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

[2023] ATMO 69

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 2142560 (5, 32) – HAMDARD– in the name of Hamdard Laboratories (WAQF) Pakistan

Delegate:

Nicholas Smith

Representation:

Opponent: Siobhan Ryan instructed by Davies Collison Cave Pty Ltd

Applicant: Written Submissions by Philips Ormonde Fitzpatrick

Decision:

2023 ATMO 69

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 58 and 60 considered – s 58 established with respect to a majority of the goods for which the mark was sought to be registered – s 60 not established – registration refused

Background

1. This decision concerns an opposition brought by Hamdard National Foundation (India) (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Hamdard Laboratories (WAQF) Pakistan (‘Applicant’): 

Application Number:	2142560
Filing Date[1]:	10 December 2020
Goods:	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 Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages (‘Applicant’s Goods’)
Trade Mark:	HAMDARD	(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, on 9 August 2021, the Opponent filed a Notice of Intention to Oppose the registration and a Statement of Grounds and Particulars (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 58, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 2 November 2021. 

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 29 January 2022 by Javed Akhter, Authorized Signatory of the Opponent, with Exhibits JA-1 to JA-26 (‘Akhter 1’).  Akhter 1 contains as Exhibits JA-4 and JA-4A, two further declarations, the first by Murali Metlapalli dated 13 April 2021 and the second by Vikas Makhija dated 15 April 2021, both filed in respect of an earlier opposition to the registration of trade mark application 1961747 for a figurative trade mark containing the words ROOH AFZA

   ·Declaration made on 29 January 2022 by Aslam Khan, the Chief Legal Consultant of the Opponent, with Exhibits AK-1 (‘Khan declaration’).  The Khan declaration annexes Akhter 1 and confirms its accuracy.

   5. The Applicant filed the following evidence in answer:

   ·Declaration made on 9 May 2022 by Malcolm Bell, principal of Philips Ormonde Fitzpatrick, the representative of the Applicant, with Exhibits MNB-1 to MNB-5 (‘Bell declaration’).  The Bell declaration contains, as Exhibits MNB-1 to MNB-3, three declarations filed in respect of other oppositions between the parties in respect of ROOH AFZA being a declaration of Shahid Mustafa Qureshi made 9 February 2021, a declaration by Iqbal Dhedny made 8 February 2021, both filed in the opposition to trade mark application 1961747 and a declaration of Shahid Mustafa Qureshi made on 23 August 2021 in respect of the opposition to trade mark 2073320.

2. The Opponent filed the following evidence in reply:

   ·Declaration made on 15 July 2022 by Javed Akhter, with Exhibits JA-27 to JA-30 (‘Akhter 2’).

3. The entirety of the evidence filed by the Opponent, including publicly available information such as the public use of its marks or its sales in Australia is expressed to be confidential.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[2]

   [2] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

4. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

   9. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  On 22 August 2022 the Opponent requested an oral hearing.  The matter was set down for a hearing in Canberra on 18 April 2023 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 30 January 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 6 April 2022 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 14 April 2022 (‘Applicant’s Submissions’) but chose not to participate in the oral hearing.  At the hearing Siobhan Ryan KC of Counsel represented the Applicant, instructed by Elizabeth Godfrey of Davies Collison Cave.

   10.     I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Parties

5. 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.      

   The Opponent

6. The Opponent is an Indian company that is the successor in title of the Hamdard Dawakhana Clinic, founded in India in 1906.  

   13.     The relevant claims/statements in Akhter 1 and 2 can be summarised as follows:

   ·     The Opponent (including related entities such as Hamdard Laboratories (India)) and its predecessor in title has been manufacturing fruit beverages and medicines continuously for over 100 years.  The Opponent and Applicant are well-known to each other and have been involved in numerous disputes over the years including two disputes in Australia relating to the registration of figurative trade marks containing the words ROOH AFZA.  The Opponent is the owner in Australia of the word marks ROOH AFZA (TM No. 1633931 filed 11 July 2014 for class 32 goods) and SAFI (TM No. 1633937 filed 11 July 2014 for class 5 goods)

   ·     The Opponent first used a trade mark HAMDARD, in word and logo form (‘HAMDARD Mark’) in India in 1906 and in Australia since 2005.  It uses the HAMDARD Mark in respect of fruit drinks, fruit juices, non-alcoholic drinks, syrups and preparations for making beverages.  It also uses the mark in respect of pharmaceutical and medicinal healthcare products including goods relating to heart care, stomach care and digestive care.

   ·     The Opponent has exported its goods to Australia through its distributors Indya Foods Pty Ltd and Tapovan Impex Pvt. Ltd since 2006.

   ·     The Opponent has considerable sales of its fruit beverage product sold under the product name ROOH AFZA in in Australia including from major retailers such as Woolworths.  It also sells a blood purifier product under the product name SAFI in Australia.

   ·     The Opponent uses the HAMDARD mark on its website at and on shipping documentation, on its products, on promotional material and on social media.

   ·     The Opponent denies that there was any agreement between the parties in the 1950s that limited the Opponent’s right to export its products and/or use any marks.     

   14.     The annexures to Akhter 1 and 2 include declarations from the Opponent’s distributors stating that the Opponent’s ROOH AFZA beverage products had been imported to Australia since 2006.  The ROOH AFZA beverages display the HAMDARD Mark in stylised form and the word HAMDARD had been used on shipping manifests and invoices. The annexures also include evidence from the Internet Archive Wayback Machine showing evidence of the use of the Trade Mark on the Opponent’s website, accessible from Australia, since as early as April 2001.  The Opponent also provides evidence of its sales revenue in Australia from 2010 to 2020 which is reasonably impressive and consistent with its confidential sales figures provided in paragraph 22 of Akhter 1.

   15.     The annexures to Akhter 1 and 2 also annex invoices and shipping documentation, dated as early as 2013, that display the HAMDARD Mark in connection with the sale of ROOH AFZA beverage, the SAFI blood purification product and the JOHSINDA cold and sore throat treatment to companies exporting the products to Australia.  They also contain evidence of promotion of the Opponent and its marks (primarily the Opponent’s ROOH AFZA mark), with global advertising expenditure being unimpressive and limited advertising and promotional events being undertaken in Australia.  Each of the ROOH AFZA, JOHSINDA and SAFI products contain labels that display the HAMDARD Mark above the product name.

   The Applicant

7. The Applicant is a Pakistani company that was founded in 1948 to manage the Pakistan portion of the Hamdard business after the partition of India in 1947.     

   17.     The relevant claims/statements in the Bell declaration (made in the declarations exhibited to the Bell declaration) can be summarised as follows:

   ·     The Applicant has sold beverages under the ROOH AFZA mark in Pakistan and around the world since 1951. It first used the ROOH AFZA mark in Australia in 2005 through its distributor Oasis Corporation Pvt Ltd though it does not have copies of its invoices between 2005 and 2012.

   ·     Oasis Corporation Pty Ltd is a related corporation to Oasis Corporation Pvt Ltd.  It would import the ROOH AFZA product from Oasis Corporation Pvt Ltd and distribute the ROOH AFZA products to its retailers and customers in all states and territories of Australia.

   ·     The Applicant uses the HAMDARD mark on its website at on shipping documentation, on its products, on promotional material and on social media.

   ·     Due to India being a larger country than Pakistan, there was an oral agreement between the sons of Janab Hakeem Hafiz Abdul Majeed following the establishment of the Applicant that the Opponent would concentrate on the Indian market and the Applicant would have the right to export their products under the HAMDARD mark overseas.    

   18.     The annexures to the Bell declaration include a bill of landing and packing list from 2012 showing the export of the Applicant’s ROOH AFZA product to Australia, however the invoice or packing list does not show the use of the Trade Mark.  There are invoices from 2015 that feature the HAMDARD Mark showing a direct sale of products described as ROOH AFZA and SAFI from the Applicant to Oasis Corporation Australia Pty Ltd.  However, there is no information contained in the Bell declaration as to the nature of the SAFI product referred to in the 2015 invoices. 

   19.     The annexures also include evidence of promotion of the Trade Mark and the ROOH AFZA mark as well as evidence of sales outside Australia.  The annexures also include evidence from the Internet Archive Wayback Machine showing evidence of the use of the Trade Mark on the Opponent’s Website, accessible from Australia, since as early as 2008. 

   Grounds of Opposition, Onus and Standard of Proof

8. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 60 and 62A but in its written submissions indicates that it only presses the grounds under ss 58 and 60.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   21.     The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of s 60.[5]

   Discussion

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

   [4] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

   Section 58 – Applicant not owner of trade mark

   22.     Section 58 is reproduced below:

   Section 58. Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

   23.     The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[6]

   · that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[7] and

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[8]

   [6] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).

   [7] Re Hicks’ Trade Mark (1897) 22 VLR 636 , 640 (Holroyd J).

   [8] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

   24.     The ground based on s 58 was particularised in the SGP as follows:

   The Opponent has used the mark HAMDARD on or in relation to non-alcoholic drinks, beverages and syrups, including fruit drinks, fruit juices, non-alcoholic drinks, syrups and preparation for making beverages, Unani and ayurvedic medicinal products and dietetic beverages and syrups for medical use, including Unani and ayurvedic herbal preparations for maintaining health and wellness, cosmetics and medicinal products in Unani and ayurvedic medicines and/or related products in Australia since prior to 10 December 2020, the filing date of the Opposed Mark. These goods are the same as or the same kind of thing as the goods claimed in classes 5 and 32 of the Opposed Mark. The Opposed Mark is substantially identical to the Opponent's Mark.

   25.     The principles when a trade mark has been used were recently summarized in the case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

   Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

   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, 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.

   The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[9]

   [9] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (footnotes removed).

   26.     Both the Applicant and Opponent use the HAMDARD mark in plain word form (on invoices) and as a device with limited stylisation.  I am satisfied that the stylised forms of the HAMDARD mark used by both parties are substantially identical to the Trade Mark and as such amounts to use of the Trade Mark.  Much of the Applicant and Opponent’s evidence of use falls into similar broad categories; which I have assessed below:

   ·Both parties make unsupported statements saying that they have imported their ROOH AFZA products into Australia since 2005.  As neither of these statements are supported by any documentary material, I have not taken them into account for determining the first use of the Trade Mark in Australia.

   ·The Opponent provides invoices showing the sale of ROOH AFZA products to an Indian exporter (Tapovan Impex Pvt Ltd) in 2010 that are said to have been exported to Australia, but absent any evidence that the products were exported I do not accept these invoices (between two Indian companies) are sufficient to show use.

   ·Both parties refer to the presence of the Trade Mark on their respective websites accessible from Australia.  Ward Group Pty Ltd v Brodie & Stone Plc[10] is authority that use of a trade mark on a website occurs in Australia when the mark is used on a website accessible in Australia, and when there has been a sale in Australia and/or if there is evidence that the use of the mark on the website was specifically intended to be made in, or directed or targeted at Australia.  In the present case, broad statements that a website is accessible from Australia, absent evidence that a party’s products are sold in Australia or targeted at the Australian market do not amount to trade mark use.  As such this material is essentially irrelevant in establishing trade mark use prior to the date that each party can conclusively establish that their products were exported to Australia.

   ·The Applicant provides evidence, in 2015, showing the sale of what is described as the HAMDARD SAFI product from Pakistan to Australia (along with other products such as Suduri and Roughan Badam Sherin).  However, in contrast to the Opponent, who provides details about the nature of their SAFI and JOHSINDA products, there is no evidence before me what the Applicant’s SAFI product is and I am not prepared to simply assume that it is the same product as the Opponent’s product.  I find the evidence of the sale of the HAMDARD SAFI product in Australia to be of no value in establishing ownership of the Trade Mark for any of the Applicant’s Goods as I do not have evidence of whether the SAFI product falls within the Applicant’s Goods.

   ·The Applicant makes allegations of an oral agreement between founding brothers in the 1950s that the Opponent would concentrate on the Indian market and the Applicant would have the right to export the HAMDARD products overseas.   This is denied by the Opponent.  To the extent this alleged agreement is relevant to the s 58 ground of opposition the Applicant has failed to establish the existence of the agreement on the balance of probabilities.

   [10] 2005 FCA 471 (Merkel J).

   27.     The Applicant raises two questions about the evidence provided by the Opponent, namely the relationship between the declarants and the Opponent itself, and the absence of any documentary evidence of any licence between the Opponent and the purported user of the Trade Mark, Hamdard Laboratories (India).  I am satisfied that, as stated in their evidence, the declarants are both officers of the Opponent and, as stated in paragraph 16 of Akhter 2, the entities that they work for being the Hamdard National Foundation (India) (Hamdard Education and Cultural Aid (HECA) and Hamdard National Foundation (India) Medical Relief and Education Committee (MERC) are divisions within the Opponent, not separate entities.  Furthermore, it is not necessary to resolve the question of the validity of the licence between the Opponent and Hamdard Laboratories (India); what is required under s 58 is that the Opponent establish that a person other than the Applicant has the earlier claim to ownership of the Trade Mark; it does not matter if that entity is the Opponent; or (if I were to find that the use by Hamdard Laboratories (India) was not under the control of the Opponent) Hamdard Laboratories (India).

   28.     At paragraph 27 of the Applicant’s Submissions the Applicant refers to an earlier decision by this office in respect of the ROOH AFZA trade mark (TM. No 1961747). [11]  The Applicant states that its evidence as to the importation of ROOH AFZA was accepted by the hearing officer in that case.  This is not quite correct.  In that case the hearing officer noted at paragraphs 26 and 27 of her decision that the Applicant’s declarations (which are the same declarations provided in this case) state that the Applicant had used a device featuring the ROOH AFZA mark in Australia since 2005.  The decision does not accept or dismiss this evidence rather the hearing officer makes the finding that the device supposedly used featuring the ROOH AFZA mark was not substantially identical to the mark the Applicant (in that matter) sought to register.  It is not a conclusive finding of use.

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

   29.     I am satisfied by the evidence before me that the Opponent can show use of the Trade Mark in respect of its ROOH AFZA, SAFI and JOHSINDA product since 2013.  This evidence comes in the form of dated invoices bearing the HAMDARD Mark for products described as HAMDARD ROOH AFZA, HAMDARD SAFI and HAMDARD JOHSINDA, with HAMDARD operating as the house mark and ROOH AFZA, SAFI and JOHSINDA operating as product marks.  Each of these invoices is supported by detailed shipping documents and packing declarations showing the delivery of these products to Australia.  This is not a case where the Trade Mark is applied at the top of an invoice (such that it is unclear whether the mark is used in connection with particular goods or in relation to services (retail or wholesale) in respect of goods); here the Trade Mark is used in respect of specific products.

   30.     Conversely the Applicant’s evidence of use is more limited.  The Bell declaration shows invoices and packing lists dated 2012/13 between Oasis Corporation (Pvt) Ltd. and Oasis Corporation Australia Pty Ltd.  These invoices show the sale and delivery of ROOH AFZA to Australia but there is no evidence of any use of the Trade Mark on those invoices, or indeed any evidence of any use of the Trade Mark on any document dated prior to 2015. 

   31.     Based on my evaluation of the evidence, I am satisfied that the Opponent has established use of the Trade Mark in Australia in respect of its ROOH AFZA beverage, the SAFI blood purification product and the JOHSINDA cold and sore throat treatment prior to any proven first use of the Trade Mark in Australia by the Opponent or the relevant date.  The first and third factors for s 58 are established.  The next question is whether the ROOH AFZA beverage, the SAFI blood purification product and the JOHSINDA cold and sore throat treatment are the same kind of thing as the Applicant’s Goods.

   32.     In respect of the second factor the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews[12] 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[13].

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

   [13] Colorado Group Limited v Strandbags Group Pty Ltd (‘Colorado’) [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340.

   33.     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.

   34.     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’).

   Section 60

1. Section 60 is reproduced below:

   Section 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.

2. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

3. In McCormick & Co Inc v McCormick[14], Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[15]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [14] [2000] FCA 1335.

   [15] Ibid, [81].

   [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. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[16]

   [16] (1992) 33 FCR 302, 343.

4. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[17]

   [17] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

5. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered.  The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[18] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   [18] (2000) 50 IPR 1.

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[19]

   [19] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

6. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   Reference is made to the details of the Opponent's reputation set out in the particulars in 1 above. As a result of the Opponent's reputation in Australia as a result of use of the HAMDARD Trade Mark in Australia since at least as early as 2013, (noting that the client's product was available in Australia before that time) and internationally in the HAMDARD Trade Marks, consumers are likely to be deceived or confused into believing that the goods offered and provided under the Opposed Mark are the Opponent's goods, somehow associated or affiliated with the Opponent or endorsed by or sponsored by the Opponent, when that is not the case.

   The likelihood of deception or confusion occurring is increased because of the Opponent's name HAMDARD which is also included in the Opposed Mark and the Opposed Mark covers identical or goods of same description for which the Opponent has its reputation.

7. I am not satisfied that at the relevant date the Opponent had established a reputation in the Trade Mark in Australia.  While I am satisfied that the Opponent had sold its ROOH AFZA, SAFI and JOHSINDA products in Australia for approximately 7 years prior to the relevant date, I consider the level the level of advertising to be almost non-existent, amounting to no more than a presence at a couple of trade shows.  I am not satisfied that any reputation in the Trade Mark arises from the use of the Trade Mark on invoices or packing materials.  While the level of sales for the ROOH AFZA product is significant[20] it is apparent that the product is very strongly identified by the ROOH AFZA mark, with the ROOH AFZA mark being in a prominent location on the packaging and the Trade Mark being in a smaller font and secondary location.  Given the nature of the products for which a reputation is claimed, being beverages and medicinal products, which are consumer products available to the entire Australian population, the fact that the ROOH AFZA is primarily sold by reference to the ROOH AFZA mark and not the Trade Mark, the level of sales and advertising and other evidence is simply insufficient to establish a reputation such that the use of the Trade Mark by the Opponent for the Remaining Goods (which in any event are different to the goods that the Opponent offers under the Trade Mark) would be likely to deceive or cause confusion.

   [20] As opposed to the evidence of the sales of the Opponent’s medicinal products which is limited.

8. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

   Resolution of Opposition

9. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

   My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[21]

   [21] [2014] FCA 1304, [232].

10. In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.

    45.   Neither party has filed evidence or submissions in this case and/or raised the possibility of an amendment.  There is no evidence before me of the Applicant ever having used, or intending to use the Trade Mark for the Remaining Goods.  In circumstances where the opposition has been established for a majority of the Applicant’s Goods and there is no compelling evidence or submissions suggesting the need for an amendment, I do not consider it appropriate to offer an amendment in respect of the present trade mark application.  If the Applicant wishes to register the Trade Mark for a more narrow range of goods, such as the Remaining Goods it may make a separate application.

    Decision and Costs

11. I have found the Opponent has established the ground of opposition it raised pursuant to s 58.  As the Delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

12. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    30 May 2023