Jabsons Foods Pvt Ltd v GS Pacific Marketing (Aust) Pty Ltd

[2022] ATMO 154

TRADE MARKS ACT 1995

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

Re:Opposition by GS Pacific Marketing (Aust) Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Jabsons Foods Pvt Ltd for removal of trade mark number 1674598 (Classes 29, 30, and 31) – JABSONS – in the name of GS Pacific Marketing (Aust) Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Go Trademarks.   Applicant: Collison & Co.
Decision:	2022 ATMO 154 Trade Marks Act 1995 (Cth) – application under section 92 – opposition to removal established for some goods – appropriate to exercise discretion for additional goods - trade mark to be removed for remaining goods.

Background

1. Jabsons Foods Pvt Ltd (‘Removal Applicant’) on 9 July 2020 applied under s 92 of the Trade Marks Act 1995 (Cth)[1] (‘Removal Application’) for removal of registered trade mark number 1674598 in the name of GS Pacific Marketing (Aust) Pty Ltd (‘Removal Opponent’). The registration is for JABSONS (‘Trade Mark’) in respect of the following goods:  

   Class 29: Curry (prepared meals with or without rice); Rice milk (milk substitute)

   Class 30: Creamed rice; Extruded food products made of rice; Flavoured rices; Flour of rice; Foodstuffs made of rice; Fried rice; Frozen meals consisting primarily of rice; Frozen prepared rice; Kheer mix (rice pudding); Meals made predominantly from rice, pasta or noodles; Natural rice flakes; Prepared meals containing (principally) rice; Prepared rice dishes; Puffed rice; Ready-to-eat puddings; Rice; Rice based snack foods; Rice biscuits; Rice cakes; Rice chips; Rice crackers; Rice crust; Rice flour; Rice mixes; Rice paper; Rice prepared for culinary purposes; Rice products for culinary purposes; Rice pudding; Rice salads; Rice sticks; Rice tapioca; Sauces for rice; Snack food products made from rice; Snack food products made from rice flour; Snack foods consisting principally of rice; Wild rice (prepared)

   Class 31: Rice meal for forage; Rice, unprocessed

   (‘Registered Goods’)

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. The Removal Opponent filed a notice of intention to oppose removal on 10 September 2020, and a statement of grounds and particulars (‘SGP’) on 12 October 2020. The Removal Applicant filed a notice of intention to defend the Removal Application on 11 January 2021.

3. The parties were able to file evidence in accordance reg 9.16. The Removal Opponent filed Evidence in Support (‘EIS’) on 12 April 2021. The Removal Applicant filed Evidence in Answer (‘EIA’) on 14 July 2021. The Removal Opponent did not file Evidence in Reply.

4. The parties were given the opportunity to be heard by videoconference or by written submissions. Both parties requested to be heard by way of written submissions. Submissions were filed by Dr Robert Burrell of Go Trademarks on behalf of the Removal Opponent, and by Anthony Norris of Collison & Co on behalf of the Removal Applicant. I have decided this matter as a delegate of the Registrar of Trade Marks based on the particulars set out in the SGP, EIS, EIA, and the written submissions of the parties.

   Evidence

5. The following declarations were filed as evidence:

   EIS

   Declaration of Gurmeet Kohli, Director of Removal Opponent, made on 12 April 2021, with Exhibits GK1 to GK5.  

   EIA

   Declaration of Rahul Agarwal, Director of Removal Applicant, made on 12 July 2021, with Exhibits RA1 to RA15. 

   EIS

6. Mr Kohli declares that the Removal Opponent has since 2005 been an importer, distributor, and seller of various food products predominantly of Indian origin. The Removal Opponent sells its own range of products as well as importing and distributing other brands.

7. Mr Kohli declares that the Removal Opponent first adopted the Trade Mark after he took a trip to India in 2010. Mr Kohli saw the Trade Mark being used in India and felt it would be a suitable name to use in Australia. Mr Kohli declares that at that time, he believed that products sold under the Trade Mark in India were not sold in Australia. Mr Kohli declares that since 2010, the Removal Opponent has sold a range of goods under the Trade Mark in Australia including rice, rice flour, rice flakes, bhel mix (a rice based snack), rice crackers, rice papadums, and rice fryum.

8. Mr Kohli declares that goods are supplied to the Removal Opponent by Alvand Fine Foods Pty Ltd (‘Alvand’). These goods are then sold by the Removal Opponent to retail outlets. Mr Kohli annexes various invoices dated between February 2020 and May 2020 issued by Alvand to the Removal Opponent which indicate that bhel mix (rice snacks), rice papadums, rice fryum, rice crackers, rice, rice flour, and rice flakes were supplied under the Trade Mark to the Removal Opponent. Mr Kohli also annexes three invoices issued by the Removal Opponent to retail customers that display the Trade Mark. One is dated 13 December 2012. The other more recent invoices are dated 9 April 2020 and 15 April 2020. The items listed next to the Trade Mark in the recent  invoices are rice, rice flour, and rice flakes. Photographs annexed to the declaration also indicate that the rice sold by the Removal Opponent is processed basmati rice.

   EIA

9. Mr Agarwal declares that the Removal Applicant was incorporated in 1985 and is a manufacturer of food products based in India. The Removal Applicant has used JABSONS as a brand since 2005 and it exports products under that brand to over 23 countries. The JABSONS brand has been registered in various forms to the Removal Applicant in India and other countries at various times since 2004.

10. Mr Agarwal declares that the Removal Applicant has exported goods to Australia under the JABSONS brand since 2009 and annexes documents indicating products were sold to various Australian companies in 2009, 2010, and 2012.

11. Mr Agarwal declares that in 2015, the Removal Applicant appointed Tapovan Impex to handle export of JABSONS branded goods to Australia. In 2015, Tapovan Impex informed the Removal Applicant that it was supplying products to the Removal Opponent. Under this distribution arrangement, the Removal Applicant (via Tapovan Impex) supplied an appreciable quantity of goods to the Removal Opponent between March 2015 and July 2019.

12. Mr Agarwal declares that in 2020, representatives of the Removal Opponent and Removal Applicant met in Australia (after an earlier encounter in India) to negotiate direct distribution of the Removal Applicant’s goods by the Removal Opponent in Australia.

13. Mr Agarwal declares that following this meeting, the Removal Opponent refused to sign or acknowledge the terms/understandings of the proposed agreement. The Removal Applicant subsequently cancelled an order in April 2020 and destroyed products prepared to fulfil that order. The annexed email correspondence indicates that the breakdown in the business relationship was not amicable.

14. Mr Agarwal declares that subsequent investigations uncovered that the Removal Opponent had registered the Trade Mark in Australia. The Removal Applicant subsequently decided to file the Removal Application and also to file its own application to register JABSONS in Australia.

15. Mr Agarwal refutes claims made by Mr Kohli that JABSONS branded goods were not being sold in Australia prior to 2010. Mr Agarwal also mentions that the first order of goods by the Removal Opponent from the Removal Applicant (via Tapovan Impex) was one day prior to the filing date of the Trade Mark.  

    Grounds, onus and standard

16. The Removal Application nominates grounds for removal under s 92(4)(a) and (b) in relation to all of the Registered Goods. Section 92(4)(a) and (b) state:

    92 Application for removal of trade mark from Register etc.

    (4)  An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

    (a)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

    (i)to use the trade mark in Australia; or

    (ii)to authorise the use of the trade mark in Australia; or

    (iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services to which the non-use application relates and that the registered owner:

    (iv)has not used the trade mark in Australia; or

    (v)has not used the trade mark in good faith in Australia;

    in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed.

    (b)  that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

    (i)  used the trade mark in Australia; or

    (ii)  used the trade mark in good faith in Australia;

    in relation to the goods and/or services to which the application relates.

17. The grounds for removal under both s 92(4)(a) and 92(4)(b) are for the Removal Opponent to rebut.[2]

    [2] Trade Marks Act 1995 (Cth) s 100(1)(c).

18. The Removal Opponent relies on use of the Trade Mark for the rebuttal.[3] However, I also have a discretion to allow the Trade Mark to remain registered for some or all of the Registered Goods even if there has been no use of the Trade Mark at relevant times.

    [3] Ibid s 100(3)(a).

19. All findings of fact in these reasons are based on the ordinary civil standard of the balance of probabilities.

    Discussion

    Section 92(4)(b)

20. As a preliminary, I note:

    (i)as the Removal Application was filed on 9 July 2020, for the purposes of deciding the opposition under s 92(4)(b), the relevant three-year period is the period ending on 9 June 2020 (‘Relevant Period’).

    (ii)since the Trade Mark was filed prior to 24 February 2019, a ground for removal under s 92(4)(b) may only be relied on by the Removal Applicant once a period of five years has passed since the filing date of the Trade Mark.2F[4] As the Trade Mark was filed on 13 February 2015, which is more than five years prior to the filing date of the Removal Application, this requirement is met.

    [4] Ibid, s 93 (pre amendments commencing 24 February 2019); Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3 s 46.

21. I must first decide whether there has been use of the Trade Mark by the Removal Opponent, or an authorised user, in good faith, on or in relation to the Registered Goods during the Relevant Period. If I am satisfied there has been such use, the opposition will succeed. If I am not satisfied there has been use, or if use only relates to some of the Registered Goods, I must consider whether to exercise discretion to allow the Trade Mark to remain registered for any of the Registered Goods for which use during the Relevant Period has not been proven.

22. The ‘use’ required to be demonstrated is ‘use as a trade mark’. ‘Use as a trade mark’ is use of the sign as a badge of origin in the sense that it indicates a connection in the course of trade between the goods and the person who applies the sign to or in relation to the goods.3F[5] Use in the course of trade means an actual dealing in the goods, an offer for sale of the goods, or an intention to offer goods for sale manifested through preparatory steps showing an objective commitment to use the trade mark.5F4F[6] Use of a trade mark in relation to goods includes use in physical or other relation to the goods. A trade mark may be used in relation to goods if it is used on an invoice provided in relation to the sale of the goods.5F[7]

    [5] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

    [6] Angela Christou v Tonch Pty Ltd [2008] ATMO 24; see also Dick Smith Investments Pty Ltd v Ramsey [2001] FCA 261 (Katzmann J).

    [7] Trade Marks Act 1995 (Cth) ss 7 and 9. See also Thunderbird Products Corp v Thunderbird Marine Products P/L [1974] HCA 51 (Jacobs J).

23. In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’.6F[8] In Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd the Full Federal Court confirmed that s 92(4) required no more than a genuine intent to use the mark for commercial purposes, and rejected other authorities that took a broader view of what constituted ‘good faith’.[9] Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.7F[10] However, if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[11]     

    [8] [2001] FCA 261, [16].

    [9] [2009] FCAFC 7, [52] – [56] (Tamberlin, Sundberg, and Besanko JJ).

    [10] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].

    [11] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

24. In deciding this matter, I am not able to consider whether the Removal Opponent is the proprietor of the Trade Mark (which it may not be if the Removal Opponent was merely a distributor of goods supplied by another entity, or where another entity otherwise has earlier use of the Trade Mark in Australia). Similarly, I am not able to consider whether the Removal Opponent’s filing of the Trade Mark was in bad faith under s 62A. A challenge to the Registration on the basis of lack of proprietorship, or an allegation that the Removal Opponent applied to register the Trade Mark in bad faith, would need to be brought under s 88.

25. I am satisfied that the invoices issued by the Removal Opponent to retail customers in April 2020 constitute use of the Trade Mark during the Relevant Period in relation to rice, rice flour, and rice flakes (‘Traded Goods’). While the quantity of goods is small, there is no reason to doubt that the invoices relate to genuine commercial transactions.

26. There is a question whether use of the Trade Mark on invoices issued by Alvand (‘Alvand Invoices’) constitutes use the benefit of which inures to the Removal Opponent. The Alvand Invoices refer to the Trade Mark for various rice based goods other than the Traded Goods, namely: bhel mix (rice snacks), rice papadums, rice fryum, and rice crackers (‘Alvand Goods’). Clearly, these sales are by an entity other than the Removal Opponent. However, even though the Removal Opponent is not the vendor in these transactions, I infer that the Trade Mark was applied on the invoices with the permission of (or without objection by) the Removal Opponent. As such, it is arguable that the use of the Trade Mark by Alvand on the Alvand Invoices is use in relation to the Alvand Goods that is authorised by the Removal Opponent. However, in order to establish authorised use, the Removal Opponent must establish a requisite degree of control. The evidence is silent on what control (whether quality control or otherwise) was exercised by the Removal Opponent over the Alvand Goods or the activities of Alvand. As such, I do not consider the evidence establishes that the use of the Trade Mark by Alvand on the Alvand Invoices is authorised use by the Removal Opponent within the meaning of s 8.  

    Discretion

27. The discretion available to the Registrar is ‘limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act’.[12] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[13] Nevertheless, the subject-matter, scope and purpose of Part 9 is the removal of unused trade marks from the Register and this should be the starting point of any consideration of the exercise of the discretion. Where an opponent has not established that a challenged trade mark was used during the relevant period, the exercise of the discretion in favour of the opponent is not one which should be exercised lightly: there must be good reason to do so. As stated by Jacob J in Laboratoire De La Mer Trade Marks:

    There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[14]

    [12] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ).

    [13] Ibid [69].

    [14] [2002] FSR 51 (Ch) 790, [19].

28. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited (‘Gallo’), Flick J stated:

    Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’, the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or, at least—a predominant interest is the maintenance of the integrity of the Register. Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[15]

    [15] [2008] FCA 934, [210] (citations omitted) (‘Gallo’).

29. The Removal Opponent bears the onus of establishing that the discretion should be exercised in its favour: it is not for the Removal Applicant to establish that it should not.[16]

    [16] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

30. Under s 101(4) of the Act, in deciding whether to remove a trade mark I may have regard to whether the trade mark has been used in relation to similar goods or closely related services.

31. Justice Flick in Gallo also referred to a non-exhaustive list of other factors which may provide some assistance in considering the discretion, namely:

    ·     whether there has been abandonment of the trade mark;

    ·     whether the registered proprietors of the mark still had a residual reputation in the mark;

    ·     whether there had been sales by the registered proprietors of goods or services for which removal was sought since the relevant period ended; and

    ·     whether the applicant for removal had entered the market without having taking steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.[17]

    [17] ‘Gallo’, (n 15) [202]–[203].

32. The evidence provided by the Removal Opponent does not establish that the Trade Mark has acquired a reputation in Australia. However, I am satisfied the Trade Mark has not been abandoned. Further, the Alvand Invoices indicate that there were more likely than not sales by the Removal Opponent of the Alvand Goods after the Relevant Period.   

33. The evidence indicates that the Removal Applicant believes it has a valid claim to proprietorship of the Trade Mark in Australia based on earlier use. As such, the actions of the Removal Applicant are not particularly influential in considering the exercise of discretion in this particular case.

34. On balance, I consider that given the similarity of the Alvand Goods and the Traded Goods (all being rice and rice based products), and given that it is likely the Alvand Goods were sold or offered for sale by the Removal Opponent soon after the Relevant Period, it is appropriate to exercise discretion to allow the Trade Mark to also remain registered for the Alvand Goods. I also note and agree with the Removal Applicant’s submissions that if I am to allow the Trade Mark to remain registered, it should be for no more than the Traded Goods and Alvand Goods.

1. I am otherwise not satisfied there is a compelling reason to exercise discretion to allow the Trade Mark to remain registered for goods other than the Traded Goods and the Alvand Goods.

   Section 92(4)(a)

2. In order to succeed under s 92(4)(a), the Removal Opponent must establish that it had a genuine intention to use the Trade Mark in Australia in relation to the Registered Goods at the time of applying for registration, or that it has subsequently used the Trade Mark in good faith in relation to the Registered Goods in the period ending one month before the filing of the Removal Application.

3. The necessary consideration of s 92(4)(a) is narrowed given the Removal Applicant has succeeded in its application for removal under s 92(4)(b) for all of the Registered Goods except for the Traded Goods and Alvand Goods. As such, there is no need to consider the ground for removal under s 92(4)(a) in relation to goods that I have already determined should be removed.

4. Turning to the Traded Goods and Alvand Goods, the evidence that sufficed to defeat the ground for removal under s 92(4)(b) also suffices to defeat the ground for removal under s 92(4)(a). The evidence demonstrates use of the Trade Mark in relation to the Traded Goods during the period ending one month before the day on which the Removal Application was filed. It also demonstrates that the Removal Opponent had an intention to use the Trade Mark in good faith in relation to the Alvand Goods at the time of applying to register the Trade Mark.

5. For the reasons given above, the ground for removal under s 92(4)(a) is not established.

   Decision and costs

6. The Removal Opponent has established grounds of opposition in relation to the Traded Goods. I am also satisfied it is appropriate that discretion be exercised to allow the Trade Mark to remain registered for the Alvand Goods. As such, the Trade Mark should be removed from the Register for the remaining goods, namely, removal of Class 29 and 31 in their entirety, and removal of Class 30 for all but the following:

   Class 30: Rice; rice flour; rice flakes; bhel mix (rice snacks), rice papadums, rice fryum, rice crackers

7. Given it is the right of both parties to appeal this decision, the removal shall not take place until at least one month from today. If the Registrar is served with a notice of appeal before then, the Trade Mark shall not be removed until the appeal has either been discontinued or, the Removal Application has been dealt with as the Court sees fit.

8. Both parties requested an award of costs. Costs generally follow the event. Given both parties have had a reasonable measure of success, I consider that they should bear their own costs.  

   Blake Knowles
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   6 September 2022