Havmor Ice Cream Ltd v Honest the Snack Shack Pty Ltd

[2016] ATMO 64

TRADE MARKS ACT 1995

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

Re:Opposition by Havmor Ice Cream Ltd to registration of trade mark application 1566925 (29, 32, and 43) - HAVMOR HAVE FUN... (and Device) - in the name of Honest the Snack Shack Pty Ltd.

Delegate:	Heath Wilson
Representation:	Opponent: Kin Seong Leong of Madderns Patent & Trade Mark Attorneys. Applicant: No appearance or submissions.
Decision:	2016 ATMO 64 Opposition under section 52 of the Trade Marks Act 1995 – grounds pressed under sections 42(b), 60 and 62A – use of Trade Mark would be contrary to law – trade mark registration refused.

Background

1. This matter concerns the application for registration of a trade mark filed on 5 July 2013 under the name of Honest the Snack Shack Pty Ltd (‘the Applicant’). The trade mark was allocated number 1566925 and its current details are reproduced below:

   Trade Mark:

   (‘the Trade Mark’)

   Specification of Goods and Services:

   Class 29:

   Baked meat; Burgers (meat patties); Canned meat; Chopped meat patties; Combinations of cheese and meat; Cooked meals consisting principally of fish; Cooked meals consisting principally of meat; Cooked meat; Cooked meat dishes; Corned meat; Deep frozen fish; Dehydrated meat balls; Fish with chips; Food preparations consisting principally of meat; Food preparations consisting principally of meat products; Food preparations made from meat; Food products consisting principally of fish; Food products derived from fish; Food products derived from meat; Food products made from fish; Food products made from meat; Food products made of fish; Foods prepared from fish; Fresh fish (not live); Fresh meat; Frozen cooked fish; Frozen fish products; Frozen meat; Frozen meat products; Frozen prepared meals consisting principally of fish; Frozen prepared meals consisting principally of meat; Grilled meat; Lamb (prepared meat); Meat; Meat burgers (meat patties); Meat conserves; Meat gelatines; Meat products; Preparations made from meat; Prepared meat; Prepared meat dishes; Prepared meat products

   
   
   Class 32:

   Aerated fruit juices; Aromatic extracts of fruits; Beverages consisting of a blend of fruit and vegetable juices; Beverages made from fruit concentrates; Bottled fruit drinks; Bottled fruit juices; Concentrates for use in the preparation of fruit juice drinks; Fresh fruit juices; Frozen concentrated fruit drinks; Frozen fruit juices; Fruit based drinks; Fruit beverages; Fruit drinks; Fruit flavoured non-alcoholic drinks; Fruit juices; Fruit syrup (beverages or for making beverages); Low calorie fruit juices; Mixtures of fruit flavoured drinks; Non-alcoholic fruit extracts

   
   
   Class 43:

   Providing information, including online, about services for providing food and drink, and temporary accommodation

2. The Trade Mark was examined under section 31 of the Trade Marks Act 1995 (‘the Act’) and was accepted for possible registration. The advertisement of that acceptance for opposition purposes appeared in the Australian Official Journal of Trade Marks on 28 November 2013.

3. During the opposition period, a Notice of Intention to Oppose was filed by Havmor Ice Cream Ltd (‘the Opponent’) followed by a Statement of Grounds and Particulars which ultimately set out grounds of opposition under sections 42(b), 43, 58, 60, 62 and 62A of the Act.

4. A Notice of Intention to Defend was filed in which the Applicant indicated an intention to contest the opposition. Following a six-month cooling off period, the evidence stages commenced and the Opponent filed, as evidence in support:

• Declaration of Rajesh J. Shah (VP of the Opponent) made 10 July 2015 with exhibits HM1 and HM2 (‘Shah declaration’).

• Declaration of Jatin Y. Trivedi (Legal representative for the Opponent) made 15 July 2015 with exhibit TVD1 (‘Trivedi declaration’).

• Declaration of Kin Seong Leong (Trade Mark Attorney for the Opponent) made 16 July 2015 with exhibits KSL1 to KSL10 (‘Leong declaration’).

1. No other evidence was filed by either party and after the Opponent requested to be heard the opposition was set down for Friday 15 July 2016 in Canberra. I was allocated the opposition to decide in my capacity as a delegate of the Registrar of Trade Marks. Accordingly, I set out a timetable for the provision of written submissions which was sent to both parties.

2. The Opponent filed its written submissions on 30 June 2016 and confined the grounds to be argued at the hearing to those under sections 42(b), 60 and 62A of the Act. The Applicant did not file written submissions in accordance with the timetable.

3. The hearing was held on the scheduled date with Kin Seong Leong of Madderns Patent and Trade Marks Attorneys making submissions on behalf of the Opponent. The Applicant did not appear or file written submissions.

4. On 13 July 2016, IP Australia received by post a letter from the Applicant with various attachments. Unfortunately, the letter did not come to my attention until after the hearing of the opposition. I noted that the letter had not been sent to the Opponent via Objective Connect[1] and appeared to contain new material. I considered the contents of the material, the lack of explanation for its lateness and the fact that it had not been provided in the evidence stages. In light of my view that the material would have no bearing on the outcome anyway, I wrote to the parties on 19 July 2016 stating my intention not to take the material into account in making my decision on the opposition.  

   [1] The cloud-based computer application used by IP Australia to enable users to share evidence in an opposition proceeding.

5. Subsequently, I proceeded to decide the opposition on the evidence and submissions properly filed in this matter. 

Onus

1. The Opponent bears the onus of establishing one of the grounds stated in the notice of opposition on the balance of probabilities.[2] As it was identified by Mr Leong as the Opponent’s strongest ground of opposition, I will address section 42(b) of the Act at the outset. The rights of the parties are determined as at the date of the application[3] in this case, 5 July 2013 (‘the relevant date’).

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].

Discussion

1. Section 42 of the Act provides:

42Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a)the trade mark contains or consists of scandalous matter; or

(b)its use would be contrary to law.

1. The Opponent argued that the use of the Trade Mark would be contrary to law under section 42(b) of the Act because its use would amount to a contravention of the Copyright Act 1968 (Cth), (hereafter ‘the CA’). Mr Leong submits that the Trade Mark is a reproduction of a substantial part of one (or both) of the Opponent’s works (referring to ss 14(1), 31(1)(a) and 36 of the CA).

2. The case of Advantage Rent-A-Car v Advantage Car Rental Pty Ltd makes clear the role of the Registrar in making decisions of this kind:

   I see no reason why some legislation should be able to be relied on before the Registrar to establish contrariety to law and other legislation such as the Copyright Act, albeit more complex, should not. Further, it is well-settled that a power granted to the Registrar and to a court can be at once administrative and judicial depending on who was exercising the power.[4]

   …

   [T]he Registrar has the comfort that the criterion is that the use "would" not "could" be contrary to law….It should also be noted that what is required is that the Registrar form a view as to whether the use of a trade mark would be contrary to law. Such opinion does not have a similar effect to say, a judicial conclusion of law as to breach of copyright in copyright proceedings; the effect is limited to the refusal of registration.[5]

   [4] Advantage Rent-A-Car v Advantage Car Rental Pty Ltd [2001] FCA 683, [26] (‘Advantage Rent-A-Car’).

   [5] Ibid [28].

3. The undisputed facts from the Shah declaration are that in 1944 in India the late Shri Satishchandra Manoharlal Chona (‘Mr Chona’) had created an artistic work incorporating the expression ‘HAVMOR’. The Leong declaration supplements this information with corroborating evidence. In this respect, exhibit KSL-1 to the Leong declaration consists of an extract from the Register of Copyrights in India for the following work[6]:

(‘first artistic work’)

[6] Registration no. A-68957/2005.

1. The extract indicates the above stylised ‘HAVMOR’ is an original artistic work, it was first published in 1944 in India, the author was Mr Chona and that the applicants were recorded as SMT Rekha Pradeepkumar Chona and Ms Riti Pradeepkumar Chona of M/S Havmore Distributors Pvt, Ltd and M/S Havmor Ice Cream Co (the predecessor of the Opponent).

2. Exhibit KSL-2 contains a copy of another extract from the Register of Copyrights in India, this time for the HAVMOR ice cream (label).[7] The label was first published in 1985 and the name of the applicant is M/S Havmor Ice Cream Co. A representation of the registered work can be seen below:

[7] Registration no. A-69239/2005.

(‘second artistic work’)

1. ‘HAVMOR’ has been the name used to sell the Opponent’s ice cream since 1944 and its principal place of business is in Ahmedabad, India. The invented word ‘Havmor’ has been described by the Opponent as a portmanteau word and it is an exhortation to the customer to ‘have more’ of the Opponent’s ice cream product.

2. The Opponent’s subsequent labelling since 1944 has undergone different variations but, invariably, the expression ‘HAVMOR’ presented in the fashion of the first artistic work features prominently. For example, one representation of the Opponent’s labelling can be seen below:

(‘the cone trade mark’)

1. The main component of the cone trade mark was published with the shield device upon which the expression ‘Havmor’ is printed. The shield device is represented in red with the word ‘Havmor’ appearing in a white font. Although the Trade Mark is not limited to any particular colour[8], I note that the application appears with ‘HAVMOR’ in a white font on a red shield background. I would also mention for completeness that the Trade Mark features the expression ‘Have Fun…’ and one of the Opponent’s other trade marks within the Shah declaration features an example of labelling with the first artistic work next to the expression ‘hav funn’.[9]

   [8] Section 70(3) of the Act.

   [9] Shah declaration, [6] and exhibit KSL-7 to the Leong declaration.

2. I have produced the above information regarding the Opponent’s labelling to provide further background to this matter. However, the decisive issue is the Opponent’s rights in the first and second artistic works as described above and whether the use of the Trade Mark would be contrary to law. I will address those issues now.

Validity of the Opponent’s Copyright

1. An ‘artistic work’ within the meaning of section 10 of the CA is:

   [A] painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not.

2. Whether or not the Opponent’s artistic works are original is determined by the fact that the creator did not copy it from another work[10] and there is no suggestion of that occurring here. The originality of the works has not been disputed by the Applicant and the fact that these works have been recorded on the Indian Register of Copyrights further affirms the Opponent’s claim.

   [10] See Park Racing & Recreation Grounds Co Ltd v Taylor [1937] HCA 45; (1937) 58 CLR 479, [511] (Dixon J).

3. In terms of the applicability of the CA to the Opponent’s artistic works, Madgwick J made the following findings in Advantage Rent-A-Car:

   …s 184(1)(c) allows for the provisions of the Copyright Act to apply to persons who are citizens of another country in the same manner that they apply to persons who are Australian, by the making of regulations. Regulation 4 of the Copyright (International Protection) Regulations 1969 does what is allowed by s 184(1)(c). Schedule 1, Part 1 of the Regulations lists the United States of America as one of the countries to whose citizens the protection of the Copyright Act applies.[11]

   [11] Advantage Rent-A-Car, [16].

4. Section 184 therefore indicates the provisions of the CA can apply to countries other than Australia and regulation 4 of the Copyright (International Protection) Regulations 1969 relevantly provides:

   Work, and subject-matter other than a work, made or first published in a foreign country

   (1) Subject to these Regulations, a provision of the Act that applies in relation to a literary, dramatic, musical or artistic work or edition first published, or a sound recording or cinematograph film made or first published, in Australia (an Australian work or subject-matter ) applies in relation to a literary, dramatic, musical or artistic work or edition first published, or a sound recording or cinematograph film made or first published, in a Berne Convention country, a Rome Convention country, a UCC country, a WCT country, a WPPT country or a WTO country (a foreign work or subject-matter ):     

   (a) in the same way as the provision applies, under the Act, in relation to an Australian work or subject-matter; and

   (b)  as if the foreign work or subject-matter were made or first published in Australia.

5. For the avoidance of doubt, India became a party to the Berne Convention for the Protection of Literary and Artistic Works on 1 April 1928. As a result, the CA applies to the original artistic works owned by the Opponent in India.

6. Exhibited to the Leong declaration is the death certificate of Mr Chona dated 20 August 1983. I am satisfied that the copyright continues to subsist in the Opponent’s artistic works as section 33(2) of the Act provides:

   (2)  Subject to this section, copyright that subsists in a literary, dramatic, musical or artistic work by virtue of this Part continues to subsist until the end of 70 years after the end of the calendar year in which the author of the work died.

7. With regard to the chain of title for the works, the Opponent was incorporated on 27 March 2006 and the deed of partnership at exhibit KSL-4 to the Leong declaration shows the connection between the applicants for the copyright in the artistic works and the Opponent. The evidence appears to indicate that Mr Chona was originally the sole proprietor of the Havmore Ice Cream Company, the rights in which eventually passed to the Opponent.

8. Ultimately, I am satisfied that the Opponent’s first and second artistic works are original works, that the rights are applicable in Australia and were valid at the time the Applicant filed the Trade Mark to be registered.

‘A Substantial Part’

1. In the case of Optical 88 Limited v Optical 88 Pty Limited (No 2), the question of whether there has been a substantial reproduction of an artistic work was addressed. It was found that the consideration:

   [I]nvolves a comparison of the two works and the formation of a judgment based on the eye as to the degree of resemblance between the two. The degree of resemblance must be such that, to the eye, the first respondent’s logo reproduces, or reproduces a substantial part of, the applicant’s logo.[12]

   [12] Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380, [310] (‘Optical 88’).

2. Yates J in Optical 88 also made it clear that:

   The test for determining deceptive similarity in the context of trade mark infringement involves an analysis that is quite different to the analysis involved in determining whether there has been an infringing reproduction for copyright purposes. The two tests should not be confused. In particular, one test should not be incautiously applied as a proxy for the other.[13]

   [13] Optical 88, [317].

3. Although there are certain visual differences between the Trade Mark and the Opponent’s artistic works, the distinctive stylized expression HAVMOR, or failing that, the distinctive stylized expression on the red shield device has been substantially reproduced in the Trade Mark. That element is the important and essential part of the Trade Mark. The presence of the cartoon chef and the exhortation to ‘have fun…’ also featured in the Trade Mark do not alter my finding in this regard. I find that those additional elements surround and emphasize an entire reproduction of the first artistic work and also a reproduction of a substantial part of the second artistic work.

4. I will also add, for completeness, that while the Applicant has had every opportunity to do so, it has not filed any evidence or submissions disputing the arguments and evidence produced by the Opponent. In particular, the ownership of the Opponent’s copyright in the first and second artistic works or the submission that the Trade Mark contains a reproduction of one (or both) of them has never been rebutted.

5. Section 36(1) of the CA  provides:

   Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.

6. On the face of it, there has been an unauthorized reproduction of the Opponent’s artistic works. The filing of the Trade Mark and any subsequent commercial use of it by the Applicant is likely to amount to a breach of the CA. That being my finding, I am satisfied that the use of the Trade Mark would be contrary to law and I find that the ground of opposition under section 42(b) of the Act has been established on the balance of probabilities.

7. As a ground of opposition has been established, I need not address the remaining grounds of opposition pursued by the Opponent at the hearing. However, as an appeal to a prescribed court is de novo (or ‘anew’) in nature, those grounds (and others available under the Act) would be available to the Opponent in the event of an appeal.

Decision

1. Section 55 of the Act relevantly provides:

55Decision

(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:For limitations see section 6.

1. The Opponent has established a ground of opposition under the Act. I refuse to register trade mark application no. 1566925.

Costs

1. An award of costs ordinarily follows the event in these matters and I can see no reason why this opposition should differ. As it is the unsuccessful party, I award costs under section 221 of the Act against the Applicant in accordance with the applicable amounts set out in Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson
Hearings Officer
Oppositions and Hearings
18 August 2016