m/S Yousufain Pista House v Deccan House Pty Ltd

[2023] ATMO 11

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 application under section 92 of the Trade Marks Act 1995 (Cth) by Deccan House Pty Ltd to remove trade mark number 1958614 (43) – PISTA HOUSE – in the name of M/s. Yousufain Pista House

Delegate:

Louise Tuohy

Representation:

Opponent: Gladwin Legal Pty Ltd

Applicant: LegalVision ILP Pty Ltd

Decision:

2023 ATMO 11

Trade Marks Act 1995 (Cth) – application under section 92 – section 92(4)(a) application for removal – intention in good faith to use found – trade mark to remain on the register

Background

1. M/s. Yousufain Pista House (‘Removal Opponent’) is the registered owner of the following trade mark:

Registration Number:                   1958614

Trade Mark:    (‘Trade Mark’)

Filing Date:  28 September 2018

Specification:  Class 43: Hotels; multi cuisine restaurant; banqueting services being arranging of banquets in banquet halls; cafes; cafeterias; canteens; providing food and drink from food stalls; catering; outdoor catering; providing food and drink from a food court; providing of food from sweet stalls; providing food and drink from a bar; snack bar services; provision of temporary accommodation; provision of temporary accommodation services being boarding and lodging; providing temporary accommodation services from boarding houses; rental of temporary accommodation (‘Registered Services’)

1. On 30 November 2021 Deccan House Pty Ltd (‘Removal Applicant’) filed an application (‘Application’) seeking removal of the Trade Mark from the Register for non-use. The Application was in respect of all the Registered Services.

2. On 27 January 2022 the Removal Opponent filed a Notice of Intention to Oppose the removal of the Trade Mark, followed by its Statement of Grounds and Particulars (‘SGP’) on 27 February 2022. On 28 April 2022 the Removal Applicant filed its Notice of Intention to Defend the Application.

3. The Removal Opponent filed the following declarations as evidence in support:

   • Declaration of Mohammed Abdul Majeed, joint partner of the partnership firm M/s. Yousufain Pista House, made on 3 August 2022, with Annexures MAM-1 to MAM-8 (‘Majeed’).

• Declaration of Joshua Felix Gladwin, solicitor of Gladwin Legal Pty Ltd for the Removal Opponent, made on 28 February 2022, with Annexures JFG-1 to JFG-26.

1. The Removal Applicant filed the following declaration as evidence in answer:

   • Declaration of Faisal Nazeer Mohammed, Director of the Removal Applicant, made on 3 November 2022, Annexures FNM-1 to FNM-12 (‘Mohammed’).

2. The Removal Opponent did not file evidence in reply.

3. Once the time for filing evidence had ended, the parties were given the opportunity to request a hearing.  The Removal Applicant requested a decision without a hearing and this matter was allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the SGP and evidence filed by the parties.

Legal Framework

1. Part 9 of the Trade Marks Act 1995 (Cth) (‘Act’) deals with removal of trade marks from the Register due to non-use.

2. The Removal Applicant nominated s 92(4)(a) of the Act as the ground for removal. Section 92(4)(a) provides:

   (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;

3. The onus of rebutting an allegation of under s 92(4)(a) lies with the Removal Opponent. This onus is pursuant to s 100 of the Act which provides:

   100  Burden on opponent to establish use of trade mark etc.

   (1)  In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a)  any allegation made under paragraph 92(4)(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 opposed application relates (relevant goods and/or services); or

   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services;

   […]

   (2)  For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a)  the opponent has established that the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services before that period; or

   (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee in relation to those goods or services before that period and that that use was in accordance with the terms of the assignment; and

   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee before that period as having been a use of the trade mark in relation to those goods or services by the registered owner.

4. In the present case the Removal Opponent relies solely on its intention in good faith to use the Trade Mark in Australia in respect of the Registered Services as at the filing date of the trade mark application for registration on 28 September 2018 (‘Relevant Date’).

5. I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[1]

   [1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

6. Though the onus is, in terms of s 100 of the Act, on the Removal Opponent in this matter, that onus is not particularly arduous. In Structureco Inc v Starite Distributors Pty Ltd, Hearing Officer Forno observed:

Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s.92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case – perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.[2]

[2] [2000] ATMO 31.

1. In accordance with s 101 of the Act, if the grounds for removal are established, I may decide to remove the Trade Mark from the Register in respect of any or all of the Registered Services, or, if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.

Discussion

1. The Removal Opponent is a partnership firm in India.

2. In Majeed, Mr Majeed declares that he coined the Trade Mark when, in 1997, he commenced trading using a small stall with his own hand-made spices and recipes.

3. Mr Majeed declares that as his business grew, he established the Removal Opponent with his son Mohammed Mohdis Ali.

4. Mr Majeed declares that at the Relevant Date the Removal Opponent owned and operated a variety of restaurants, banquet halls and food stalls in India and the United States, with each location marketed by reference to the Trade Mark.

5. Mr Majeed declares that at the Relevant Date the Removal Opponent intended in good faith to use, authorise the use, or assign the Trade Mark to a body corporate for use in Australia in relation to the Registered Services.

6. Mr Majeed declares that in addition to the Removal Opponent’s desired expansion plans into Australia, which existed at the time of filing, it also intends to expand its business into Dubai, Malaysia, Saudi Arabia and Singapore.

7. In this case, the Removal Opponent has filed the application for trade mark registration, and Mr Majeed has made a clear statement that at the Relevant Date the Removal Opponent had an intention in good faith to use, authorise the use, or assign the Trade Mark to a body corporate for use in Australia in relation to the Registered Services. Taken together, this is sufficient evidence to establish intention and to shift the onus from the Removal Opponent to the Removal Applicant.

8. In Mohammed, Mr Mohammed declares that the Removal Applicant was incorporated on 2 April 2015 to initiate a new business venture, being the operation of a chain of Indian restaurants and eateries under the name PISTA HOUSE in Australia. From 2015 to 2022 the Removal Applicant has operated seven restaurants, which have promoted and displayed its PISTA HOUSE trade mark.

9. Mr Mohammed declares that since 2018 the Removal Applicant has not found any use of the Trade Mark by the Removal Opponent, or any authorised, related or associated entities in Australia. Mr Mohammed also declares that the Removal Applicant suspects that the Removal Opponent likely filed its trade mark application in 2018 to register the Trade Mark after noticing the Removal Applicant’s independent Australian presence.

10. However, the Removal Applicant has provided no basis either in the form of evidence or argument for me to find the clear evidence given by Mr Majeed as to the intention of the Removal Opponent at the Relevant Date to be false or inaccurate. The Removal Opponent is clearly capable of expanding its business operations outside of India as evidenced by its operations in the United States.

11. Noting that low burden placed on the Removal Opponent in an application under s 92(4)(a) of the Act, I find that it has satisfied the onus in showing an intention to use the Trade Mark for the Registered Services and the Removal Applicant has provided insufficient evidence to suggest otherwise.

12. As such the ground for removal under s 92(4)(a) of the Act has not been established in relation to the Registered Services.

Decision

1. The Removal Applicant has been unsuccessful in its Application. I direct that trade mark registration 1958614 is to remain on the Register for all of the Registered Services. If the Registrar is served with a notice of appeal within the relevant timeframe, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.  

Costs

1. Both parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Applicant under s 221 of the Act in line with Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

3 February 2023