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

[2022] ATMO 83

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 number 1961747 (32) – Hamdard Rooh Afza Inspired by Nature and device - in the name of Hamdard Laboratories (WAQF) Pakistan

Delegate:	Louise Tuohy
Representation:	Opponent: Siobhan Ryan of Senior Counsel instructed by Davies Collison Cave Applicant: Malcolm Bell of Phillips Ormonde Fitzpartrick
Decision:	2022 ATMO 83 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under sections 42(b), 44, 58, 60 and 62A nominated – section 44 established – registration refused.

Background

1. This is an opposition brought by Hamdard National Foundation (India) (‘Opponent’) under s 52 of the Trade Marks Act1995 (Cth) (‘Act’) and relates to the registration of the following trade mark application (‘Application’) in the name of Hamdard Laboratories (WAQF) Pakistan (‘Applicant’):

   Application Number:             1961747

   Trade Mark:  (‘Trade Mark’)

   Filing Date:  12 October 2018

   Specification:  Class 32: syrups for making beverages (‘Goods’)

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

2. The trade mark application was examined as required by s 31 of the Act and advertised as having been accepted for possible registration on 28 February 2020.

3. On 27 April 2020 the Opponent filed a Notice of Intention to Oppose the registration of the Trade Mark followed by its Statement of Grounds and Particulars (‘SGP’) on 27 May 2020. On 10 August 2020 the Applicant filed a Notice of Intention to Defend the opposition of the Trade Mark.

4. Thereafter the Opponent and Applicant filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘Regulations’).

5. Once the time for filing evidence had ended both parties requested to be heard. As a delegate of the Registrar of Trade Marks, I heard the matter on 7 April 2022 by way of video conference. Siobhan Ryan of Senior Counsel, instructed by Davies Collison Cave, appeared for the Opponent. Malcolm Bell of Phillips Ormonde Fitzpatrick appeared for the Applicant. Oral submissions were supplemented by the parties’ written submissions prior to the hearing.  

   Grounds of Opposition, Relevant Date and Onus

6. In the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act. In the hearing the Opponent pressed the grounds under ss 42(b), 44 and 60. I have only found it necessary to address the s 44 ground. Should the decision be appealed, then it would be open to the Opponent to plead any ground it considers relevant in proceedings before the Court.

7. The date at which the rights of the parties are to be determined is 12 October 2018 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

8. The Opponent bears the onus of establishing at least one of the grounds of opposition.0F[1] The standard of proof is the ordinary civil standard of the balance of probabilities.1F[2]

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

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

   Evidence

   Evidence in Support

   • Declaration by Aslam Khan, Chief Legal Consultant of the Opponent, made on 10 November 2020 with Exhibits AK-1 to AK-24.

   Evidence in Answer

   • Declaration by Iqbal Dhedhy, Director of Oasis Corporation Pvt Ltd, made on 8 February 2021 with Exhibit ID-1 (‘Dhedhy declaration’).
   • Declaration by Shahdid Mustafa Qureshi, Director of Corporate and Legal Affairs of the Applicant, made on 9 February 2021 with Exhibits SMQ-1 to SMQ-29 (‘Qureshi declaration’).

   Evidence in Reply

   • Declaration of Murali K Metlapalli, Director of Indya Foods Pty Ltd, made on 13 April 2021 with Exhibit MM-1.  
   • Declaration by Aslam Khan, made on 15 April 2021 with Exhibits AK-25 to AK-28.
   • Declaration by Vikas Makhija, Director of Tapovan Impex Pvt Ltd, made on 15 April 2021.

   Legislative Background and Reasoning

   Section 44

9. Section 44 of the Act 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.

   […]

   (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.

   (4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)  beginning before the priority date for the registration of the other trade mark in respect of:

   (i)  the similar goods or closely related services; or

   (ii)  the similar services or closely related goods; and

   (b)  ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

10. In the SGP the Opponent particularised the ground of opposition as follows:

    The Trade Mark is substantially identical with or deceptively similar to the following Trade Marks, which has an earlier date of priority than the Application and which is registered or applied for with respect to similar goods/services and/or closely related goods/services covered by the Application and, therefore, registration of the Application would be contrary to Section 44 of the Act and/or Regulation 4.15A of the Regulations. The Trade Mark has not been used by the Applicant to satisfy the requirements of Section 44(3) and/or 44(4) and/or 4.15A(3) and/or 4.15A(5).

    The Opponent’s earlier trade mark is:

    ("the Opponent's Mark")

    The Opponent's Mark was filed on 11 July 2014, is wholly contained in the Opposed Mark and covers the same or similar goods.

11. To satisfy the s 44 ground the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar goods or closely related services.

12. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s Mark.

13. From the information set out in the SGP, the Opponent’s Mark is registered by a person other than the Applicant and has a priority date earlier than the Relevant Date.

14. The comparison of goods is straight forward. The Trade Mark claims syrups for making beverages in class 32 which are clearly similar goods to the syrups and preparation for making beverages covered by the Opponent’s Mark in class 32.

    Substantially Identical

15. The test for substantial identity requires that the trade marks be considered side by side having regard to the essential feature of the trade marks.[3] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. In this case both trade marks share the word term ROOH AFZA. However, the Trade Mark contains the word term ROOH AFZA inside an oval device which is surrounded by rose devices; the word HAMDARD inside a rectangle device which sits atop the oval device; the words HAMDARD LABORATORIES (WAQF) PAKISTAN inside a scroll device underneath the oval device; and the phrase INSPRIED BY NATURE in an oval device with two leaves and a scroll device underneath which sits at the bottom right corner of the Trade Mark. In comparison the Opponent’s Mark is for the words ROOH AFZA solus. For these reasons, I find that the compared trade marks are not substantially identical. The total impression emerging from a side by side comparison is not one of similarity.

    [3] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

16. Therefore, the remaining questions under s 44(1) of the Act is whether the Trade Mark is deceptively similar to the Opponent’s Mark.

    Deceptively similar

17. The expression ‘deceptively similar’ is defined by s 10 of the Act:

    10  Definition of deceptively similar

    For 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.

18. The concepts of ‘deceive’ and ‘cause confusion’ were explained in the New Zealand case of Pioneer Hi-Bred Co v Hyline Chicks Pty Ltd, where Richardson J said:

    ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.6F3F[4]

    [4] (1979) 96 RPC 410, 423 (citations omitted).

19. The state of the law regarding confusion was neatly summarised by the delegate in Kicking Horse Coffee Co Ltd:

    In Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd it was noted that ‘the threshold for confusion is not high’. Importantly confusion can be established ‘even if [the] confusion is unlikely to persist up to the point of, and contribute to, inducing sale’. Also, confusion need not be a case of mistaking one trade mark for another; it can be wondering whether the trade marks, which might be readily distinguished from each other, nonetheless come from the same source. 7F4F[5]

    [5] [2018] ATMO 193, [46] (Delegate Brown) (citations omitted).

20. When considering the concept of deceptive similarity the marks are to be compared both visually and aurally8F5F[6] and all the surrounding circumstances are relevant to the consideration:

    You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods.9F6F[7]

    [6] Optical 88 Ltd v Optical 88 Pty Ltd (No. 2) [2010] FCA 1380, [111] (Yates J); see also Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823, [173] (Katzmann J).

    [7] Pianotist Co.’s Application (1906) 23 RPC 774, 777.

21. The approach requires an appreciation that trade marks will be imperfectly recalled, as explained in Australian Woollen Mills Ltd v F.S. Walton and Company Ltd, where Dixon and McTiernan JJ stated:

    [T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.10F7F[8]

    [8] (1937) 58 CLR 641, 658.

22. I consider that the Trade Mark is deceptively similar to the Opponent’s Mark. The essential feature of the Trade Mark and the Opponent’s Mark is the word term ROOH AFZA. While the Trade Mark contains other word and device elements, the Opponent’s Mark contains no other elements by which to distinguish it from the Trade Mark. In result, consumers are far more likely to notice and remember common element ROOH AFZA because it is unusual and highly distinctive of the Goods. Because consumers are more likely to recollect and focus on the common element, they are likely to be deceived or confused as to the trade source.

23. As the Opponent has established that its earlier registered trade mark is deceptively similar to the Trade Mark and covers similar goods, the Opponent has met the requirements of s 44(1). However, this is not the end of the matter as the Applicant was initially successful in overcoming a ground for rejection against the Trade Mark based on the Opponent’s Mark raised during the examination by relying on evidence of prior and continuous use under s 44(4).

24. As a preliminary point the Applicant argues that because the Application has been accepted under the provisions of s 44(4) it is now for the Opponent to prove on the balance of probabilities that the ground is made out. However, the application of s 44(4) is now challenged by the Opponent in this opposition, arguing that the ROOH AFZA trade mark used in Australia from 2005 to 2017 (‘ROOH AFZA trade mark’) was not the Trade Mark. In Challenge Cancer Support Network Inc v Leukaemia Foundation of Queensland, the delegate stated:

    I note that the provisions of s 44(4) were applied in the examination stages…I think that, if the application of that provision is challenged in the opposition forum, the alleged triggering facts should be required to be clearly demonstrated, and this requires a correspondently high evidentiary threshold. If the Applicant, once opposed, intends to rely on this provision, it needs to establish the date of first use positively, by way of facts...[9]

    [9] [2002] ATMO 29 (Delegate Williams).

25. Pursuant to s 44(4), the Applicant must establish that is has used the Trade Mark in relation to the Goods since before the priority date of the Opponent’s Mark, continuously up until the filing date of the Application.

26. In the Dhedhy declaration, Mr Dhedhy states that Oasis Corporation Pvt Ltd (‘Oasis’) purchased from the Applicant ROOH AFZA branded syrups for export from 2005 until 2015. Oasis shipped the Applicant’s ROOH AFZA branded syrups to its Australian branch for sale in the Australian marketplace. Exhibit ID-1 are copies of bills of lading along with packing lists showing shipment of the Applicant’s ROOH AFZA branded products from Oasis to Oasis Australia Pty Ltd dated from June 2012 to May 2015.  

27. The Qureshi declaration states that the Applicant commenced use of the Trade Mark in relation to syrups in Australia in 2005. Exhibit SMQ-9 provides a sample of a label bearing the ROOH AFZA trade mark which had been used by the Applicant in Australia from 2005 until 2017. I have reproduced the sample below:

28. It is the Opponent’s submission that the ROOH AFZA trade mark is not substantially identical to the Trade Mark. The question is whether use of the ROOH AFZA trade mark constitutes use of the Trade Mark. Section 7(1) of the Act provides:

    7  Use of trade mark

    (1)  If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

29. In Sports Warehouse, Inc v Fry Consulting Pty Ltd, Kenny J said:

    Adapting Windeyer J’s statement to the inquiry under s 7(1), whether a person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark requires a side by side comparison of the trade mark with the alleged use, assessing the importance of their similarities and differences having regard to the essential features of the trade mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[10]

    [10] [2010] FCA 664, [154].

30. Similarly, as Yates J asked in Optical 88 Limited v Optical 88 Pty Limited (No 2) when considering this issue:

    Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? For that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival at 391: Shell at 414.[11]

    [11] (2010) 89 IPR 457, [256] (emphasis added).

31. I have reproduced the ROOH AFZA trade mark and the Trade Mark below:

ROOH AFZA trade mark Trade Mark

1. The Opponent argues that on a side by side comparison there are clear differences between the respective trade marks which I have set out in the table below:

ROOH AFZA trade mark	Trade Mark
Fancy script ‘Hamdard’ in fancy rondel with map of world and scrolls	Plain script ‘Hamdard’ in rondel
“Summer Drink of the East”	“Inspired by Nature”
Green rondel with leaves and scroll and the words “Inspired by Nature”
Elongated ‘tails’ on the letters “R” and “A”
Hibiscus flowers	Roses

1. In response the Applicant argues that in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd, (‘Goodman’) Burley J considered whether s 7(1) applied to a hybrid trade mark. Justice Burley held that use of the hybrid trade mark was use of the trade mark with additions and alternations not substantially affecting the latter’s identity,[12] observing that the differences in the trade marks were ‘barely perceptible to the consumers’ eye’.[13] The Applicant submits that although the Opponent points to differences between its trade marks, those differences are minor. Furthermore, the Applicant submits that there is clearly a ‘total impression of similarity’ between its trade marks, noting that both trade marks have:

   a)the same wording ROOH AFZA;

   b)in the same script, in white lettering on a red background;

   c)the same red oval central background;

   d)the same pale blue outer background;

   e)pink flowers, green leaves around the red oval;

   f)the word “Hamdard” at the top of the oval; and

   g)the same scroll at the base of the oval in the same colour with the same wording Hamdard Laboratories (Waqf) Pakistan.

   [12] [2002] FCA 1808, [163].

   [13] Ibid.

2. However, taking these differences and similarities into account, I am not persuaded by the Applicant’s arguments. On a side by side comparison I do not consider the phrase INSPRIED BY NATURE inside a rondel with leaves and scroll will be ‘barely perceptible to the consumers’ eye’. Unlike Goodman, the phrase INSPIRED BY NATURE and device element is an entirely additional element in the Trade Mark not just different words inside a secondary element.[14] Furthermore, the word term INSPIRED BY NATURE is not directly descriptive of the Goods and adds material information about the Goods.[15]

   [14] Ibid.

   [15] [2010] FCA 664, [171].

3. I also note the elongated tails on the letters R and A in the Trade Mark. In my assessment, the stylisation is not a mere embellishment nor is it divisible from the word element. To this end, certain parallels may be drawn with the decision in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd,[16] where the Full Court in finding that the trade marks were not substantially identical, said:

   Having regard to the presentation of the two marks, including the distinctive tail on the “D” of the Wicked Tail Mark and the font and block characteristics of the New Wicked Mark, we do not consider them to be substantially identical.[17]  

   [16] Sports Warehouse, Inc v Fry Consulting Pty Ltd [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

   [17] Ibid [162].

1. On a side by side comparison, the ROOH AFZA trade mark and the Trade Mark have sufficient visual differences between them to answer the question in the negative. I find that the compared trade marks are not substantially identical. The total impression emerging from a side by side comparison is not one of similarity. As such, use of the ROOH AFZA trade mark constitutes use of the Trade Mark with additions or alterations that do substantially affect its identity.

2. I am satisfied that the evidence filed by the Applicant does not establish that the Trade Mark was used in relation to the Goods in Australia since before the priority date of the Opponent’s Mark and the provisions of s 44(4) were not properly applied. Therefore, I find the ground of opposition under s 44 is established.

3. Given that the s 44 ground is established it is not necessary to consider the other grounds of opposition pressed.

   Decision

4. Section 55 of the Act 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.

5. I have found the Opponent has met the onus upon it in terms of the ground of opposition under s 44 of the Act. Therefore, I refuse to register the Trade Mark. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

   Costs

6. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicant under s 221 of the Act in line with Schedule 8 of the Regulations.

   Louise Tuohy
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   24 May 2022