Opposition by Agha Juice Sydney Road Pty Ltd and Muhammad Hussain to registration of trade mark application 1904901 (29, 32) – AGHA JUICE HOUSE – in the name of Zahra 15 Pty Ltd

[2020] ATMO 187

TRADE MARKS ACT 1995

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

Re:Opposition by Agha Juice Sydney Road Pty Ltd and Muhammad Hussain to registration of trade mark application 1904901 (29, 32) – AGHA JUICE HOUSE – in the name of Zahra 15 Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Beena Rezaee Legal & Migration Applicant: Y Intellectual Property
Decision:	2020 ATMO 187 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 58 and 60 considered – neither established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Agha Juice Sydney Road Pty Ltd and Muhammad Hussain (together ‘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 Zahra 15 Pty Ltd (‘Applicant’): 

Application Number:	1904901
Filing Date:	8 February 2018
Goods:	Class 29: Milk Shakes Class 32: Fresh Fruit Juices; Fresh Vegetable Juices (‘Applicant’s Goods’)
Trade Mark:	AGHA JUICE HOUSE	(‘Trade Mark’)

1. Following the advertisement on 5 July 2018 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 1 August 2018.  The Opponent then filed a Statement of Grounds and Particulars on 22 August 2018, later rectified by this office (‘SGP’). The SGP raised grounds of opposition under ss 58 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 25 September 2018.

   Evidence

2. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 21 December 2018 by Muhammad Hussain, Director of Agha Juice Sydney Road Pty Ltd which attaches various documents as pages to the Declaration (‘Hussain 1’).

3. The Applicant filed the following evidence in answer:

   ·Declaration made on 13 March 2019 by Zainab Bibi, the Director of the Applicant, with Annexures AR-1 to AR-8 (‘Bibi declaration’).

4. The Opponent filed the following evidence in reply:

   ·Declaration made on 3 June 2019 by Muhammad Hussain with Annexures R1 to R8 (‘Hussain 2’).

5. The entirety of the evidence filed by the Applicant (and the evidence in reply by the Opponent), including publicly available information such as the public use of the Trade Mark, is claimed to be 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 in relation to an 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. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then that disclosure has arisen by that party not specifically identifying that information as sensitive.

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.  By letter issuing from IP Australia on 11 July 2019 the parties were notified that as a hearing had not been requested 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 three months from the date of the letter to file any written submissions upon which they wished to rely.  The Opponent filed written submissions on 12 October 2019 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 14 October 2019 (‘Applicant’s Submissions’). 

8. I note that the Opponent’s Submissions at 2.17, 2.18 and 2.26-2.33 make numerous claims regarding an unnamed third party owner of the Trade Mark that are unsupported by any evidence properly filed in the proceeding.  Equally paragraphs 2.34-2.35 appear to be an attempt to introduce the s 41 ground of opposition into this proceeding despite it not being raised in the SGP.  In the absence of any actual evidence or an application to amend the SGP, these submissions will be disregarded.

9. 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

10. The Opponent operates a juice bar business in Brunswick, Victoria.  

11. Hussain 1 consists of in essence, a series of documents that are asserted to support the Opponent’s grounds of opposition.  This is done without providing any narrative context to the establishment of the Opponent and its business.  I have attempted to summarise the evidence as best I can below:

    ·     The Opponent was incorporated on 13 May 2017 and on 23 October 2017 obtained a certificate from Moreland City Council to operate a juice bar on Sydney Road, Brunswick trading as Agha Juice Bar.  The Opponent then proceeds to provide a series of bank statements as well as a series of invoices from suppliers.  Absent some narrative it is difficult to determine their relevance other than indicating that the Opponent purchased milk and other business supplies from 20 October 2017 onwards.

    ·     The Opponent also provides a single Yelp review from 2018 and what is purported to be a comparison between the logo under which the Opponent operates (‘Logo’) being the words ‘Agha Juice Sydney Road’ in a distinctive font surrounded by fruits and milkshakes and one that the Applicant purportedly operates under.  The Logo is reproduced below:

    ·     Hussain 1 also refers to additional documentation, including photos of the Opponent’s Logo, shopfront, tax return, menu and promotional material but none of that material has been filed with the Registrar. 

12. I would like to make some general comments about the nature of evidence in Hussain 2.  The Opponent is legally represented and to the best of my knowledge Mr Hussain is not legally trained.  The evidence in Hussain 2 is replete with submissions and opinions regarding the operation of trade mark law that are unnecessary, unhelpful and strongly suggest that the evidence was drafted by legal representatives and signed with little or no consideration of whether this was evidence the particular declarant could properly have given.  This significantly affects my perceptions of the reliability of this evidence.  Mr Hussain is a lay witness who can only give evidence as to facts and I would not expect a lay witness to provide (as Mr Hussain does) opinions regarding whether ‘the likelihood of deception or confusion is real and tangible’ or that an action ‘would give rise to a cause or claim in tort for damages in passing off’. 

13. Furthermore an attempt to ‘convert’ submissions into evidence by including the words ‘my lawyers have told me’ does not assist a party.  The Opponent has had the opportunity (and has taken that opportunity) to provide submissions in this matter and to the extent that Hussain 2 contains submissions, rather than direct factual evidence, that material has been disregarded.

14. The relevant and factual claims/statements in Hussain 2 can be summarised as follows:

    ·     The Opponent has used the Logo to advertise its Juice Bar business since 19 September 2017, when it published the Logo on its Facebook page.  The Opponent opened its Juice Bar business on 28 October 2017.

    ·     The Opponent’s business is based in Melbourne and has a wider exposure to the public than the Applicant’s business.  The Opponent plans to expand its business in future and considers it unconscionable that the Applicant may be permitted to register the Trade Mark.

15. The Annexes to Hussain 2 indicate that since 19 September 2017 the Opponent operated a Facebook page under the name AGHA JUICE SYDNEY ROAD which displayed its Logo and on 28 October 2017 made a statement on that page stating that they were now open.  The Opponent’s premises prominently display signage featuring the Logo or a figurative mark containing the words AGHA JUICE SYDNEY ROAD.  The Opponent’s Facebook page extracted on 30 May 2019 gives it a rating of 4.5 out of 5 as rated by 68 people and its Zomato page contains 9 reviews.  The Opponent does not provide any evidence of sales made prior to the date the Trade Mark was applied for, amount spent on advertising, or any third party measurement of the reputation held by the Opponent in the marketplace other than the small number of online reviews.

    The Applicant

16. The Applicant is an Australian company that operates a juice bar business in Blair Athol, South Australia.  

17. The relevant claims/statements in the Bibi declaration can be summarised as follows:

    ·     The declarant and her husband in 2016 decided to open a juice bar selling juices and milkshakes, under the name ‘Agha Juice’ which is a popular name associated with juice bars in the Declarant’s native Pakistan.  Agha is an honorific title for man used in Pakistan.

    ·     The Applicant registered the business name AGHA JUICE SUNSHINE on 3 October 2017 in Victoria and then decided to relocate to South Australia.  It registered the business name AGHA JUICE HOUSE in South Australia on 27 October 2017.  It launched a Facebook page to promote its business on 14 November 2017 and opened for business on 31 December 2017. 

    ·     The Declarant was not aware of the Opponent or its business at any time prior to the launch of its AGHA JUICE HOUCE business.

    Grounds of Opposition, Onus and Standard of Proof

18. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 58 and 60 of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

19. 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 8 February 2018 (‘relevant date’), being the priority date of the application in Australia.[4]

    Discussion

    [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

    [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 Trade Marks Act 1995 (Cth) s 29(1).

    Section 58 – Applicant not owner of trade mark

20. Section 58 of the Act is reproduced below:

    Section 58. Applicant not owner of trade mark

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

    Note:For applicant see section 6.

21. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors[5]. This is contrary to the Opponent’s Submissions which appear to suggest that the Applicant must establish ownership for the purposes of s 58; this is not correct as the burden rests on the Opponent to establish its case. These are:

    · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[6]

    · that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[7] and

    ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[8]

    23.     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.[9]

    [5] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

    [6] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

    [7] Re Hicks’ Trade Mark (1897) 22 VLR 636.

    [8] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

    [9] (1963) 109 CLR 407, 414.

22. The ground based on s 58 of the Act was particularised in the SGP as follows:

    Agha Juice Sydney Road Pty Ltd (AJSR) has been using the name 'Agha Juice' to sell milkshakes (class 29) and fresh fruit and vegetable juices (class 32) since at least the incorporation date of the company on 30 May 2017. Zahra 15 Pty Ltd's priority date is only 8 February 2018. Additionally, the brother-in-law of a director of AJSR has operated a juice bar providing the same products using the name 'Agha Juice' since 2015 in conjunction with an AJSR director. Therefore, Zahra 15 Pty Ltd does not have first use. We emphasise that AJSR's use of the name 'Agha Juice' does not need to be registered to be recognised for its first use.

23. I note that there are numerous aspects of the particulars above that are not supported by or are contradicted by the later evidence of the Opponent, not least that there is no evidence of Mr Hussain’s brother in law operating a business using the name Agha Juice and that Agha Juice Sydney Road Pty Ltd did not start trading until well after its incorporation date of 30 May 2017.  

24. Having considered the evidence, I am not satisfied that the evidence shows that the Opponent has used the word Agha Juice solus as a trade mark for its business prior to the first use of the Trade Mark by the Applicant (being the Facebook post advertising the imminent opening of its business).  Rather the evidence shows that the Opponent has used the Logo and the mark AGHA JUICE SYDNEY ROAD instead.  Neither of these marks were particularised in the SGP, nor are they substantially identical to the Trade Mark as neither of them reproduce the ‘house’ element and each of them contain extra material, albeit primarily descriptive, that further differentiates them from the Trade Mark.  I am not satisfied that there is a total impression of resemblance that emerges from the comparison.

25. As the Opponent has failed to established the first factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58 of the Act.

    Section 60

26. Section 60 of the Act is reproduced below:

    Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

    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.

27. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[10]

    [10] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

28. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[11]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[12]

    [11] [2000] FCA 1335, [81].

    [12] (1992) 33 FCR 302, 343.

29. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[13]

    [13] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

1. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[14] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[15]

   [14] (2000) 50 IPR 1.

   [15] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

2. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[16]

   [16] Qantas Airways Limited v Edwards [2016] FCA 729, [142].

3. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   Agha Juice Sydney Road Pty Ltd has been using the name 'Agha Juice' for provision of goods under class 29 and 32 since at least the company incorporation date of 30 May 2017. Since then they have built a reputation for the provision of their milkshakes and fruit and vegetable juices under the name of Agha Juice Sydney Road. If Zahra 15 Pty Ltd was to successfully register 'Agha Juice House' as a trade mark for the provision of the same goods, it is likely to cause confusion between the two shops as it contains the main two words of 'Agha Juice.'

4. I repeat the criticisms of the Opponent’s particulars made in paragraph 25. The evidence indicates that at the relevant date, being 8 February 2018, the Opponent operated a single store that had been trading for under 4 months. No evidence of sales or advertising expenditure is provided and any evidence of third party reputation in the form of Facebook likes or Zomato reviews is minimal. I am not satisfied on the evidence before me that the Opponent had, before the relevant date, acquired any reputation in Australia for Agha Juice or any similar mark, sufficient for the requirements under s 60(a) of the Act.

5. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

   Decision

6. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1904901 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.

   Costs

7. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   8 December 2020