Mount Everest Mineral Water Pty Ltd v Himalayan Spring Mineral Water Pty Ltd
[2011] ATMO 80
•17 August 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Mount Everest Mineral Water Pty Ltd to registration of trade mark application 1261105(32) - HIMALAYAN SPRING MINERAL WATER - “WATER CLOSEST TO HEAVEN” - filed in the name of Himalayan Spring Mineral Water Pty Ltd.
Delegate: Iain Thompson Representation: Opponent: Written submissions by Fiona Brittain of Davies Collison Cave
Applicant: Mr Lama and Mr Woolhouse, directors of the applicantDecision: 2011 ATMO 80
s52 opposition - s43 endorsement not required. Opposition not established - costs awarded against opponentBackground
Himalayan Spring Mineral Water Pty Ltd (‘the applicant’), of Richmond, Victoria, has applied under the Trade Marks Act 1995 (‘the Act’), to register a trade mark current details of which appear below:
Application No: 1261105
Priority Date: 8 September 2008
Goods: Mineral water
Trade Mark: HIMALAYAN SPRING MINERAL WATER- “WATER CLOSEST TO HEAVEN.”
The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 15 January 2009.
On 15 April 2009 Mount Everest Mineral Spring Water Pty Ltd (‘the opponent’), filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice is couched broad terms which includes those under section 43 argued by the opponent.
The opponent sought and received extensions of time in which to serve and file evidence in support of the opposition from 15 July 2009 to 15 March 2010. The final application for extension of time was accompanied by a statutory declaration dated 15 February 2010 by the opponent’s trade mark attorney stating:
On behalf of the opponent my firm has today prepared and filed an application seeking a further one month of extension of time within which to file evidence in support of the above opposition. In this regard, my last instructions in this matter were that the opponent was collating all material required as evidence in support of opposition and that this task was being undertaken in tandem with evidence preparation on related conflicts in other jurisdictions. This strategy was confirmed at a meeting between myself and the opponent’s Indian attorney in November 2009. Subsequently, my firm has not received all material required to be filed as evidence in support of opposition and accordingly, a one month extension of time is required to allow the opponent and my instructing Indian attorneys to collate all material required allow the opponent and my instructing Indian attorneys to collate all material required to file as evidence in this matter.
Despite these intimations, the opponent has not served and filed evidence in support of the opposition. The applicant served and filed evidence in answer. This is a joint declaration by James Woolhouse and Sonam Lama who are both directors of the applicant.
I heard the submissions of the applicant at a hearing in Melbourne on 18 July 2011. The applicant was represented by James Woolhouse and Sonam Lama. The opponent did not appear but filed written submissions by its attorney Fiona Brittain of Davies Collison Cave, a copy of which I supplied to the directors of the applicant prior to the hearing.
The Evidence
The evidence before me is wholly contained in the declaration by James Woolhouse and Sonam Lama, directors of the applicant, who declare that the applicant:
… is the importer of spring mineral water from a source in the Himalayan mountains in Nepal. The water is one of the purest in the world and is bottled in a plant at the source in the Himalayan mountains.
Both James Woolhouse and Sonam Lama (directors of the applicant) have been importing goods into Australia, both from Nepal and other Asian countries, for over 20 years. Mr. Lama, now an Australian citizen, grew up in Nepal after his family was forced to flee Tibet. Mr. Lama spent his childhood years in a Tibetan refugee camp in Nepal. He is now married to an Australian woman, has 2 children and has lived permanently in Australia for 20 years.
The idea of importing water from the Himalayas in Nepal started in early 2005, with the help of Mr. Lama's family and friends who are still living in Nepal. With their help we have organized the bottling plant to meet our requirements and we have been selling into the Australian market for 18 months. From the beginning we wanted a water that was unique in the Australian marketplace. We believe our product is unique in the Australian market and this is because we came up with ideas that we thought would attract the consumer and give us a point of difference to other water products. This includes our slogan “The Water Closest to Heaven”. Our water is unique — it is the first water from the Himalayas to be brought to Australia and we, as a small Australian company, have spent many hours and much money, to make it recognisable to the Australian consumer as that. Our name, Himalayan Spring Mineral Water, and our slogan, “The Water Closest to Heaven”, allow our product to have a higher degree of brand awareness and loyalty in a very competitive market.
The declaration is accompanied by printed material depicting the use of the trade mark.
Grounds
Of the multitude of grounds enlisted in the Notice the opponent relies only on section 43 of the Act.
Section 43 provides:
43Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
The opponent opens its submissions by stating:
We ask the Hearing Officer to note that the provision is mandatory and the application must be rejected if the ground is established.
The words “Himalayan Spring Mineral Water” clearly signify that the designated mineral water is bottled and/or sourced in the Himalayas.
We refer to the decision of the Trade Marks Office dated 6 September 2010 in relation to Trade Mark Application no. 1261293 HIMALAYAN SPRING MINERAL WATER - BOTTLED IN THE SACRED HIMALAYAS OF NEPAL TO THE VIBRATIONAL CHANTING OF TIBETAN MONKS in which it was held that it was clear from the Explanatory Memorandum to the Trade Marks Act 1995 and the 1994 Trade Marks Bill that a direct expression may (if not technically a connotation), still amount to a signification inherent to the trade mark. The Hearing Officer stated as follows:
“Therefore, if a trade mark consists of a direct statement that the goods will originate from a particular region ... and there is scope within the goods/services for that statement to be misdeseriptive, confusion will result”.
On this basis, we submit that there is a real likelihood that the ordinary consumer would expect that the mineral water covered by the application would be bottled in and/or sourced in the Himalayas, and the trade mark is likely to deceive or cause confusion if it is applied to a product which does not answer this description.
A similar conclusion was reached by the Hearing Officer in the aforementioned decision as the mark the subject of that decision incorporated the words “HIMALAYAN SPRING MINERAL WATER” and “BOTTLED IN THE SACRED HIMALAYAS OF NEPAL ....”. In that case, the Hearing Officer determined that a suitable endorsement should apply as a condition of registration in order to eliminate the likelihood of confusion resulting from use of the trade mark. Similarly, we submit that the following condition of registration should be applied to the opposed application to avoid the likelihood of confusion resulting from use of the opposed mark:
“It is a condition of registration that the trade mark will only be used on mineral water bottled and sourced in the Himalayas”.
While I understand the point that the opponent makes in its submissions and what it requests of me, I do not consider that this case is on all fours with the decision of the Hearing Officer to which the opponent refers.
Initially, I must state that any ground of opposition can only succeed if I am satisfied on the balance of probabilities that it has been established.[1] Therefore I can only find that the opponent has established its ground if I am satisfied that the opposed trade mark contains a connotation such that the use of the opposed trade mark would (not could) be likely to deceive or cause confusion.
[1] Jockey International, Inc v Wilkinson (2010) 86 IPR 612 at [12]; Maxims Caterers Limited v Magnona Pty Ltd [2009] ATMO 98; Pfizer Products Inc v Karam [2006] FCA 1663; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 at [22] to [26]
The opponent does not suggest that there is actually a false or misleading connotation within the expression HIMALAYAN SPRING MINERAL WATER which occurs in the opposed trade mark. Neither does the opponent dispute the fact that the applicant’s goods are spring water from the Himalayas.
Rather, the opponent wishes me to accept, on the balance of probabilities, that the applicant is likely to source its water from somewhere other than the Himalayas and then confusingly or deceptively apply its trade mark to that water. The opponent has proffered no evidence to substantiate this allegation or, indeed, any evidence at all.
On the other hand, the applicant’s evidence, which includes a declaration by its directors and brochures depicting its trade mark in use, establishes to my satisfaction that the goods are sourced in the Himalayas.
On other occasions under the Act (for example in relation to section 44) consideration is given to the likelihood of deception or confusion that is likely to arise if the applicant uses its trade mark in a fair and reasonable manner in relation to the goods in respect of which registration is sought. Absent evidence which goes to the conduct of an applicant, it is not clear to me why the standard which is to be applied here should be any different.
It is apparent that the opponent wishes me to involve myself in the process of some general policy consideration akin to the type I referred to in Merck KGaA v Generic Health Pty Ltd [2007] ATMO 1 (‘Merck’) where I said at paragraph 32:
The other problem with this type of evidence is that it invites an importation of general health policy considerations into the comparison of the trade marks under section 44 rather than to provide concrete evidence about the marketplace in which the goods are sold.
This ‘policy’ approach to the issue appears to me to go very much to the exercise of a discretion by the Registrar of the type that was present in the Trade Marks Act 1955. However, the import of general policy issues into considerations of the type of matter before me under section 44 is one that is not appropriate under the Trade Marks Act 1995. As observed by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020:
The grounds for non-acceptance of an application to be found in Division 2 of Part 4 of the Act substantially reflect grounds for non-acceptance set out in recommendation 6A of the 1992 Working Party Report. It was said in the Report:
“These grounds have been formulated with the aim of excluding matters which are considered inappropriate for a bureaucracy to determine, such as matters of morality or fraud, and with general principles in mind that it should be procedurally straightforward to obtain registration of a trade mark, and procedurally straightforward to have one removed from the Register. This aim can be achieved, at least in part, by defining clearly the grounds on which an application may be denied registration, as well as those whereby the registration may be rectified or removed.” (p 44)
Deputy Registrar Hardie also commented on this kind of issue in Schering Aktiengesellschaft v Bracco International B.V [1999] ATMO 89:
I do take note, however, of Ms Freeman's reference to Edward's Application [(1946) 63 RPC 19 - the JARDEX /JARDOX case] and her submissions that, where medical products are concerned, there is strong public interest in precluding even small risks if there is a possibility of dangerous consequences.
Edward's Application however, was decided not on the basis of a real likelihood of risk, but on an exercise of the Registrar's discretion. That discretion does not exist under the Trade Marks Act 1995. The provisions of section 44 as analysed and explained by Justice French [see Woolworths, above] require a positive finding that a risk of deception or confusion is likely. [Parenthetical material added]
Here, unalike the situation before me in Merck, above, I do not have the benefit of any evidence served or filed by the opponent.
As the applicant’s representatives, Mr Lama and Mr Woolhouse, submitted at the hearing the applicant’s misuse of the trade mark on its bottled water would be subject to the provisions of the Trade Practices Act 1974[2] and the corresponding provisions of the Fair Trading Acts and food labeling laws (collectively, ‘the consumer law’) of Australia and its various States.
[2] Section 52 of the TPA prohibits conduct which is, or is likely to be, misleading or deceptive. I note that the TPA was repealed as from 1 January 2011 with section 52 being replaced by paragraph 18 of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act (Cth) 2010)
Thus, if the opponent’s fears were at all valid, and if the applicant should use the opposed trade mark on bottled water that is not from the Himalayas, there are more obvious and adequate safeguards for the public other than under the Act.
I think that the nature of the trade mark before me is such that it would be to stray into error to accept that the applicant would, on the balance of probabilities, apply its trade mark to water originating other than in the Himalayas as there is nothing inherently unrealistic or farfetched about this claim if the opposed trade mark is used in a fair and normal manner.
Thus I distinguish this matter from Mount Everest Mineral Water Limited v Himalayan Spring Mineral Water [2010] ATMO 85 in which the Hearing Officer apparently found that the trade mark HIMALAYAN SPRING MINERAL WATER - BOTTLED IN THE SACRED HIMALAYAS OF NEPAL TO THE VIBRATIONAL CHANTING OF TIBETAN MONKS was (on the balance of probabilities) a claim sufficiently improbable or farfetched (but not fanciful) that an endorsement limiting the use of the registration to water that both originates in the Himalayas and is bottled to the chanting of Tibetan monks was required.
The improbability of water being both sourced in the Himalayas and bottled to the chanting of Tibetan monks is sufficiently incredible (but not pure whimsy) for the Registrar to depart from a position of not interfering in general policy matters and decide that an endorsement limiting use of the registration to those goods is desirable. Here, the claim within the opposed trade mark is (on the balance of probabilities) a likely one and absent any evidence to the contrary and with the considerable might of the consumer law at hand, (and the probability that the applicant will comply with such laws and requirements), it is preferable not to involve the Registrar in such policy matters.
The opponent has not established its ground under section 43 of the Act.
Disposition
Section 55 of the Act relevantly provides:
55Decision
(1)Unless the proceedings are discontinued or dismissed, 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.
The opponent has not established its opposition.
The trade mark application may then proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s order or direction.
Costs
The applicant engaged the services of legal representatives early in the process of this opposition and abandoned that representation when it became obvious that proceedings had become overly and unnecessarily protracted. I note that having obtained nine months of extensions of time in which to do so, the opponent adduced no evidence against any of the plethora of grounds enlisted in the Notice. Having been successful in these proceedings the applicant is entitled to its costs at the official scale which I award against the opponent.
Iain Thompson
Hearing Officer
Trade Marks Hearings
17 August 2011
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