Nina Bhavnagri v Parle Products Pvt Ltd

[2010] ATMO 97

TRADE MARKS ACT 1995

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

Re:Opposition by Nina Bhavnagri to applications under section 92 of the Act by Parle Products Pvt Ltd to remove trade mark number 732528(30) - PARLE - in the name of Nina Bhavnagri

Delegate:	T. E. Williams
Representation:	Opponent: written submissions contained in her evidence Applicant: Geraldine Rimmer, solicitor and trade marks attorney, IP Gateway, patent attorneys
Decision:	2010 ATMO 97 S 92 opposition: trade mark not used within relevant three year period. No case made for retaining registration. Trade mark to be removed from register, costs (restricted as per the scale) awarded against opponent

Background

1. Nina Bhavnagri (“the opponent”) is registered as the owner of trade mark 732528 (“the registration”).  The registration is for the word PARLE, for goods listed as “cereals, bread, pastry, cakes and biscuits, and confectionery”.

2. On 14 October 2008, Parle Products Pvt Ltd (“the applicant”), an Indian company, applied to remove the registration on grounds under s 92(4) of the Trade Marks Act 1995 (“the Act”). That removal application specifies both of the two separate grounds allowed by that provision. The opponent has protested, vigorously and with justification, that the first of those grounds, under s 92(4)(a), could not possibly be established. However, the applicant has ultimately pressed only the more specific ground under s 92(4)(b), that the trade mark PARLE (“the trade mark”) was not used by the opponent in Australia in the three year period ending 14 September 2008 (“the relevant period”).

3. Under s 100 the burden is on the opponent to establish, at first instance, that she has used the trade mark within that period and in respect of relevant goods; or, failing this, that there are other relevant circumstances, including appropriate reasons why it has not been so used.[1]  There is no need to deal with those contingencies: the evidence shows that any failure to use the trade mark during the relevant period would be due only to the ordinary circumstances of the confectionery and biscuit trade, specifically, routine or predictable difficulties in arranging supply.  Thus, in the present matter the question is simple:  does the opponent’s evidence establish that she had used the trade mark, in the relevant three-year period, for relevant goods, or not?

   [1] The relevant circumstances are set out in s 100(3)

4. Much of the evidence filed by the parties is but a distraction from that question. The applicant, from the evidence, believes that the opponent has wrongly adopted, in Australia, a trade mark that is apparently well-known, at least now, in India. Moreover, it emerges that at least part of the sales that the opponent made (ending before the start of the relevant period) were of products obtained from the applicant. That aspect of the dispute between the parties, however, would have to be pursued through the courts as it is not a matter that can be dealt with under s 92. [2] The question under s 92 is not as to the rightness or wrongness of the use that the opponent has allegedly made in Australia; it is limited to the bona fides of any such usage, within the relevant period, as commercial use. In other words, has the use been genuine, commercial use, as opposed to a sham, feigned or other non-trading use? [3]

   [2] Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd [2009] FCAFC 7: s 92 does not involve an element of honesty or subjective good intentions.

   [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCR 166

5. To make a long story short, I have found that the evidence does not show that there has been commercial use of the trade mark by the opponent within the relevant period, and decided that the registration is to be removed.  I will now explain why I have reached those conclusions.

   Evidence, Hearing and Findings

6. The parties have filed, respectively, evidence in support of the opposition, in answer to it, and evidence in reply.  After some initial confusion and uncertainty, both parties were satisfied that they had received a copy of the material on which the other would rely and the opposition was thereafter listed for me to hear and decide, under delegation from the Registrar of Trade Marks.  The hearing was set down for Canberra, on 26 June 2010.  The applicant was represented by Geraldine Rimmer, a solicitor and trade marks attorney, of the patent attorney firm IP Gateway.  Ms Rimmer appeared by telephone.  The opponent has relied on her written representations, which form part of her evidence in support and in reply. 

7. It will help to better understand this dispute if I set out, in very general terms, the earlier history of the opponent’s adoption and usage of the registered trade mark.  In doing so, my aim is to give only a broad view, by way of background.  I do not intend to pass comment on what each party asserts is the wrongful behaviour of the other and I have therefore omitted reference to, in particular, some of the incidents that the opponent relies on to justify her harsh criticism, in her evidence, of the applicant as unscrupulous, unhelpful and, ultimately, untrustworthy. 

8. The opponent’s evidence would establish that, whatever might have been the initial source of product to which the trade mark was applied in earlier times, she had, in 1996, sought to obtain goods from the applicant.  By 1999 she had succeeded in introducing biscuits bearing the trade mark PARLE CHEESLINGS into Coles supermarkets and was by then dependant on the applicant for supplies of product.  The trading relationship soured at that point, one apparent bone of contention being that the trade mark registration continued to stand in the name of the opponent. 

9. For the purposes of deciding if the opponent has met her initial burden, the relevant period is the three years ending on 14 September 2008.  However, beyond the point where relations between the parties soured, in 2000, the opponent’s evidence is equivocal at best.  The thrust of Ms Rimmer’s submission is that, while voluminous, the relevant part of the opponent’s evidence consists of unsubstantiated assertions and that the evidence is, at times, self-contradictory. 

10. The documentation relating to the relevant period is, as Ms Rimmer argued, long on assertion and short on objective proof.  Earlier parts of the opponent’s evidence in support relate to the history which I have outlined above, prior to 2000.  Subsequently, Exhibit 20 of the evidence in support is said to establish “customer needs”.  It is a copy of four handwritten lists that are barely legible.  There does not appear to be a single instance of the word PARLE among items that include words such as “Smiths potato chips”, “Mars Bars”, “Lolipops (plain)” (sic) and “Chup a chups”.  If the word PARLE is present, it is hard to know what it would signify, since the purpose of the documents is not obvious.  In any case, an apparently later hand has amended three of the four the documents to ascribe dates to them.  Even if I assume that the lists are orders of goods to be supplied by the opponent, and gloss over the irregularity of this alteration or addition of dates, none of the ascribed dates falls in the relevant period. 

11. The opponent had, in the 2008 Sydney Yellow Pages, a phone number listed as being that of both “Parle Cheestings (sic) and Confectionery” and “Parle Cheeslings, Carromex” but it would appear that these are the names of a business that, if it uses trade marks at all in relation to goods, uses trade marks such as “Chup a chups” and “Mars bars”.  Perhaps, taking the Yellow Pages listing together with the trend of Exhibit 20, I can take it that during the relevant period the opponent traded in goods, by way of being a distributor.  As to any trade in goods bearing the trade mark, there is, so far as I can discover, not one single instance of a document that is cogent proof of the sale, or offer for sale, of cereal, biscuit or confectionery products by the opponent or the Carromex business(es) under the trade mark PARLE during the relevant period.

12. The closest the opponent comes to showing her own use of the word PARLE as a trade mark is Exhibits 23 and 23a, showing that the opponent had received, in August 2008, samples of a product, those samples themselves to be used to locate, within Australia, a potential manufacturer.  The evidence is silent as to what brand was intended to be carried by the product, save as to a copy of the back of the packet.  This shows a small white band reading “Carromex Pty Ltd[4] Registered Parle Trade Mark” followed by the opponent’s business address.  Tellingly, as Ms Rimmer noted at the hearing, those documents form part of a chain of emails that ends with one dated December 11 2008, in which the opponent herself says, to a potential supplier:

    My buyer wants to be sure that we are going to enable the manufacture of the Parle range of biscuits.

    [4] Carromex Pty Ltd is a company with which the opponent is or was apparently involved.

13. Properly seen, this evidence weighs against the opponent.  This is evidence neither that goods were in transit to meet an existing order[5], nor that existing goods had been offered for sale under the trade mark.  Nor does such evidence demonstrate “an objectively ascertainable commitment to offering to supply”[6] the goods in question under the trade mark PARLE.  It establishes that, even after the end of the relevant period, there still existed both uncertainty as to an order on the part of an unnamed potential customer and uncertainty of any available goods to meet that customer’s needs.  Of course, issues involving samples can sometimes be vexed.  Let me therefore say that perhaps the circumstances set out by the emailed correspondence might amount to what McGarvie J called, in Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, “a trading channel which in a business sense had already been opened”. However, the opponent, in the evidence in reply, adds yet another level of uncertainty. She brings into evidence a copy of the front of the packet in question. The goods are marked “Australian owned Australian made” but the trade mark is PARIE, not PARLE[7].  This resonates with her evidence as to information shown on the website carromex.com.  That evidence in turn suggests that the owner of the website is (or was, at the time the evidence was prepared) both Australian and also the source of biscuits bearing the trade marks PARLE, PEARL and PARIE.  The meaning of the words “Parle is our registered trade mark” shown on the webpage (my emphasis added) is not entirely clear since the registered owner of the trade mark is, obviously, an individual, but nothing turns on that aspect. 

    [5] Compare YANX trade mark (1951) 1B IPR 504.

    [6] Buying Systems (Australia) Pty Ltd v Studio Srl, (1995) 30 IPR 517

    [7] For the sake of completeness, I find that the differences between those two trade marks are substantial.  Use of PARIE would not be within the operation of s 100(2)(a).

14. At another level, the opponent relies on Exhibit 26, an invoice which shows that in June 2005 an Indian company had exported from India to Sydney goods bearing trade marks that included both PARLE and, inter alia, MAGGI NOODLES. The opponent has been instrumental in causing the seizure, at Australian ports, of Indian-made PARLE products sold by the applicant. This she has done quite legitimately under the Customs seizure provisions of Part 13 of the Act. She has consented to the release of those goods on payment to her of a 5% commission. No aspect of the usage of the word PARLE as a trade mark on the invoice in question, or on any others that resulted from similar transactions, is therefore attributable to the opponent.

15. The opponent’s evidence in reply to the applicant’s evidence in answer is mostly not germane to the issue under s 92. The opponent has used this part of the evidence largely to justify her dealings with the applicant in terms of fairness and propriety, and to counter the attempts by the applicant to do likewise. The opponent criticises the applicant’s products and business methods. Her focus is primarily on events in 1990 and 1991 and she tries to establish that she, rather than the applicant, was the first user of the trade mark in Australia, and that she has worked hard to build up the trade mark’s reputation. While I accept that the first of these propositions may be the case, and that the second of them is undoubtedly so, they have nothing to do with the essential question here. 

16. Ultimately, it is clear that the opponent has misunderstood a great deal about the present opposition process.  She sees the process as one whereby “Parle India are using their heavy handed clout to persuade IP Australia to transfer the ‘Parle’ name to them”.  Rightly seen, however, the opponent, having registered the trade mark, has simply failed to use it within the relevant three-year period.  Her registration is thus potentially forfeit. 

    Discretion not to remove;

17. Section 101 relevantly provides:

    Determination of opposed application—general

    101.(1) Subject to subsection (3) and to section 102, if:

    (a) the proceedings relating to an opposed application have not been discontinued or dismissed; and
    (b) the Registrar is satisfied that the grounds on which the application was made have been established;

    the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

    (2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

    (3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

18. Thus, under sub-section (3), I have the discretion to allow a trade mark registration to remain on the register if a suitable case is made for doing so.  The reasons for this need not be exceptional.[8]  However, there is simply no basis on which the discretion could reasonably be applied in this matter.  The opponent has not satisfied me that, aside from an abortive flurry of sales via Coles supermarkets in 2000, the trade mark has been used to any significant extent.  The sales via Coles were themselves of quite small amounts for a supermarket chain and the opponent has not otherwise quantified her sales over time.  The obvious inference is that, aside from a brief period ending in 2000, she has had only, at indeterminate dates outside the relevant period, a limited number of small stores selling her products, in small and/or infrequent amounts.  The opponent has argued, in her declaration, that I should take a partisan role and act to defend an Australian business simply because she feels this would be good policy.  I cannot agree that this is so.  The retention of a trade mark that has not been used for a period of three years must rest on something more concrete than sympathy for a small business, Australian or otherwise.  I find it particularly inappropriate to do so where the opponent, despite protesting about confusion in the market, has been prepared to tolerate the import of the applicant’s goods into Australia provided that she can glean 5% of all such sales by way of what she describes as an arrangement for “authorised use”. 

    [8] Kowa Co Ltd v NV Organon (2005) 66 IPR 131

19. Such use is clearly not the authorised use envisaged by the Act, which hinges on “control” of the usage. Briefly, s 8(3) and (4) provide that:

    ·     if the owner of a trade mark exercises quality control over goods or services dealt with or provided in the course of trade by another person;

    or if

    ·     a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and the owner of the trade mark exercises financial control over the other person’s relevant trading activities;

    the other person is taken to use the trade mark in relation to the goods or services under the control of the owner.  While s 8(5) ensures that those provisions are not exhaustive, the opponent’s actions are well short of anything that could reasonably amount to control of the opponent’s usage.

    Conclusion and costs

20. The necessary conditions for the removal of the trade mark have been established and those for its retention on the register have not.  I therefore direct that the trade mark be removed from the register after one month from the date of this decision.  If before the trade mark is removed from the register, the Registrar is served with a copy of a notice of appeal, I direct that the registration shall not be removed until either the court so orders or, otherwise, the appeal is withdrawn or discontinued.

21. I approach the question of costs with some hesitation.  In the evidence in support there is a handwritten note from the opponent asking that these not be awarded against her, if she does not succeed, as she cannot afford to pay the legal bills of a “huge company with huge expenses”.  The opponent therefore knew, when she filed her evidence in support, that costs were likely to be awarded against her if she failed in her opposition.  The only consolation I can offer to the opponent is that the scale of costs under the regulations is, as a matter of readily-understandable policy, very restricted; the amounts recoverable will not compensate the applicant for its actual costs in bringing about the removal of the opponent’s registration.  Having said that, since the applicant has requested an award of costs, and since it has succeeded in its removal application, I direct that the opponent pay the costs of the applicant to the extent set out in the scale in the regulations.

    T. E. Williams
    Hearing Officer
    Trade Marks Hearings
    29 September 2010