Naurus Pvt Ltd v Ahmed Foods Pvt. Ltd

[2018] ATMO 123

TRADE MARKS ACT 1995

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

Re:Opposition by Ahmed Foods Pvt. Ltd. to registration of trade mark application 1702543 (29,30) – AHMED KARACHI HALWA MERCHANT - in the name of Naurus Pvt Ltd

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2018 ATMO 123

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44 and 62 considered – neither established – trade mark to proceed to registration

Background

1.  This is an opposition brought by Ahmed Foods Pvt. Ltd. (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Naurus Pvt Ltd (‘Applicant’): 

Application Number:	1702543
Filing Date:	24 June 2015
Goods:	Class 29: Milk desserts; Artificial milk based desserts; Cream desserts; Dairy desserts (except ice cream or frozen yoghurt); Desserts in the form of puddings with a milk base; Desserts made from milk (except ice cream); Desserts made from milk products (except ice cream); Desserts made from yoghurt (except frozen yoghurt); Desserts made wholly or principally of dairy products; Flavoured desserts; Fruit desserts; Instant desserts having a milk base; Milk based desserts (milk predominating); Preparations with a milk base for use as desserts; Prepared desserts (fruit based); Prepared desserts (milk based); Yoghurt desserts (except frozen yoghurt); Sweet pickle (pickled fruit or vegetables); Canned milk; Canned pulses; Canned soups; Canned tomatoes; Canned vegetables; Ghee; Butter; Butter cheeses; Butter preparations; Buttercream; Buttermilk; Buttermilk products; Clarified butter; Dried pulses; Pulses (foodstuffs); Pulses (for food) Class 30: Boiled sugar sweetmeats; Filled sweetmeats; Sweetmeats (candy); Foodstuffs made of sugar for making a dessert; Foodstuffs made of sugar for sweetening desserts; Frozen desserts; Frozen fruit desserts; Ice cream desserts; Ice desserts; Mousse desserts; Muesli desserts; Non-dairy frozen dessert products; Preparations for making desserts; Prepared desserts (chocolate based); Prepared desserts (confectionery); Prepared desserts (pastries); Souffles (desserts); Sweet souffles (desserts); Breakfast cereals; Cereal bars; Cereal based food bars; Cereal based snack food; Cereal breakfast foods; Cereal flour; Cereal powders; Cereal preparations; Cereal products in bar form; Cereals for use in making pasta; Cereals products in bar form; Chips (cereal products); Crisps made of cereals; Food products consisting of cereals; Food products containing cereals; Foods produced from baked cereals; Foods produced from puffed cereals; Foodstuffs made from cereals; Foodstuffs made with cereals; High-protein cereal bars; Preparations for breakfasts (cereal); Preparations made from cereals; Savoury preparations made from 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; Snack products made of cereals; Snack products made principally of cereals; Snacks manufactured from cereals; Vermicelli (noodles); Halvah; Pasta; Pasta containing eggs; Pasta products; Boiled sweets; Sweet pickle (condiment); Ready-to-eat puddings; Extruded food products made of wheat; Snack  foods made of wheat; Snack foods made of whole wheat; Wheat flour (‘Applicant’s Goods’)
Trade Mark:	AHMED KARACHI HALWA MERCHANT	(‘Trade Mark’)
Endorsements	Convention priority claimed: 24 June 2015, United States of America. Convention priority claimed: 24 June 2015, Canada. Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

2.  I note that the application claims a convention priority date of 24 June 2015, however this is the same day as the lodgement in Australia, so the relevant priority date is 24 June 2015 regardless.  Following the advertisement on 28 July 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 21 September 2016.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 26 September 2016. The SGP raised grounds of opposition under ss 44 and 62(b) of the Act. The Applicant filed a Notice of Intention to Defend on 24 October 2016.

Evidence

3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 30 January 2017.  This evidence consists of a declaration made on 21 January 2017 by Ammad Sheikh, the director of the Opponent, with Exhibits 1 to 9 (‘Sheikh Declaration’).

4.  The Applicant filed Evidence in Answer (‘EIA’) on 5 May 2017.  This evidence consists of a declaration made on 3 May 2017 by Waheed Zafar, the director of the Applicant, with Exhibits WZ1 to WZ22 (‘Zafar Declaration’). 

5.  The entirety of the Zafar Declaration, including publically available information such as the result of trade mark registry searches, is described as ‘Strictly Confidential’.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (in that case from the then opponent) stated:

The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

[1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].

6.  The Opponent filed Evidence in Reply (‘EIR’) on 10 July 2017.  This evidence consists of a declaration made on 10 July 2017 by Max Steinhausen a lawyer engaged with IP Service International Pty Ltd who is assisting the Opponent with its opposition, with Exhibit 1 (‘Steinhausen Declaration’).  Much of the Steinhausen Declaration is in the nature of submissions and will be treated as such.

7.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities at that time.  By letter issuing from IP Australia on 22 August 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  Neither party chose to file any submissions in this matter.

8. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

The Opponent

9.  The Opponent is a company, established in 1952 in the Islamic Republic of Pakistan. 

1. The Opponent is the registered owner of the trade mark set out below (‘Opponent’s Trade Mark’). 

Number	Trade Mark	Priority Date	Goods
1573277	7 August 2013	Class 29: Fruit preserves; Jelly crystals; Vegetable preserves; Low sugar jams; Mixed pickles; Pickles; Relishes (pickles); Canned fruits; Canned meat; Canned vegetables Class 30: Natural starches for culinary purposes; Kheer mix (rice pudding); Mixes for making puddings; Pudding powders; Puddings in powder form; Rice puddings; Ribbon vermicelli; Vermicelli (noodles); Halvah; Spice mixes; Vegetable pies; Fruit vinegar; Curry spices; Vinegar; Food pastes (spices); Cooking sauces; Spices; Tomato ketchup; Sauces in a pouch; Spicy sauces; Curry sauces; Chutneys; Chutneys (condiments); Tomato based sauces Class 32: Fruit squashes; Cordials; Non-alcoholic beverages; Syrups for beverages; Syrups for lemonade

1. The Sheikh Declaration contains the following claims/statements:

   ·     The Opponent has sold its goods to Australian distributors since 2007, including various sub-continental foodstuffs such as pickle, curry powder, masala powder and chili powder.  It has at least 4 distributors, located in different states.  

   ·     The Opponent has advertised its products using the Opponent’s Trade Mark since at least 2005, worldwide through the Opponent’s website and later through its Facebook page.

   ·     The Trade Mark contains the terms ‘Karachi Halwa Merchant’.  Karachi refers to a town in Pakistan, Halwa (also spelt halva) refers to a number of dense, sweet confections served in various parts of the Middle East, South Asia and parts of Africa and Europe, being food distributed by the Opponent.

2. The Steinhausen Declaration (other than the material that is treated as submissions) contains the following claims/statements:

   ·     The terms ‘Karachi Halwa Merchant’ in the Trade Mark are used by the Applicant in a minimalist, descriptive manner, with the predominant element by far being ‘Ahmed’.  The manner of use of the Trade Mark is so similar to the Opponent’s Trade Mark that consumers of the relevant goods are likely to be confused.

   ·     The Evidence in Answer is insufficient to show that the Applicant’s use of the Trade Mark in Australia commenced before the Opponent’s use of the Opponent’s Trade Mark.   

The Applicant

1. The Applicant is a company, established in 1979 in the Islamic Republic of Pakistan.

2. The Zafar Declaration contains the following claims/statements:

   ·     The Applicant was established as a result of the separation of several combined family businesses including the Opponent.  It is one of the leading food processing companies in Pakistan and manufactures numerous food products including but not limited to halva, jams, spices, pickles, juices and canned foods.  It is associated with the well known food brands Naurus, SunDip, Lazzat and Chatkhaar.

   ·     The Applicant has been exporting its goods to Australia since about 2009.  The Applicant first used the Trade Mark in 2009 in relation to Habshi Halva, Karachi Halva, Sohan Halva, Multani Halva, Gulab Jamun, Kala Jamun and Dkaha Chum Chum.  It has continuously used the Trade Mark in Australia since that date through two distributors.  It does not use offer its Halva and Gulab Jamun products under any other trade mark.

   ·     The Applicant has promoted its product in Australia by attending the 2016 Melbourne Food Trade Fair in which it promoted products under its various marks including the Trade Mark.

   ·     The Applicant is the owner of the website which it has used since 2002 to display its products, including products sold under the Trade Mark.

3. The Zafar Declaration contains a bill of landing that purports to show the shipment of products under the Trade Mark in 2009 and 2010.  It also provides photos and a catalogue displaying the manner of use of the Trade Mark and that it is applied to products including Halva, Gulab Jamun, Desi Ghee and Pheni.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 44 and 62 of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

2. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is 24 June 2015 (‘relevant date’), being the both the filing date of the application in Australia and the convention priority date.[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32], see also Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Discussion

Section 44

1. The relevant provisions of the Act with respect to the s 44 ground are reproduced below:

Section 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)it 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.

1. (…)

1. 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.

2. 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.

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.

1. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

2. In the event that all of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application if the Registrar is satisfied that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark, pursuant to ss 44(3) and 44(4) of the Act.

3. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark, which is registered for various foodstuffs including halvah, vermicelli, pickles and various dessert products.  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  The Trade Mark is sought to be registered for various foodstuffs including halvah, vermicelli, pickles and various wheat and dessert foodstuffs.  The first and third requirements are satisfied. 

Substantially identical or deceptively similar

1. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 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.[5]

   [5] (1963) 109 CLR 407, [12].

2. The Trade Mark and the Opponent’s Trade Mark are set out below:

AHMED KARACHI HALWA MERCHANT              

1. On a side by side comparison there is a clear difference between the respective trade marks, being the addition of ‘Karachi Halwa Merchant’ to the Ahmed element in the Trade Mark and the addition of the words ‘Estd. 1952’, ‘foods’ and ‘product of Islamic Republic of Pakistan’ to the Ahmed element in the Opponent’s Trade Mark.  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

2. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   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 [trade mark].[6]

   [6] Ibid [13].

1. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[7] at [49]; Australian Woollen Mills[8] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[9] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[10] at 594 – 595.

   Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[11]

   [7] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [8] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [9] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

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

   [11] [2012] FCA 1022, [38]-[46].

2. In the present case, the essential feature of each of the marks is the word ‘ahmed’ and I consider it likely that each of the marks would be recalled and orally referred to by or by reference to that word. While both the Trade Mark and the Opponent’s Trade Mark contain various additional words, each of those words are descriptive, either of the product sold or the location (or date of establishment) of the owner. Allowing for imperfect recollection, I find that by reason of the presence of the word ‘ahmed’ and the limited capacity of the other elements in the Trade Mark to distinguish it from the Opponent’s Trade Mark, there is a real, tangible danger that a number of persons will be ‘caused to wonder’ whether the goods offered by the Applicant under the Trade Mark and the Opponent under the Opponent’s Trade Mark come from the same source. The Opponent has established the ground of opposition pursuant to s 44(1). It is then necessary to consider whether the Registrar should accept the application on the basis of ss 44(3) or 44(4) of the Act.

Subsection 44(4): prior continuous use

1. Subsection 44(4) gives the Applicant the option of overcoming a finding under s 44(1) through the provision of evidence showing that it continuously used the Trade Mark for a period beginning before the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

2. In the present case the priority date for the registration of the Opponent’s Trade Mark is 7 August 2013.

3. The EIA provides evidence which shows that the Applicant on 30 December 2009 shipped a variety of its products to Australia.  These included various products from its halva range as well as gulub jamun.  The EIA also provides evidence that the Applicant continuously exported its products to Australia between 2009 and 7 August 2013, including halva and gulub jamun.  While the EIA does not provide photographs of the products exported to Australia between 2009 and 2013, I am satisfied on the basis of the Zafar Declaration that the halva and gulub jamun offered by the Applicant display the Trade Mark, that the Applicant has continuously used the Trade Mark for halva and gulub jamun since before 2009, and that the Applicant does not offer halva and gulub jamun under any other mark.  As such, on the balance of probabilities, I find that the Applicant has continuously used the Trade Mark (with alterations or additions that do not substantially affect the identity of the Trade Mark) from a period beginning before the priority date for the registration of the Opponent’s Trade Mark to the relevant date, in respect of the similar goods.

4. I find that the Opponent has failed to establish the ground of opposition pursuant to s 44 of the Act.

Section 62

1. Section 62 of the Act is reproduced below:

   62 Application etc. defective etc.

   The registration of a trade mark may be opposed on any of the following grounds:

   (a) that the application, or a document filed in support of the application, was amended contrary to this Act;

   (b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

   Note: For file see section 6.

2. The Opponent does not rely on the ground under s 62(a). The ground under s 62(b) of the Act is particularised in the SGP as follows:

   The applicant has relied upon Section 44(4) of the Trade Marks Act 1995. The opponent opposes the application to register trade mark application no. 1702543 on the grounds that the supporting documents filed in evidence of Section 44(4) of the Trade Marks Act 1995 are defective. The opponent contradicts that the supporting documents provide sufficient proof for acceptance based on Section 44(4) of the Trade Marks Act 1995.

3. I note that s 62(b) of the Act requires that I find that the evidence or representations filed were false in material particulars (emphasis added). It is not sufficient, as set out in the particulars, that such documents be ‘defective’ or do not ‘provide sufficient proof for acceptance’. I have reviewed the evidence filed by the Applicant in support of its prior continuous use of the Trade Mark at the examination stage. While less extensive than the EIA provided in this opposition, I do not find any basis to conclude that the documents (or representations made therein) were false in material particulars. In particular given my findings in respect of the s 44 grounds made above, it cannot be said that the Applicant represented falsely to the Registrar that it had engaged in continuous use of the Trade Mark in Australia prior to the priority date of the Opponent’s Trade Mark. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62(b).

Decision

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade Mark application no. 1702543 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Nicholas Smith

Hearing Officer

Oppositions and Hearings

8 August 2018