Muhammad Aslam Khan v Exim Marketing Pty Ltd

[2022] ATMO 136

TRADE MARKS ACT 1995

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

Re:Opposition by Exim Marketing Pty Ltd to registration of trade mark application number 1998093 (class 30) – JAN with device - in the name of Muhammad Aslam Khan

Delegate:	Katrina Brown
Representation:	Opponent: David Larish of Counsel, instructed by Peter Le Guay of Thomson Geer Applicant: Not represented
Decision:	2022 ATMO 136 Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds pursued under ss 42(b) and 60 – s 60 established – registration refused.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Exim Marketing Pty Ltd (‘Opponent’) to registration of the following trade mark.

   Trade mark no:           1998093

   Trade mark:                

   (‘Trade Mark’)

   Applicant:                  Muhammad Aslam Khan (‘Applicant’)

   Filing date:                 22 March 2019

   Specification:             Class 30 - Cereal based mixes for making breakfast foods; Cereal based snack food; Cereal breakfast foods; Cereal snack foods flavoured with cheese; Crisps made of cereals; Food products consisting of cereals; Foods produced from baked cereals; Foods produced from puffed cereals; Foodstuffs made from cereals; Foodstuffs made with cereals; Snack food products consisting of cereal products; Snack food products made from cereal flour; Snack food products made from cereals; Snack foods consisting principally of extruded cereals; Snack foods made from cereals; Snack foods prepared from cereals; Curried food pastes; Dried pasta foods; Extracts of coffee for use as flavours in foodstuffs; Extruded food products made of maize; Extruded food products made of rice; Extruded food products made of wheat; Farinaceous food pastes; Farinaceous foods; Flavour enhancers for food (other than essential oils); Flavourings for snack foods (other than essential oils); Flour concentrate for food; Food dressings (sauces); Food essences (except etheric essences and essential oils); Food flavourings, other than essential oils; Food mixes for making bakery products; Food pastes (seasonings); Food pastes (spices); Food preparations for making puddings; Food products for making nachos; Food products for making tacos; Food products having a pastry base; Food products made from potato flour; Foods with a chocolate base; Foods with a cocoa base; Foodstuffs made from corn; Foodstuffs made from dough; Foodstuffs made from farinaceous products; Foodstuffs made from maize; Foodstuffs made from oats; Foodstuffs made of rice; Foodstuffs made of sugar for making a dessert; Foodstuffs made of sugar for sweetening desserts; Foodstuffs made with flour; Fructose syrup for use in the manufacture of foods; Glazes for food; Glazing for food products; Glazing products for application to food; Gluten prepared as foodstuff; Groats for human food; Malt extract for food; Malted food drinks; Molasses for food; Oat-based food; Potato flour for food; Preparations for preserving foodstuffs (salt); Preparations for use as rising agents in food; Preservatives for food (salt); Processed grains for use in food; Products for use in food preservation (salt); Rice based snack foods; Salt for flavouring food; Salt for preserving foodstuffs; Salt pellets for preserving foodstuffs; Snack food products made from maize flour; Snack food products made from potato flour; Snack food products made from rice; Snack food products made from rice flour; Snack food products made from soya flour; Snack foods consisting principally of grain; Snack foods consisting principally of pasta; Snack foods consisting principally of rice; Snack foods made from corn; Snack foods made of wheat; Snack foods made of whole wheat; Snack foods prepared from grains; Snack foods prepared from maize; Snack foods prepared from potato flour; Sodium chloride for preserving foodstuffs; Starch for food; Synthetic thickeners for foodstuffs; Tapioca flour for food; Thickeners for cooking foodstuffs; Thickening agents for cooking foodstuffs; Turmeric for food; Wafers (food); Porridge oats; Breakfast cake; Crisp rolls; Crispbread; Crisps made of potato flour; Wholewheat crisps; Extruded snacks consisting principally of starch

   (‘Applicant’s Goods’)

2. 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 19 September 2019.

3. The Opponent filed a Notice of Intention to Oppose on 15 November 2019, followed by a Statement of Grounds and Particulars (‘SGP’) on 10 December 2019.

4. The Applicant filed a Notice of Intention to Defend on 6 August 2020.

5. The Opponent filed the following declarations as evidence in this opposition:

   ·Declaration of Ejaz Anwar (Director of Opponent) made on 23 December 2020 with Annexures EA-1 to EA-12 (‘Anwar 1’); and

   ·Declaration of Ejaz Anwar made on 9 June 2021 with Annexures EA-13 to EA-15 (‘Anwar 2’).

   Additionally, the Opponent filed the following 7 declarations from representatives of various wholesalers and retailers (‘Trade Declarations’):

   ·Declaration of Mohommad Rahman (Director of Kacktus International Pty Ltd) made on 7 June 2021;

   ·Declaration of Mohammad Rezaul Haque (Store Manager of All Foods Integrated Group Pty Ltd T/A Best Price Supermarket) made on 4 June 2021;

   ·Declaration of MD Atiqur Rahman (Director of Al Baraka Pty Ltd) made on 8 June 2021;

   ·Declaration of Prince Hamza Shaukat (Director of Max Ops Pty Ltd T/A Geelong Value Mart) made on 7 June 2021;

   ·Declaration of Raza Hassan (Director of Apni Dukaan Online Pty Ltd) made on 7 June 2021;

   ·Declaration of Imran Iqbal Butt (Sole Trader of Al-Fazal-Spice-Centre) made on 7 June 2021; and

   ·Declaration of Inamul Haque (Sole Trader of Variety Video CDs & Spices) made on 4 June 2021.

6. The Applicant filed the following declaration as evidence in this opposition:

   • Declaration of Muhammad Aslam Khan made on 8 April 2021 with Annexures 01 and 02.

7. Once the time allowed for filing evidence ended, the Opponent requested an oral hearing. The matter was heard by me, a delegate of the Registrar of Trade Marks on 18 May 2022. The Opponent was represented by David Larish of Counsel, instructed by Peter Le Guay of Thomson Geer. The Applicant was not represented at the hearing and elected not to file written submissions.

   Grounds of opposition, onus, and relevant date

8. In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 58, 60 and 62A of the Act. The grounds under ss 58 and 62A were not pressed by the Opponent. As such, I consider the grounds under ss 58 and 62A to be abandoned.

9. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[1] In the event that the Opponent establishes one of the grounds in relation to all of the Applicant’s Goods, there is no requirement for me to consider the other grounds of opposition.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

10. The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

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

11. The date at which the rights of the parties are to be determined is 22 March 2019 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

    Section 60

12. Section 60 of the Act provides:

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

13. To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation, use of the Trade Mark would be likely to deceive or cause confusion.

14. In the SGP, the Opponent nominated the following trade mark as the basis for this ground of opposition (‘Opponent’s Trade Mark’):

    Reputation

15. For the purposes of s 60 ‘reputation’ is ‘the recognition of the [trade mark] by the public generally’.[3] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’ number of people or potential consumers[4] but this is tempered by the nature of the relevant market. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[5]

    [3] McCormick & Company Inc v McCormick [2000] FCA 1335, [81] (Kenny J).

    [4]Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

    [5] [2019] FCA 923, [83] (O’Bryan J).

16. Turning to the evidence, Anwar 1 states that the Opponent established its business as an Australian importer and distributor of products in 2008. In March 2016, the Opponent began importing a variety of Pakistani, Bangladeshi, Indian and Middle Eastern food and drink products bearing the Opponent’s Trade Mark. Annexure EA-3 to Anwar 1 is a copy of a sales contract dated 15 March 2016 between the Opponent and an overseas exporter. The contract is in relation to 20 different types of ‘JAN’ food products and is declared to be in respect of the first shipment of products bearing the Opponent’s Trade Mark.

17. It is declared that the Opponent’s Trade Mark has been continuously used in Australia since March 2016. The Opponent distributes over 100 products bearing the Opponent’s Trade Mark to retailers in NSW, ACT, Victoria, Queensland, and Western Australia. This is supported by Confidential Annexure EA-8 to Anwar 1 which consists of invoices from the Opponent to retailers located in these states and territory. The invoices are dated from 2016 to 2019 and are in respect of an array of ‘JAN’ food products from frozen paratha and samosas, dried dates and roasted chana, spices and pastes, to flavoured coconut milk and coconut water.

18. Products bearing the Opponent’s Trade Mark are promoted in Australia via specialist media targeted toward Pakistani, Bangladeshi, and Indian communities such as the Pakistan Today newspaper. Annexure EA-5 to Anwar is an example of an advertisement from Pakistan Today declared to be from September 2016. The advertisement shows the Opponent’s Trade Mark on paratha, chapati, samosas, spring rolls, singara and dal puri.

19. Revenue figures have been provided for 2016 to 2019 and are declared to be in relation to products distributed and sold in Australia bearing the Opponent’s Trade Mark. Annexure EA-15 to Anwar 2 is a statement from the Opponent’s accountant and tax agent. The statement confirms the accuracy of the revenue figures and that the figures only relate to the sale of products bearing the Opponent’s Trade Mark.

20. In respect of the revenue figures, I note the recent decision A.D. Padmasingh Isaac trading as Aachi Spices and Foods v Ragopika Pty Ltd (‘Padmasingh’)[6] which shares similarities to the current matter. In Padmasingh the delegate, faced with similar revenue figures over a three-year period in respect of Indian food products,[7] was satisfied that the trade mark had the requisite reputation amongst relevant Australian consumers of South Indian food products.

    [6] [2021] ATMO 47.

    [7] Ibid [21].

21. The evidence in the current matter also provides information in respect of the qualitative dimensions of the reputation of the Opponent’s Trade Mark. It is declared that the Opponent sponsors religious organisations and charities which display the Opponent’s Trade Mark at their events. Annexure EA-13 to Anwar 2 consists of testimonials from two such organisations, namely the Al-Saeed Educational & Welfare Trust Inc. and Islamic Help. The testimonial from Al-Saaed Educational & Welfare Trust Inc confirms that the Opponent has supported community activities including providing paratha (traditional bread) for Eid festival breakfasts in 2017 and 2018. The photographs accompanying this testimonial which are declared to be from one of those Eid gatherings show paratha bearing the Opponent’s Trade Mark. The testimonial from Islamic Help states that the Opponent was a gold sponsor of a fundraising event in 2018, and the accompanying photographs show the Opponent’s Trade Mark displayed on banners at this event. I also note that some of the goods which are marketed under the Opponent’s Trade Mark have Halal certification, a characteristic of immense importance for a proportion of consumers.

22. On balance, I am satisfied that the evidence establishes that the Opponent’s Trade Mark had a reputation, albeit a limited one, in Australia in respect of sub-continental food products at the Relevant Date.

23. I must now determine whether, in light of the reputation in the Opponent’s Trade Mark, use of the Trade Mark would be likely to deceive or cause confusion.

    Likely to deceive or cause confusion

24. The concepts of ‘deceive’ and ‘confuse’ are explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd, where Richardson J said:

    ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[8]

    [8] [1979] RPC 410, 423 (citation omitted).

25. In Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd it was noted that ‘the threshold for confusion is not high’.[9] Importantly, confusion can be established ‘even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale’.[10] Also, the confusion need not be a case of mistaking one trade mark for another; it can be wondering whether the trade marks, which might be readily distinguished from each other, nonetheless come from the same source.[11]

    [9] [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).

    [10] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).

    [11] In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110, 113.

26. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the Registrar’s delegate observed:

    The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[12]

    [12] [2012] ATMO 124, [40].

27. In the present matter, the trade marks have a high degree of similarity. The only word element in the Trade Mark and the Opponent’s Trade Mark is ‘Jan’. This is an essential feature of each of the trade marks, and the feature by which each will be spoken. Conceptually, the trade marks are also similar. The Applicant and Opponent agree that the word ‘Jan’ means ‘life’ in a number of languages used in the Indian subcontinent including Urdu and Hindi.

28. With respect to the goods, the Applicant’s Goods contain items which encompass, or are similar to, the sub-continental food items for which the Opponent’s Trade Mark has acquired a reputation. Additionally, whilst the Applicant’s Goods are not confined to sub-continental items, the evidence in answer suggests that the Applicant’s core focus is Indian and Pakistani food products. As such, not only are the parties’ products the same/similar but they also have the same target market.

29. The risk of confusion is also heightened by the actual manner of use of the Opponent’s Trade Mark. The Opponent’s Trade Mark has been used on a diverse array of food items, ranging from spices and dried fruit to frozen samosas and coconut water. Given this use on an array of food items, it would be reasonable for consumers to wonder whether the Applicant’s Goods were part of an extended product range of the Opponent. In this respect, I note each of the Trade Declarations states that if the declarant ‘saw another food or drink product in Australia bearing the word “Jan” (with or without a logo), I would associate it with [the Opponent]’.  

30. Having regard to the reputation of the Opponent’s Trade Mark, the similarity of the trade marks and the goods, I am satisfied that there is a real and tangible likelihood that consumers would at least be caused to wonder whether the Applicant’s Goods provided under the Trade Mark might be connected to the food items provided under the Opponent’s Trade Mark.

31. Accordingly, the ground of opposition under s 60 of the Act has been established.

    Decision

32. 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.

33. The Opponent has established the ground of opposition under s 60 of the Act. Accordingly, I refuse to register trade mark number 1998093.

    Costs

34. 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 Applicant according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

    Katrina Brown
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    15 August 2022