA” comprise an essential element of each of the Opposed Marks and is the sole element of the Opponent’s Word Mark. However, the detailed and intricate graphic elements of the Opposed Marks are not minor or inconsequential; rather they are also essential features of the Opposed Marks and must be properly assessed as such in the deceptive similarity analysis. It is important to recall that it is the relevant marks as a whole that must be considered not some artificial dissection of the trade marks into their component parts.

   These differences are such that there is no real and tangible danger of confusion. Although not determinative, it is telling that the Opponent has been unable to point to a single instance of confusion in the market.

10. 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. The Rooh Afza Trade Mark and the Opponent’s Trade Mark also share the memorable and only word elements ROOH AFZA.  Therefore, I am satisfied there would be a real and tangible danger of confusion arising[8] 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 s 44 has been made out. However, this is not necessarily fatal to either the Trade Mark or the Rooh Afza Trade Mark.

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

11. The Opponent has argued that s 44(4) does not apply. The Opponent pointed out that this argument was made in regard to the Rooh Afza Trade Mark in a previous opposition between the parties and was unsuccessful.[9] Regardless, these are new oppositions and I will carefully consider all the evidence and submissions before me without being bound by previous decisions. Therefore, I turn to the Applicant’s evidence of use of the Rooh Afza Trade Mark and the Trade Mark.

    [9] Hamdard National Foundation (India) v Hamdard Laboratories (WAQF) Pakistan [2022] ATMO 83 (Hearing Officer Tuohy).

12. The common origins of the Opponent’s and the Applicant’s beverages and syrups and its unani medicinal purposes have been discussed in all the previous decisions made by this office and I  repeat them here for the sake of clarity. 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.  These oppositions form only a small portion of the disputes between the parties.

13. Qureshi states that the Applicant has been selling its beverage goods under the Applicant’s Trade Marks continuously in Australia since 2004. According to Qureshi, the Applicant commenced use of the Applicant’s Trade Marks in relation to syrup in Australia in late 2004 or early 2005 through one of its Pakistani distributors, Oasis Corporation Pvt Ltd. Between 2005 and 2008, Oasis Corporation Pvt Ltd purchased the Applicant’s “ROOH AFZA” branded syrups and shipped these goods to an Australian company, Dhedhy Investments Pty Ltd, trading as Supreme Natural Foods in Victoria, Australia. Exhibit SMQ-6A accompanying Qureshi is a copy of an import collection schedule document dated 31 August 2004 including a bill of lading date of 12 August 2004 and commercial invoice showing 240 x 800ml bottles of the “ROOH AFZA” branded syrup having been included in the shipment from Karachi, Pakistan to Melbourne, Australia. I acknowledge the commercial invoice does contain the words ROOH AFZA.

14. Qureshi asserts that from 2008 Oasis Corporation Pvt Ltd purchased "ROOH AFZA" branded syrup and shipped these goods to its Australian branch, Oasis Corporation Australia Pty Ltd. In 2015, the Applicant started directly exporting its "ROOH AFZA" branded syrup to Oasis Corporation Australia Pty Ltd and has continued this direct exporting relationship with Oasis Corporation Australia Pty Ltd since. Qureshi explains that the Applicant does not have complete copies of invoices and other relevant documentary evidence in relation to the export of "ROOH AFZA" branded syrup from about 2012 back to 2005 because it is the Applicant's company policy to only retain hard copies of documents for about five years.

15. Exhibits SMQ-6 and SMQ-7 contain copies of 10 Bills of Lading from 15 June 2012 until 4 December 2018. Exhibit SMQ-8 contains selected invoices issued to Oasis Corporation Australia Pty Ltd for the purchase of the Applicant's products, including the "ROOH AFZA" branded syrup. I acknowledge the invoices do contain the words ROOH AFZA.

16. Qureshi asserts that the Applicant’s “ROOH AFZA” goods sold into Australia were branded with the Applicant’s Trade Marks. Dhedhy 1 and Dhedhy 2 both appear to support this assertion by Qureshi. They also assert that the Applicant’s goods at all times from 2005 to 2017 the Rooh Afza Trade Mark and the Trade Mark appeared on the Applicant’s goods. However, these assertions are not supported in the evidence before me. Exhibit JD-3 accompanying Dhedhy 2 does contain some photograph of the Applicant’s Goods bearing the Applicant’s Trade Marks but these photographs are undated.

17. All the invoices and Bills of Lading indicate that a ROOH AFZA good was sold into Australia by the Applicant. Firstly, it was sold once in 2004 and then a few times across the years 2012 until 2017. These bills of lading and invoices do not contain the Applicant’s Trade Marks as applied for. Turning to Exhibit SMQ-11 accompanying Qureshi, the Applicant asserts that the Australian consumer has been able to purchase the Applicant’s ROOH AFZA branded goods through Amazon, ebay, Grocery Bee and other online retailers. I note that most of the pages and offers for sale are dated in 2024. Additionally, those earlier ebay pages demonstrate use of a different trade mark to the Trade Mark. I have reproduced images of those trade marks below:

[10]   [11]

[10] Exhibit SMQ-11 accompanying Qureshi  - Ebay advertisement dated November 2019.

[11] Exhibit SMQ-11 accompanying Qureshi  - Amazon advertisement dated 14 January 2021.

1. Exhibit SMQ-11 accompanying Qureshi is typical of the Applicant’s evidence which demonstrates a number of different trade marks being used over the years by the Applicant. This is not surprising given the number of trade marks that the Applicant has registered or sought registration for around the world.[12] But these multiple trade marks in use do make it unclear which trade marks were actually used on the Applicant’s Goods that were imported and sold into Australia. Exhibit SMQ-17 contains the images of the Applicant’s promotion of its goods through its Social Media accounts. Again, I am faced with a number of different trade marks being used by the Applicant on the Applicant’s Goods such as the below:

[13]

[14] [15]  [16]  [17] [18][19]

[20] [21]  [22]

[23]

[12] Exhibits SMQ-2 to SMQ-4 accompanying Qureshi.

[13] Exhibit SMQ-17 accompanying Qureshi  - Facebook Post dated 9 June 2017.

[14] Exhibit SMQ-17 accompanying Qureshi  - Facebook Post dated 29 October 2017.

[15] Exhibit SMQ-17 accompanying Qureshi  - Facebook Post dated 24 May 2018.

[16] Exhibit SMQ-17 accompanying Qureshi  - Facebook Post dated 20 September 2019.

[17] Exhibit SMQ-17 accompanying Qureshi  - Facebook Post 5 October 2014.

[18] Exhibit SMQ-17 accompanying Qureshi  - Facebook Post dated 21 May 2020.

[19] Exhibit SMQ-17 accompanying Qureshi  - Facebook Post dated 15 April 2021.

[20] Exhibit SMQ-17 accompanying Qureshi  - Facebook Post dated 7 May 2021.

[21] Exhibit SMQ-17 accompanying Qureshi  - Facebook Post dated 1 June 2022.

[22] Exhibit SMQ-17 accompanying Qureshi – Facebook Post dated 21 March 2023.

[23] Exhibit SMQ-17 accompanying Qureshi – Facebook Post dated 24 June 2023.

1. The same issue of multiple trade marks being in the Applicant’s evidence is found in the other exhibits accompanying Qureshi as reproduced below:

[24]  [25]  [26]

[24] Exhibit SMQ-12 accompanying Qureshi  -  Facebook Post dated 2 May (with no year).

[25] Exhibit SMQ-16 accompanying Qureshi  -  Dated November 2019.

[26] Exhibit SMQ-18 accompanying Qureshi  -  Twitter Account.

1. While I have noted there is use of the Rooh Afza Trade Mark in Exhibit SMQ-17 on the Facebook page from 2012 until potentially 2017, this use then disappears and a new script mark is employed. I note that the Applicant’s social media accounts as well as its web page were established in Pakistan and appear to be directed at the Pakistan marketplace. Exhibit SMQ-22 to SMQ-25 contain promotional materials/events and articles from around the world featuring the Applicant and many of its different trade marks. While Confidential Exhibit SMQ-26 contains the Applicant’s advertising expenditure in Australia since 2020, these figures are de minimus. There is no detail provided on exactly how this expenditure was incurred promoting the Applicant’s Goods in Australia whereas the Applicant is able to provide numerous articles or advertisements which the Applicant was involved in overseas. It is also unclear if the Applicant’s Trade Marks were ever actively promoted to Australian consumers or how many Australian consumers may have accessed the Applicant’s social media accounts or international articles or promotional materials before the Priority Date.

2. I note the Applicant’s evidence of participating in the Fine Food Australia Exhibition 2018 held from 10-13 September 2018 at the Melbourne Convention & Exhibit Centre which is found in exhibit SMQ-19 and SMQ-20 accompanying Qureshi. Again, the evidence demonstrates use of a number of the Applicant’s other trade marks:

[27] [28]

[27] Exhibit SMQ-19 accompanying Qureshi being a photograph of the stall set up at the event.

[28] Exhibit SMQ-20 accompanying Qureshi being a copy of the brochure handed out at the event.

1. Given the sheer number of other trade marks that the Applicant has demonstrated use of, I cannot be satisfied from the evidence before me that the goods the Applicant sold into Australia were branded under the Applicant’s Trade Marks as applied for and not any of the other trade marks used by the Applicant. There is nothing before me which demonstrates that the Applicant used the Rooh Afza Trade Mark and the Trade Mark continuously on its goods which were sold in Australia from 2004 or from 2012 until the Priority Date. Instead, it appears that the Applicant has many different trade marks which could have appeared on the goods at different times over the years.

2. There are only unsupported assertions in Qureshi, Dhedhy 1 and Dhedhy 2 that the goods sold in Australia bore the Rooh Afza Trade Mark and the Trade Mark for a continuous period of time commencing in 2004. After carefully considering all the evidence, I am not satisfied that the Applicant has demonstrated it has continuously used the Trade Mark or the Rooh Afza Trade Mark in Australia sufficient to overcome the s 44 ground of opposition. As such, the Opponent has established the ground of opposition under s 44 and the Applicant has been unable to overcome it.

Decision

1. 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.

1. I find that the Opponent has met the onus upon it, in terms of the ground of opposition under s44 in regard to the Applicant’s Trade Marks.

Costs

1. 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

28 August 2025