KRBL Ltd v PK Overseas Pvt Ltd

TRADE MARKS ACT 1995

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

Re:Opposition by KRBL Ltd. to registration of trade mark application 1700721(30) - INDIA SALAAM PURE BASMATI RICE CLASSIC PRODUCT OF INDIA (Word,Device) - in the name of P.K. Overseas Pvt. Ltd.

Delegate:

M. Cooper

Representation:

Opponent: S. Rebikoff of counsel instructed by Watermark Intellectual Property Pty Ltd

Applicant: A. McRobert of counsel instructed by Wrays Pty Ltd incorporating EKM Patent and Trade Marks

Decision:

2018 ATMO 169

Opposition under s.52 of the Trade Marks Act 1995: s.44 considered – trade mark deceptively similar to earlier registered mark and for similar goods – no evidence of concurrent use or other circumstances - registration refused.

Background

This matter concerns an opposition by KRBL Ltd. (“the Opponent”), under

S.52 of the Trade Marks Act 1995 (“the Act”), to registration of the trade mark detailed below in the name of P.K. Overseas Pvt. Ltd. (“the Applicant”):

Application Number: 1700721
Trade Mark:

(“the Trade Mark”)

Filing Date: 17 June 2015
Specification of Goods and Services:
Class 30:
Basmati rice from India [1]
(“the Applicant’s goods”)
[1] The Goods specification was amended during the Opposition on 26 November 2016.

The Trade Mark was examined and advertised as accepted for possible registration on 22 September 2016 in the Australian Official Journal of Trade Marks.
On 22 November 2016, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 22 December 2016, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under ss.42, 44, 60 and 62A of the Act.
On 14 February 2017, the Applicant filed a Notice of Intention to Defend.

Evidence

Evidence in Support of the opposition was filed by the Opponent on 22 May 2017. It consists of the declaration of Dveep Ahuja, the “Head of Legal” for the Opponent and includes Annexures DA-1 to DA-11(“the Ahuja declaration”). Confidentiality is claimed in relation to Annexures DA-8, DA-10 and DA-11.
The Applicant’s Evidence in Answer was filed on 25 August 2017. It consists of a declaration by its director, Suresh Manchanda, made on 24 August 2017 and includes exhibits SM-1 to SM-16 (“the Manchanda declaration”). Exhibit SM-9 and assertions made in paragraphs 25, 26 and 28 are claimed to be confidential.
The Opponent filed its Evidence in Reply on 1 November 2017. The Opponent’s Evidence in Reply comprises a declaration by Priyanka Mittal, the Opponent’s director, dated 31 October 2017 (“the Mittal declaration”). It includes Annexures PM-1 to PM-4. Confidentiality is claimed in respect of Annexure PM-4.
Both parties sought costs.

The Opponent’s evidence

In his declaration, Mr. Ahuja outlined the Opponent’s history, stating that it was incorporated in India in 1993 and that it is one of the world’s largest rice millers and basmati rice exporters. He noted its award every year since 1997 as “India’s number one Basmati rice exporter.”
He referred to the Opponent’s INDIA GATE trade mark, claiming that it has been in use for the Opponent’s basmati rice since 1993 and has become its “flagship brand”. He stated that the Opponent had filed and secured registration for the trade mark in more than 68 countries and has been selling basmati rice in Australia under and by reference to the INDIA GATE trade mark, as depicted in the Opponent’s Australian trade mark registration no.1550074, since 2005 (“the Opponent’s mark”). It appears below:

Various bills of lading and invoices were annexed which demonstrated that the Opponent had been shipping basmati rice bearing the Opponent’s mark to Australia since 2005 (confidential Annexure DA-8). Mr. Ahuja noted and annexed a copy of a previous successful opposition by the Opponent to registration of Trade Mark 1514173, lodged by a firm associated with the Applicant, which is very similar to the Trade Mark.[2]
[2] Annexure DA-3, Unpublished ATMO decision of Iain Campbell Thompson dated 14 May 2015.
Mr. Ahuja claimed a likelihood of consumer confusion arising from the use of the Trade Mark. He asserted that the “arrangement, colours, style, look and feel of the [the Trade Mark] are remarkably similar to [the Opponent’s] packaging, this includes the border, the similar font used, the faded image that resembles a structure in India in the background, the writing in white against a brown background, the words and the placement of the words PURE BASMATI RICE CLASSIC on the Trade Mark, the position of the plate of cooked rice, and the similar circular device which also appear to incorporate the words EXTRA LONG.” He claimed the Trade Mark gave the same visual impression as the Opponent’s mark “which is unlikely to be a mere coincidence”.
He referred to a brand association survey undertaken in India by the Opponent which concluded, among other things, that “elements such as pack appearance, colour, brown border and an image of a plate of cooked rice on the packaging of Basmati rice are some of the key elements that consumers associate with an India Gate product”. He contended therefore that the Trade Mark “poses a serious threat to the ‘India Gate’ brand by creating confusion among consumers.” It was also claimed that the Opponent’s mark comprised an original artistic work and copyright had been assigned to it. Various registrations were annexed (Annexure DA-6).
He noted that the Opponent’s India Gate products are sold in retailers around Australia, “including in particular Indian grocery stores”, and have been extensively promoted. He claimed that “a large number of consumers of INDIA GATE products in Australia are from India or their background is Indian….many of these consumers will recognise INDIA GATE products by the style and appearance of its packaging”. He provided the sales figures for the Opponent’s product and stated that they “evidence the significant reputation of KRBL’s INDIA GATE Basmati Rice Classic label rice in Australia”.
He claimed that because of the similarity, use of the Trade Mark by the Applicant would mislead consumers to believe that it is a brand extension of the Opponent or had “the same quality as KRBL’s India Gate Basmati Rice Classic label rice.”

Applicant’s evidence

The Applicant’s evidence consists of the statutory declaration of its director, Suresh Manchanda. He outlined the Applicant’s history, stating that the Applicant is incorporated in India and has been milling, processing and selling rice and agricultural commodities for more than 30 years and is known worldwide for its world famous rice brands INDIA SALAAM, MANSA, RAJ SHAHI and TRIMURTI. Various awards and memberships were listed.
He claimed the Applicant coined and adopted the rice brand “INDIA SALAAM” in 1985 and noted the Applicant’s existing Australian Trade Mark 1487662 for the word mark “INDIA SALAAM” in respect of goods in class 30, which include rice. He asserted that the Trade Mark was chosen because “it reflects my Company’s values and commitment to provide high quality products.” In relation to aspects of the packaging, he claimed the brown colour was a common feature reflecting the fact that rice is packed in jute bags and unmilled rice is brown. He also claimed it was common to display a bowl of rice on the packaging and attached examples of packaging of other rice brands (Exhibits SM-2 and SM-4).
The Applicant’s website, Google search results for “India Salaam” and the company’s Facebook page were exhibited. They displayed the Applicant’s labels and packaging as applied to its various products. Mr. Manchanda claimed the Applicant commenced using the Trade Mark, which he called “the label Trade Mark”, in Australia in 2013 when the distributor Sona Impex ordered its first shipment. Exhibited invoices reflected in part the shipping of “India Salaam” products to Australia since 2013. He claimed that the Applicant had extensively advertised under the Trade Mark in Australia and overseas and displayed at exhibitions, trade fairs, in catalogues and that the brand has acquired “and enjoys a significant reputation worldwide.”
Registration certificates and/or status reports for the various countries in which the Applicant had sought to register its word mark “India Salaam”, its logo mark, or this Trade Mark, were attached (Exhibit SM-10). Approximate Australian sales and advertising figures were listed.
Mr. Manchanda also referred to and attached a copy of a Delhi court order in which the Opponent had sought to injunct the Applicant’s use of the Trade Mark (Exhibit SM-15). It indicated that the Judge was not persuaded as to the similarities between the marks and the likelihood of confusion. He also noted that the Opponent had been unsuccessful in opposing registration of the trade mark INDIA SALAAM in Palestine.
Mr. Manchanda claimed there had been concurrent use of the Trade Mark and Opponent’s mark in many countries but he was not aware of any instances of confusion.

Opponent’s Evidence in Reply

As noted above, the Evidence in Reply comprised a declaration by Priyanka Mittel, the Opponent’s Director.
She referred to the Manchanda declaration and the claims as to the common association of the brown colour with rice. She noted that this did not address or explain the similarity between the brown colour used as a border in the Trade Mark and the Opponent’s registered mark 1550074, nor why the Applicant has a adopted a trade mark, to be used on identical goods, “with the same or very similar configuration, beige colour background, placement of the bowl of rice at the bottom right hand corner of the label, similar design at the four corners of the border, inclusion of the word “classic” and placement of that word, and a faded background of a monument/structure.”
In relation to Exhibit SM-2 and the Applicant’s claims that several rice brands use similar brown packaging, Ms. Mittal stated that the Opponent had successfully gained injunctions against two of these companies on the basis that there was a likelihood of confusion with the Opponent’s mark and/or a breach of unfair trading laws. Copies of various court orders were attached (Annexure PM-1). In addition, she claimed one of the brands had gone into liquidation (Annexure PM-2). She further noted that, just because a few other companies may also be infringing the Opponent’s mark, it did not mean the Applicant’s mark should be accepted. In any event, she noted, it was unclear whether any of these brands traded in Australia. She maintained that the only rice product that had the same combination of features as the Trade Mark was the rice sold under the Opponent’s mark.
She noted that the judgment relied on in the Manchchanda declaration, as purportedly evidencing an Indian court’s assessment that there were no relevant differences between the marks, had been overturned on appeal. She attached a copy of the higher court’s orders indicating that it was not satisfied that the trial court had effectively dealt with the issues of reputation and deception and confusion (Annexure PM-3).
She restated the claims in the Ahuja declaration that there is a “real likelihood that the similar label/packaging appearance of the Opposed Trade Mark would mislead or likely mislead consumers to believe that Basmati rice sold in label/packaging of the Opposed Trade Mark are INDIA GATE products, the products are a brand extension of the Opponent’s product lines and/or the products have the same quality as the Opponent’s basmati rice sold under and by reference to the Opponent’s Prior Trade Mark.” She attached emails from two other countries which she claimed demonstrated consumer confusion in markets in which the two marks exist (confidential Annexure PM-4).
On 7 December 2017 the Opponent requested a hearing and the matter proceeded before me, a delegate of the Registrar, on 20 June 2018.

Submissions

The Opponent and Applicant provided written submissions, on 5 June 2018 and 18 June 2018 respectively. Counsel for both parties provided oral submissions at the hearing. They are relevantly summarised below.

Grounds, onus and standard of proof

The Opponent bears the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.[3]
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26]
As noted above, the Opposition grounds pursued by the Opponent are those under 42, 44, 60 and 62A of the Act.
The time at which a ground of opposition must be established is the date of filing of the application for registration.[4] In this case that date is 17 June 2015 (“the relevant date”).

Consideration and reasons

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [595]

Section 44

Section 44 of the Act relevantly provides:
44. Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:       For deceptively similar see section 10.
Note 2:       For similar goods see subsection 14(1).
Note 3:       For priority date see section 12.
Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a    trade mark for which there is a request to extend international registration to Australia: see Part 17A.

…

(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.

Note: For limitations see section 6.

(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.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

Opponent’s submissions

It was submitted that, taking into account a first impression of the Trade Mark on the Applicant’s goods, by someone of ordinary intelligence who has an imperfect recollection of the Opponent’s mark on packaging in respect of identical goods, there was a “real tangible danger” of deception or confusion in relation to use of the Trade Mark. Noting that the Trade Mark is a “complex composite mark” with a number of elements, which must all be taken into account for the purposes of the comparison, the Opponent listed these prominent elements as follows:

(a) two panels comprising a rectangular design in portrait format intended to be applied to the front and rear of a packet of basmati rice;

(b) a uniform brown border on both front and rear panels featuring indented corners and a decorative motif within each corner bracket;

(c) on each panel a central field within the brown border of a lighter, tawny colour featuring (on the front panel) an illustration of an Indian-style building depicted in a similar shade to create a faded sepia-like appearance;

(d) a brown medallion of the same colour as the border positioned at the top of the illustration, featuring a decorative design and containing the words India Salaam in white text;

(e) immediately below the brown medallion , the words PURE BASMATI RICE followed by some Arabic text and the word CLASSIC on a line of its own, both overlaid over the image of the building in white text; and

(f) a colour photograph of a bowl of rice at the bottom right of the front panel, nestled into the corner of the central field so that part of the bowl is cut off by the brown border.”

With the exception of the words “India Salaam” it was contended that “all of these prominent elements are also present in the Opponent’s prior mark in similar fashion”. While it was acknowledged that it was possible to isolate particular features that are present in one of the marks but not the other, it was claimed that “the overall impression conveyed by the marks is the same”. In the context of basmati rice packaging, the features were said to be distinctive.
Referring to the Applicant’s evidence of other product examples that also utilise some same features, it was submitted that none of them incorporated the same combination of features. The requirement to examine the marks as a whole was emphasised. Given the prominence of the Opponent in India as “one of the largest rice millers in the world”, it was said to be unsurprising that other products had sought to mimic its get-up. It was also noted, and supported by evidence, that some of those comparative products have been the subject of injunctions in India.[5] In the circumstances, having regard to the “general impression” conveyed by the Trade Mark, it was claimed that consumers familiar with the Opponent’s mark would have cause to wonder whether they came from the same source.
[5] See Mittal declaration and Annexures PM-1 – PM-3.
The Opponent also referred to cases in which the “get-up” of a product had given rise to a likelihood of deception or confusion.[6] Pointing to the Applicant’s evidence, it was submitted that it illustrated “numerous other ways to present and package basmati rice that do not involve the same combination of colours, images and design elements utilised by the Opponent in the Prior Mark”[7]. Noting that the Applicant did not seek to register the Trade Mark in particular colours, it was said to be important to note that registration of the Trade Mark would enable it to use it in that form (see s 70 of the Act). It was submitted that “the evidence clearly establishes that it intends to use the Opposed Mark with the particular colour combination depicted in the application, which is also the colour combination adopted by the Opponent. Accordingly, in considering the full notional use that could be made of the Opposed Mark (see Berlei Hestia v Bali CoLtd (1973) 129 CLR 353 at 363), it is necessary to have regard to the prospect of confusion where the Opposed Mark is presented in that way: Facton Ltd v MishMash Clothing Pty Ltd (2012) 94 IPR 523 at [18].”
[6] Red Bull Australia P/L v Sydneywide Distributors P/L (2001) 52 IPR 481; Homart Pharmaceuticals P/L v Careline Australia P/L (2017) 126 IPR 498.
[7] Manchanda declaration Exhibits SM-4 and SM-11.

While acknowledging the difference in the names of the products, that is, “India Salaam” and “India Gate”, reliance was placed on Homart Pharmaceuticals Pty. Ltd. v Careline Australia Pty. Ltd. (“Homart”)[8] and the question whether the marks were sufficiently distinctive to avoid any prospect of confusion. It was submitted that the similarity between the names “is only likely to reinforce the mistaken belief that the two products come from the same source” because both start with “India”, are two words in structure, the two words in both marks are presented same way, i.e. on top of each other, in the same colour and against same background and with the logo appearing almost in exactly the same location on the packaging.
[8] Homart at [198].
Even if the name difference was noted by consumers, the other combination of features present in both marks was said to “reinforce the connection” between the products of both and would mean consumers are “likely to have cause to wonder whether” the Trade Mark was a brand extension of the Opponent’s mark. This likelihood was claimed to be “heightened” by the fact that the products in question are ordinary consumer staples, “generically purchased in a supermarket or grocery environment without particular care or attention by customer”[9].
[9] Kettle Chip Co. Pty Ltd v Apand Pty Ltd (1993) 46 FCR 152 at [161].
The Applicant’s evidence of how the goods are sold was also said to suggest that they were often displayed without a visible or clearly visible product name (Manchanda declaration Exhibit SM-11), and consequently it was “highly likely that the unusual and distinctive combination of colours, images and design elements featured in the Opposed mark will act as primary visual cue for the customer in identifying the source of the goods.” It was contended that consumers would be likely to react in same way as referred to in Homart. That is, that consumers “may note that something seems different about the brand name, but be convinced by the other similarities in the get-up that her or his recollection as to the brand name was mistaken.”[10] In addition, the Opponent’s evidence of confusion in two other jurisdictions in which both brands are present, should be given “great weight” (Mittal declaration, Annexure PM-4). Therefore, it was submitted, there was a likelihood of deception or confusion in relation to the use of the Trade Mark in Australia by the Applicant, in respect of the specified goods, such that it should be regarded as deceptively similar to Opponent’s trade mark.
[10] Homart at [199].
At the hearing the Opponent’s counsel emphasised the s.44 ground of opposition, maintaining that the Trade Mark and the Opponent’s mark were deceptively similar and noting there was no evidence of concurrent use. Referring to the relevant principles, he submitted that the general impression of a person on first encountering the Trade Mark, knowing the Opponent’s mark, would be to have cause to wonder whether it came from the source.
Referring to the Applicant’s exhibits (Manchanda declaration Exhibits SM-3 and SM-11), it was observed that the wide variety of styles and colours demonstrated on the packaging contradicted the Applicant’s claims regarding the commonality of brown borders on such packaging. In any event, even if a brown border and bowl of rice were to be accepted as common features, it is the whole of the trade mark, the combination of the features, that is examined and in this case such an assessment demonstrated remarkable similarity between the Trade Mark and the Opponent’s mark. Furthermore, there was no evidence, as contended by the Applicant, that there were similar products with the same brown border distributed in Australia. In addition it was claimed that basmati rice is not only consumed by persons of Indian nationality and considerations in this regard should not be limited to this subset of consumers. It was said to be purchased by a wide range of consumers in Australia and there was no evidence that sales followed the particular heritage of the consumers.
The Applicant’s contention that the marks separately suggested “old India” (the Opponent’s mark) versus “luxury” (the Trade Mark) was rejected on the basis that consumers will not engage in such a deliberation. The sepia tones in the marks, the brown background colour and other “small fingerprints of similarities” were said to reinforce an overall impression of similarity. The additional Arabic script on the Trade Mark was said not to be a distinctive feature for Australian consumers. While the bowl of rice nestled in corner may not have been distinctive of itself, the overall impression of the brown/beige colouring, the layout and text, the historical feel, the same contrasts, when looked at as whole, were so similar that the overall impression conveyed is the same. While the verbal representation of the marks would be different, it was contended that this is not necessarily decisive of the matter if the other elements are so similar that on an overall impression the Trade Mark was likely to confuse.

Applicant’s submissions

The Applicant acknowledged similarities between the marks but, it was contended, the overall impression conveyed to the probable acquirers of the goods (being persons of Indian heritage) was “very different”. It was said to be significant that, given both products had been sold in Australia, there was no evidence of confusion in Australia.
The Opponent’s previous successful opposition to the Trade Mark was said to be irrelevant because that matter was determined on the issue of ownership[11].
[11] See footnote 1.
In relation to s.44 and the Opponent’s claims of deceptive similarity between the marks, it was noted that this ground concerned the effect of the challenged mark on the minds of potential customers. While accepting that the comparison must be between the two marks as wholes, it was submitted that there are important differences and the overall impression conveyed by each mark is different. The “relevant matters” were claimed to be as follows:
The words “INDIA SALAAM” are prominent in the INDIA SALAAM Mark, they are depicted in a device with flowing lines, which is replicated on the rear of the label and contrasts to the block device in the INDIA GATE Mark. The words are aurally dissimilar. They convey different meanings.
The word “SALAAM” (not present in the INDIA GATE Mark) is the most prominent feature in the Trade Mark.
To consumers of Indian heritage, the images in each mark are not just “Indian-style” buildings. The INDIA SALAAM Mark depicts the Taj Mahal. The INDIA GATE Mark depicts the India Gate. The overall impression evoked by the INDIA GATE mark centres on the history of the rice trade through the India Gate. The overall impression evoked by INDIA SALAAM Mark is one of luxury, one that is more contemporary.
In the INDIA SALAAM Mark, Arabic text is also prominently displayed under the words “INDIA SALAAM” (whereas there is no Arabic text on the front of the INDIA GATE mark);
The arrangement of the elements on the rear labels is entirely different.
The use of the brown border on a packet of basmati rice is a feature common to the trade. As a non-distinctive element, its presence in both marks is to be discounted.
The depiction of a bowl of rice is also commonplace and non-distinctive.
The word “INDIA” is descriptive of the origin of the goods.”
Contrary to the Opponent’s submissions, the Applicant maintained that the marks do not incorporate the same combination of features and the features on which the Opponent relied in this respect were common to the trade. Consumers of Indian heritage were also said to be accustomed to seeing basmati rice in a brown packet with a bordered panel on the front.
It was also submitted that the Opponent’s analysis fell into error because it failed to have proper regard to the circumstances in which the goods bearing the Trade Mark will be bought and sold and the character of the acquirers. That is, it was claimed, the goods will be purchased in Indian grocery stores by persons of Indian heritage and the differences between the marks would be significant to such customers. There was no evidence that the rice was sold anywhere other than Indian grocery stores.
Noting the survey evidence produced by the Opponent, the Applicant’s representative submitted that it assisted the Applicant. In particular, of the important elements identified by the persons surveyed, they included the chariots and horses and these were not present in the Trade Mark. The Applicant claimed very few of those surveyed associated the INDIA SALAAM mark with the INDIA GATE mark.[12]
[12] See survey results in Ahuja declaration, confidential Annexure DA-11 page 20.
In addition, it was noted that the marks were applied to 5 kg. bags of rice and that buyers of 5 kg. bags would most likely be Indian consumers. Even if a significant proportion of the consumers were not of Indian heritage, it was said to be a class that was not likely to be deceived or confused by use of the Trade Mark. Referring to the Opponent’s mark, it was contended that the words “INDIA GATE” were most important, then the colour used and then the illustrations, particularly the chariots and horses. The differences between the marks were noted as including differences in the brown borders, the presence of animals, the Taj Mahal and rice. It was observed that other marks selling rice also depicted the Taj Mahal.
Addressing the Applicant’s background, it was acknowledged that it does use a variety of colours in its packaging and undertakes a more modest trade than the Opponent but it was claimed to still be a substantial enterprise. The Opponent’s assertions that it is the largest or leading supplier was said to be based on “thin” evidence.
It was also submitted that the idea conveyed by the two marks is different, that the Opponent’s mark is cluttered while the Trade Mark is less cluttered. Furthermore, the bowl of rice and the brown border were said to be features common to the trade and the Opponent’s failure to refute this (i.e. no issue was taken with reference to the jute bag as relevant to the brown border) meant it implicitly admitted this.
At the hearing the Applicant’s counsel reiterated the relevant authorities, distinguishing them where necessary, and maintained there were relevant differences between the marks. That is, he noted the different sounding names, different meanings, and the fact that the second word “Salaam” was in larger print/more prominent in the Trade Mark, it was not descriptive of goods and the Taj Mahal conveys a different idea to India Gate. All the relevant elements were said to be sufficiently distinguishable so no real tangible danger of deception or confusion can or would arise.

Reply submissions

In his reply at the hearing, the Opponent’s counsel addressed the issue of the character of acquirers of the specified goods. He rejected the Applicant’s submissions that persons from India or of Indian heritage were the relevant class for consideration in relation to s.44. While acknowledging that the Opponent had also referred to a subset of consumers (Indian purchasers), this was not to say they would be the only relevant acquirers. In particular in relation to ss.60 and s.42(b), he noted the marketing was stronger in relation to this subset however this was not relevant to s.44. This was because s.44 considerations were directed to the notional consumer in Australia who buys or uses basmati rice. Furthermore there was no evidence that the relevant product was sold only in Indian grocery stores and he noted that the Opponent’s submissions had only referred to its sales as “including” Indian grocery stores. He resiled from the the Opponent’s survey evidence, as relied on by the Applicant, observing that the survey was conducted in India and there is no information as to what questions were asked, who was asked and what were the responses. He maintained it was “utterly irrelevant” to s.44 issues and no inferences should be drawn from it in this regard.
In relation to the asserted commonality of brown borders on rice packaging, it was submitted that there was no evidence about the other brands exhibited and when or where they were distributed. He rejected the Applicant’s submission that the Opponent had implicitly accepted that the brown colour border was a common feature of basmati rice packaging, claiming that this was not a fair reading of the submissions and therefore it was not open for any such inferences to be drawn. Reference was made to the Mittal declaration and the associated annexures which demonstrated that some of the brands referred to by the Applicant as demonstrating the commonality of some features had either been discontinued or been found to have copied or potentially infringed the Opponent’s mark. It was also contended that it was wrong to confine considerations to 5kg. bags of rice as illustrated in the marks because this was not included in the specifications.

Discussion and findings

In respect of the identified trade marks, in order to establish the section 44 ground of opposition under, relevantly, subsection 44(1), the Opponent must demonstrate, subject to subsections (3) and (4), that the Trade Mark:

issubstantially identical with or deceptively similar to the Opponent’s trade mark 1550074, and
is in respect of similar goods or closely related services (s.44(1)(a)(i)) and
has a priority date not earlier than that of the other trade mark (s.44(1)(b)).

Section 14(1) of the Act provides that goods are “similar” to other goods if they are the same as the other goods or of the same description as that of the other goods.
The evidence demonstrates that the latter two elements are satisfied. That is, the Trade Mark’s priority date (17 June 2015) is later than that of the Opponent’s mark (5 April 2013) and the registration application designates the same goods – basmati rice from India.

Substantially identical

In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[13]
[13] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66 [13].
A side by side comparison between the Trade Mark and the Opponent’s mark is below:

Applicant’s Trade Mark 1700721

Opponent’s Trade Mark 1550074

The SGP asserted that the Trade Mark is substantially identical with or deceptively similar to Australian trade mark 1550074 in respect of identical goods, and the priority date of the opposed trade mark is not earlier than the priority date of this earlier mark. In submissions the Opponent did not argue that the Trade Mark was substantially identical with its trade mark, only that they were deceptively similar.
For the sake of completeness, on a side by side comparison, having regard to the essential features of the Trade Mark, I am not persuaded there are sufficient similarities between the marks such that they might be regarded as substantially identical.

Deceptive similarity

Section 10 of the Act defines deceptive similarity as follows:
Section 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.
In assessing trade marks for deceptive similarity, Windeyer J said in Shell at [13]:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106.
Therefore a determination of ‘deceptive similarity’requires an assessment of the likelihood of deception or confusion arising from an imperfect recollection or impression of the trade marks by potential customers/consumers of the goods.
French J restated the evaluation of the likelihood of deception or confusion in the following way in Woolworths[14]:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594–5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 ; [1973] HCA 43; 1 ALR 443 at 450:
... the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.
[14] Registrar of Trade Marks v Woolworths[1999] FCAFC 1020 at [50].
Therefore, in considering whether there is a likelihood of deception or confusion, it is necessary to take into account all the surrounding circumstances including the circumstances in which the mark will be used, the circumstances in which the goods will be bought and sold and the character of the probable acquirers of the goods.

In this opposition, the Trade Mark is intended for use as packaging for the Applicant’s goods, basmati rice. As far as I can determine on the evidence, the circumstances in which it will be bought and sold involve its retail sale in Australian grocery stores, which may include Indian grocery stores. While the Applicant submitted that there was no evidence that the rice was sold anywhere other than Indian grocery stores, correspondingly, there is no evidence to support a finding that it will only be sold in Indian grocery stores. Insofar as it might be relevant, none of the Applicant’s evidence appeared to demonstrate use of its Trade Mark on its basmati rice packaging in any Australian store or that it was only purchased by persons of Indian heritage. In the absence of any persuasive evidence to the contrary, I consider that the probable (or notional) acquirers of the goods therefore will be the average Australian consumer who purchases and/or consumes basmati rice. There is no basis, on the evidence before me, on which to narrow the type of store in which the goods are sold to Indian grocery stores or to categorise the relevant consumers to persons solely of Indian heritage.
It follows that, having regard to what the Applicant can do if registration is obtained, that is, the use to which the Applicant can properly put its mark, it will be selling its (same) product bearing the Trade Mark in the same types of stores to the same types of Australian consumers as the Opponent.
While acknowledging that the marks are to be considered as wholes, in estimating the effect or impression produced on the mind of potential customers, I note the comment in Clarke v Sharp in relation to the appropriate comparison in the circumstances:
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing results of such matters, but by judging the effect of the respective wholes.[15]
[15] Clark v Sharp (1898) 15 RPC 141 at [146].
In this context I make the following observations about the packaging of both marks:

The marks share a common brown border colour but also an internal border in the same lighter shade.
The marks have indents at each corner of this internal border, albeit in slightly different forms, and have a small decorative image in each of those indents.
The words in the marks start with the same word “India” and are presented the same way (words arranged on top of each other). They appear in almost the same location on the front of the pack.
Underneath this, the marks contain the words “Basmati Rice” with the word “Classic” underneath those words. Although the Trade mark also contains the word “pure” before “basmati rice”, as this is a descriptive word I consider it is of little importance in an overall impression. Similarly the Arabic writing on the Trade Mark, on top of the word “Classic” is in smaller print and font and not at all prominent.
The marks display a picture of a bowl of rice in the bottom right hand corner of the front panel which is cut off.
The marks contain a large monument in the background in a sepia tone and both monuments are set back with a bordered path leading forward in front of them. Both paths have a tree border.
The marks display what appears to be the symbol for long grain rice.
In relation to the rear panel, the background colour and borders in both marks are very similar, as is their shape.
In the marks the rear panel is divided in two columns for the first half of the page. The lower half of the page contains nutritional information in a separate box on the left hand side.

While I note that the Trade Mark is not registered for colour, and colour has played a role in my estimation of the overall impression, the effect of section 70 is that the Trade Mark might be used in any colour combination. In this context, I accept the Opponent’s submission that the evidence demonstrates that the Applicant intends to use the Trade Mark in the colour combination it depicted in its application for registration. The Applicant did not respond to or reject this particular submission. Consequently, in considering the full notional use that could be made of the Trade Mark, I have had regard to the prospect of confusion where the Trade Mark is presented in that way (i.e. in those colours).
I also note the differences between the marks. The Opponent’s mark contains a chariot with horses and men on a path on the front panel, while the Trade Mark contains a reflection of the monument on the path. The survey evidence presented by the Opponent suggested that the chariot with the horses was one recognisable element of the Opponent’s mark recalled by participants. I note that this survey was undertaken in India with presumably Indian participants. I am required to consider the notional use of the marks in Australia. In that context, I consider it the survey of little probative value to my assessment of the impression of the marks that would be gleaned by Australian consumers.
I have also had regard to the Applicant’s submissions that the ‘idea” of the marks is different, thereby diminishing any impression or recollection of similarity. That is, that the Opponent’s mark “harks back to a simpler and earlier era in India’s history” while, in contrast, the Trade Mark depicts the Taj Mahal, which conveys a different impression, one of “luxury”, that is more contemporary. As I understand it, both monuments have historical significance and I can see nothing in the evidence which supports either a suggestion of simplicity or luxury in either mark. In addition, in the context of the purchase of a consumer staple, I consider it unlikely that an Australian consumer, even one of Indian heritage, would recall a mark by way of the specific nature of a background building unless there was something particularly remarkable about its presentation in the mark. As noted above, I consider the background depiction of the monuments to be a point of similarity between the marks. If there is any idea conveyed by the marks, on an overall impression of both, it is of basmati rice from India. Therefore, on my assessment, the marks convey the same, or a similar, idea.
Notwithstanding the obvious difference in the names, “India Gate” and “India Salaam”, the aural representation of the marks is similar insofar as the first word in each mark is the same. The second word of each mark, while different, and in the absence of any evidence otherwise, is unlikely to be particularly distinctive in the recall of the average Australian consumer. Again, as basmati rice is an ordinary consumer staple, I accept the Opponent’s submissions that it is not a product that will be purchased with a great deal of care and attention and as such I consider that the recollection of the combination of similar features noted above is more likely to leave an impression on an average Australian consumer than the contextual difference in the second word on the label, even if verbally represented. For the same reason, notwithstanding the difference in the visual presentation of these two words insofar as the borders are different shapes and “Salaam” is in larger print, in considering the marks as a whole, this difference is minor and I do not consider that it detracts significantly from an overall impression of similarity between them.
In relation to the Applicant’s submission that the key features on which the Opponent relies in its s.44 grounds are common to the trade (i.e. brown borders/bowls of rice) and therefore, presumably, should be discounted or disregarded, I note that none of the products exhibited to the Manchanda declaration which purport to demonstrate this, although some have a brown border and/or depict a bowl of rice[16], share the same combination of features as those of the Trade Mark and the Opponent’s mark. While the “Double Elephant” brand packaging does convey a very similar impression, I note the evidence attached to the Mittal declaration (Annexure PM-3) demonstrates that the Opponent successfully sought injunctions restraining the use of this mark in 2015, as well as the use of the Samaa Basmati Rice mark/packaging in 2017. Furthermore, there is no evidence that these brands are sold in this packaging in Australia[17]. In fact Exhibit SM-4 shows online advertisements for basmati rice in an Australian store and of the 10 packets, only one demonstrates brown colouring at the top of the packet (not on all borders). While four packets do display a bowl of rice, it is differently positioned. In the Manchanda declaration Exhibit SM-3 the Applicant attached copies of its other basmati rice brands, none of which have a brown border (aside from the Trade Mark brand) and, while they display a bowl of rice, it is also positioned differently to that in the Trade Mark and the Opponent’s mark. I therefore attach little weight to the Applicant’s claims of commonality in this regard as they are not supported by the evidence provided.
[16] Manchanda declaration Exhibits SM-2 and SM-4.
[17] While exhibit SM-4 shows the Taj brand it does not appear to be the same packaging as that of the Taj brand in Exhibit SM-2.
The Applicant also referred to the lack of any evidence of confusion in Australia, despite the presence of the Trade Mark in Australia since 2013. This was claimed to weigh against the Opponent’s claims that there would be confusion. Exhibit SM-9 of the Manchanda declaration was said to be evidence use of the Trade Mark in Australia since 2013. While the invoices and shipment orders do refer to “India Salaam” basmati rice and some contain a representation of part of the Trade Mark (the words/logo), they do not demonstrate that the product was shipped/delivered/sold by reference to the Trade Mark (as opposed, for example, to the Applicant’s word mark 1487662). Furthermore, while exhibit SM-11 was said to show copies of advertising and promotional materials for the Trade Mark, they do not demonstrate that these activities took place in Australia. Therefore, in a context in which I cannot be satisfied that the Trade Mark has in fact been in used in Australia, there is little probative value in the claim that the absence of evidence of confusion in Australia might be regarded as an indicator of the lack of any likelihood of deception or confusion into the future. Conversely, I attach some weight to the Opponent’s evidence[18] of actual confusion in other overseas markets where both marks are used[19] as weighing in favour of such a finding.
[18] Mittal declaration Annexure PM-4.
[19] Australian Woollen Mills v Walton (1937) 58 CLR 641 at [658], [1937] HCA 51.
Therefore, notwithstanding the noted differences between the marks, I attach little weight to them as diminishing the overall impression of similarity between the Trade Mark and the Opponent’s mark.
I have compared the impression a person of ordinary memory and intelligence would have based on a general recollection of the Opponent’s mark with the impression that person would get from the Trade Mark.[20] On a visual assessment, the Trade Mark incorporates a format very similar to that of the Opponent’s mark. That is, they share the same type of borders, a very similar, lighter, internal border with similar features, a background monument and a bowl of rice similarly placed, similar words and similar word placement, all of which is reinforced by the adoption of essentially the same colour scheme (as demonstrated by the Trade Mark as filed). I do not consider that the aural representation of the marks, given they both begin with the same, albeit descriptive, word, is likely to significantly affect that impression.
[20] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at [415].
Overall therefore, I consider that the marks look very similar, share aural similarities and convey a similar idea, that is, of classic basmati rice from India. In addition, the designated goods are the same, and they will most likely be sold to the same consumers in the same stores. On this basis I am satisfied that there is a real tangible danger that a significant number of persons would be left in doubt or caused to wonder whether the parties’ goods provided under their respective trade marks come from the same source.[21] It follows that I am satisfied that the Trade Mark is deceptively similar to the Opponent’s mark.
[21] Woolworths at [50]; Southern Cross at [595].
In relation to subsection (3) of s.44, the Applicant made no claim nor provided any evidence which may establish concurrent use of the Trade Mark or any other circumstances which suggest that the Trade Mark application should be accepted.
With regard to subsection (4) of s.44, there is no claim or any evidence before me which indicates that the Applicant or its predecessor in title has relevantly continuously used the trade mark for any period.
For the above reasons, I find that the Opponent has established the ground of opposition under section 44 of the Act.
Given that the Opponent has established one ground of opposition in relation to the Trade Mark, there is no requirement for me to consider the remaining grounds particularised in the SGP or the further submissions made by the parties in this regard. In the event of an appeal to this decision, it will be open to the Opponent to additionally pursue those grounds and the others available under the Act.

Decision

Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
Subsection (3) does not apply to these proceedings. Accordingly, I refuse to register trade mark application 1700721.

Costs

I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant as per Schedule 8 of the Trade Mark Regulations 1995.

Mary-Ann Cooper

Hearing Officer

Oppositions and Hearings

15 October 2018.

[2018] ATMO 169

15 October 2018

Key Legal Topics

Areas of Law

Intellectual Property

Commercial Law

Civil Procedure

Legal Concepts

Costs

Statutory Construction

Remedies