M/s. Yousufain Pista House v Deccan House Pty Ltd

[2023] ATMO 216

TRADE MARKS ACT 1995

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

Re:Opposition by M/s. Yousufain Pista House to registration of trade mark application number 2131771 (class 43) – PISTA HOUSE - in the name of Deccan House Pty Ltd

Delegate:

Sheona Robertson

Representation:

Opponent: Gladwin Legal Pty Ltd

Applicant: SL Ross of counsel, instructed by LegalVision ILP Pty Ltd

Decision:

2023 ATMO 216

Trade Marks Act 1995 (Cth) – opposition under section 52 – ground pursued under section 62A – ground not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by M/s. Yousufain Pista House (‘Opponent’) to the registration of the trade mark the subject of the application detailed below:

Application number:	2131771
Trade Mark:	PISTA HOUSE (‘Trade Mark’)
Filing Date:	3 November 2020 (‘Relevant Date’)
Applicant:	Deccan House Pty Ltd (‘Applicant’)
Services:	Class 43: Bistro services; Food cooking services; Food and drink catering; Hospitality services (food and drink); Preparation of food and drink; Providing food and drink; Provision of information relating to restaurants; Restaurant services; Restaurant reservation services; Takeaway food and drink services (‘Applicant’s Services’)
Endorsements:	Provisions of subsection 44(4) and/or Reg 4.15A(5) applied

1. The application for the Trade Mark was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 30 June 2021.

2. The Opponent filed a Notice of Intention to Oppose on 29 August 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 29 September 2021. The Applicant filed a Notice of Intention to Defend on 30 November 2021.

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

• Declaration made on 28 February 2022 by Joshua Felix Gladwin (‘Mr Gladwin’), a solicitor employed by Gladwin Legal Pty Ltd acting on behalf of the Opponent, and Annexures JFG-1 to JFG-26 (‘Gladwin 1’).

1. The Applicant filed the following evidence in answer:

• Declaration made on 6 June 2022 by Faisal Nazeer Mohammed (‘Mr Mohammed’), Director of the Applicant, and Annexures FNM-1 to FNM-20 (‘Mohammed Declaration’).

1. The Opponent filed the following evidence in reply:

• Declaration made on 16 August 2022 by Mr Gladwin, and Annexures JFG-1 and JFG-2.

1. The Mohammed Declaration contains a clause to the effect that information within the declaration is confidential. However, the confidential information is not specified. I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd.[1]  Arguably, there are sensitive commercial matters in this declaration which I will not discuss in any detail in my reasoning. However, I will discuss the evidence to the degree necessary to provide sensible reasons for my decision.

   [1] [2008] ATMO 17.

2. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing. Both parties requested a hearing by written submissions.  The Applicant filed written submissions on 19 October 2023 (‘Applicant’s Submissions’). The Opponent did not file any written submissions.

3. As a delegate of the Registrar, I have decided the opposition, as required by s 55 of the Act, on the basis of the materials mentioned in paragraphs [3] to [6] of this decision as well as the Applicant’s Submissions.

Ground of opposition, onus and standard of proof

1. The SGP nominated a ground of opposition under s 62A of the Act.

2. The Opponent bears the burden of establishing the ground of opposition on the ordinary civil standard of the balance of probabilities.[2] 

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are to be determined is the Relevant Date, being both the filing and the priority date of the Trade Mark.

The Opponent

1. The Opponent is an Indian company that commenced trading under the name PISTA HOUSE in 1997. Since this time the Opponent’s business has grown substantially to include more than 25 restaurants, banquet halls and food stalls in the Hyderabad region of India and in the USA.

2. The Opponent provides a range of Indian savoury meals, baked and dessert items, including the famous ‘Hyderabad Haleem’, a meat stew traditionally prepared to break the fast during the holy month of Ramadan. The Opponent sells Hyderabad Haleem in the Opponent’s Indian stores and around the world including by shipping to the USA, UAE, Qatar and France. It is declared that the Opponent’s founder and President of the Haleem Makers Association, Mr Mohammad Abdul Majid, applied for and obtained a geographic indication for Hyderabad Haleem from the Indian Geographical Indications Registry.

3. In support of its alleged reputation, the Opponent has provided the following evidence:

• Annexure JFG-1 to Gladwin 1 contains representative examples of Google reviews for the Opponent’s locations in India;

• Annexure JFG-2 to Gladwin 1 contains screenshots of posts from the Opponent’s ‘Pista House’ Facebook account, dated between 11 April 2010 and 18 December 2021, in relation to the Opponent’s locations in India and the USA; and

• Annexures JFG-7 and JFG-8 to Gladwin 1 contain screenshots of YouTube videos dated 4 June 2017, regarding the Opponent’s Hyderabad Haleem.

1. The Opponent is the owner of a number of international trade mark registrations for PISTA HOUSE, or a stylised representation thereof, including in Australia, USA, United Kingdom, UAE, Canada and India. The earliest of these registrations was filed on 14 October 2017. The Opponent’s Australian trade mark number 1958614 in class 43 (‘Opponent’s Australian Registration’) was filed on 28 September 2018.

2. It is declared that the Opponent has plans to expand its locations internationally, including to Australia.

The Applicant

1. The Applicant was incorporated as a company in April 2015. Since that time, together with other entities the Applicant has operated a chain of Indian eateries and restaurants under the name PISTA HOUSE in multiple locations in and around Sydney, New South Wales. The food sold by the Applicant includes Hyderabad Haleem.

2. The Applicant declares that the Trade Mark was selected to reflect Indian culture by using the Hindi word ‘PISTA’, being a word that is easy to pronounce and memorable. The word ‘PISTA’ can be directly translated as ‘pistachio’, which is a commonly used ingredient in Indian cuisine. The word ‘HOUSE’ was selected to indicate that the Applicant provides restaurant services, serving traditional meals in a homely environment.

3. The Applicant is the owner of the website (‘Applicant’s Website’). The Applicant’s Services have been promoted on the Applicant’s Website since 2016.

4. It is declared that the Applicant’s ‘PISTA HOUSE’ business is recognised by the public. In support of this claim, the Applicant has provided the following evidence:

• The Applicant’s ‘Pista House - West’ and ‘Pista House Lakemba’ Facebook accounts, which have been in operation since December 2016 and October 2017 respectively;

• Promotion of the Applicant’s Services on third party websites. Annexure FNM-10 to the Mohammed Declaration contains screenshots of the Applicant’s menus on these websites; and

• Annexures FNM-4 and FNM-11 to the Mohammed Declaration contain screenshots of Google reviews for ‘Pista House Harris Park’ and ‘Pista House’ in Lakemba. 

1. The Applicant declares that at the time of choosing the Trade Mark, it was not aware of any other traders using the same or a similar trade mark, nor was it aware of any confusion in Australia between the Applicant’s business and the Opponent’s business.

Discussion

1. Section 62A of the Act provides:

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. The phrase “bad faith” is not defined in the Act. In the context of s 62A, bad faith does not require dishonesty or fraud, rather “it is a wider notion, potentially applicable to diverse species of conduct”[3] not confined to the examples of bad faith given in the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth). 

   [3] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164] (Dodds-Streeton J) (‘Fry Consulting’).

3. In DC Comics v Cheqout Pty Ltd, Bennett J explained:

   Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

   The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[4]

   [4] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62] (‘DC Comics’).

4. Justice Bennett also acknowledged that conduct that is “exploitative and designed to acquire a springboard or advantage” can amount to conduct that falls short of acceptable commercial standards.[5]

   [5] Ibid [66].

5. I must determine what the Applicant knew at the time of making the application for the Trade Mark and then, considering that knowledge, whether the Applicant’s conduct fell short of acceptable commercial behaviour and is of “an unscrupulous, underhand or unconscientious character”.[6]

   [6] Fry Consulting (n 3) [166].

6. An allegation of bad faith under s 62A is a serious one. In this regard, I note the following comments of the Registrar’s delegate in Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited:

   The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly.[7]

   [7] [2009] ATMO 26, [12].

7. The s 62A ground of opposition as particularised in the SGP can be relevantly summarised as follows:

1. In filing the application for the Trade Mark, “the Applicant intended to capitalise on the popularity of the Opponent’s brand and to profit from it”.[8]

2. The Applicant filed the application for the Trade Mark with knowledge of the Opponent’s trade mark registrations and “international presence”.[9]

3. A reasonable person, standing in the position of the Applicant and adopting the standards of acceptable commercial behaviour, would not have filed the application for the Trade Mark.

   [8] SGP, [4].

   [9] Ibid [6].

1. In relation to assertion (i) above, the Applicant submits that the Opponent’s popularity is not proved on the evidence, in particular with respect to Australia. I agree with this submission. Based on Gladwin 1, I am satisfied that the Opponent has a reputation in India in PISTA HOUSE in respect of, at least, the provision of food and drink and restaurant services. This is apparent from the number of reviews of the Opponent’s Indian stores and each location’s overall review score, as well as the substantial followings of the Opponent’s Facebook and Instagram accounts. There is also evidence regarding the Opponent’s expansion into other countries such as the USA.

2. However, the evidence does not establish that the Opponent’s reputation has transferred to Australia. None of the evidence provided relates to use of the Trade Mark by the Opponent in Australia. The alleged popularity of the Opponent’s business in Australia is not supported by sufficient documentary evidence, such as advertising material directed to the Australian market, or details of the number of Australian followers of the Opponent’s social media accounts.

3. Annexure JFG-7 to Gladwin 1 includes comments on a YouTube video dated in June 2017 in relation to the production of Hyderabad Haleem by the Opponent. One commenter claims to be watching the video from Australia, however the comment appears to be directed to the producer of the video rather than the Opponent or its products and services. This is the only example provided in the evidence of an Australian consumer’s awareness of the Opponent.

4. In light of the above, I am not satisfied that the Opponent’s alleged popularity is such that the use of the Trade Mark in Australia would result in a springboard or advantage for the Applicant.

5. In relation to particular (ii) in paragraph [29] above, the Applicant submits it has not attempted to “hide the fact that it was aware of the Opponent at the time it applied for the [Trade Mark]”,[10] though it was the Applicant’s understanding that the Opponent was not operating in Australia. The Opponent’s lack of presence in the Australian market can be assumed from the evidence, including the Opponent’s store locations and the absence of any social media accounts or content directed to Australian consumers.

   [10] Applicant’s Submissions, [37(c)].

6. Notably, the Opponent has not provided evidence that the Applicant was aware of the Opponent when it reportedly first adopted the Trade Mark in 2015. The Applicant has explained its reasons for selecting the Trade Mark, which bear no connection to the Opponent, and I see no reason to doubt this explanation. The Applicant has declared that it was only made aware of the Opponent in 2019, some four years after it adopted the Trade Mark, in the course of dealings on another trade mark application.

7. With respect to the Opponent’s trade mark registrations, the Applicant notes that all of the registrations detailed in Annexure JFG-6 to Gladwin 1, including the Opponent’s Australian Registration, post-date the Applicant’s adoption of the Trade Mark in 2015. I am satisfied that the Mohammed Declaration, including archived screenshots of the Applicant’s Website and Google reviews for the Applicant’s business, demonstrates that the Applicant has used the Trade Mark in relation to restaurant services continuously since at least 2016, being prior to the filing date of any of the Opponent’s trade mark registrations.

8. Statements in Gladwin 1 also suggest that the Applicant was, or ought to have been, aware of the restrictions about who can make Hyderabad Haleem in India. The Applicant declares that, to the best of Mr Mohammed’s knowledge, it was not aware that only members of the Haleem Makers Association and authorised persons are permitted to make Hyderabad Haleem in India. Further, there is nothing to suggest that the Applicant’s decision to offer Hyderabad Haleem for sale bears any connection to the application for the Trade Mark which is at issue in this matter.

9. Regardless of the Applicant’s awareness of the Opponent as at the Relevant Date, mere awareness of the Opponent is not sufficient, in itself, to establish bad faith.[11] Ultimately the question is whether, in all the particular circumstances, the Applicant’s knowledge was such that the decision to apply for the Trade Marks at the Relevant Date would be regarded as in bad faith by persons adopting the proper standards.[12] I am not satisfied that it was. There is no evidence which suggests that the Applicant regarded the Trade Mark as the property of the Opponent at any stage.

   [11] DC Comics (n 4) [63].

   [12] Fry Consulting (n 3) [167].

10. Overall, the Opponent has not provided cogent evidence to substantiate assertion (iii) in paragraph [29] of this decision that “a reasonable person, standing in the position of the Applicant and adopting the standards of acceptable commercial behaviour, would not have filed the application for the Trade Mark”. In the absence of such evidence I am not satisfied, on the balance of probabilities, that the application for the Trade Mark was filed in bad faith.

11. The ground of opposition under s 62A of the Act has not been established.

Decision

1. Section 55 of the Act relevantly provides:

   (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.

2. The Opponent has not established the ground of opposition under s 62A of the Act. Trade mark application number 2131771 may proceed to registration not less than one month from the date of this decision.

3. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Sheona Robertson

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

21 December 2023