Opposition by Almma Holdings Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Suree Interfoods Co Ltd to remove trade mark number 1555063 (29) – AKETHAI and device - in the name of Almma Holdings Pty Ltd

[2022] ATMO 48

TRADE MARKS ACT 1995

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

Re:Opposition by Almma Holdings Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Suree Interfoods Co Ltd to remove trade mark number 1555063 (29) – AKETHAI and device - in the name of Almma Holdings Pty Ltd

Delegate:	Louise Tuohy
Representation:	Opponent: Self-represented Applicant: Paul Wyk, A.P.T. Patent and Trade Mark Attorneys
Decision:	2022 ATMO 48 Trade Marks Act 1995 (Cth) – application under section 92 – section 96 opposition to section 92(4)(b) application for removal in respect of all goods – use established for the goods - trade mark to remain on the Register

Background

1. Almma Holdings Pty Ltd (‘Removal Opponent’) is the registered owner of the following trade mark:

   Registration Number:             1555063

   Trade Mark:  (‘Trade Mark’)

   Filing Date:  2 May 2013

   Specification:  Class 29: Coconut cream     (‘Goods’)

   Endorsement:  The applicant has advised that the THAI characters appearing in the trade mark may be transliterated as AKE THAI and translated into English as FIRST/BEST THAILAND

2. Suree Interfoods Co Ltd (‘Removal Applicant’) applied on 22 March 2020 under the provisions of s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking removal of the Trade Mark.

3. On 28 April 2020 the Removal Opponent filed a Notice of Intention to Oppose the removal of the Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’) on 14 May 2020. On 31 July 2020 the Removal Applicant filed a Notice of Intention to Defend the removal application.

4. The Removal Opponent filed the following declarations as evidence in support and evidence in reply:

   • Declaration by Mohammed Eissa, Director of the Removal Opponent, made on 2 November 2020 with Exhibits A to G (‘First Eissa declaration’).
   • Declaration by Mohammed Eissa, made on 9 April 2021 with Exhibits A to B (‘Second Eissa declaration’).

5. The Removal Applicant filed the following declaration as evidence in answer:

   • Declaration by Jack Wattanaporn, Deputy Managing Director for the Removal Applicant, made on 8 February 2021 with Exhibits SW-13 to SW-17 (‘Wattanaporn declaration’). Exhibit SW-13 is a declaration by Jack Wattanaporn made on 1 October 2020 with Exhibits SW-1 to SW-12.

6. Both parties requested a hearing by way of written submissions. The Removal Opponent filed written submissions on 1 March 2022 and the Removal Applicant filed written submissions on 8 March 2022.

7. As a delegate of the Registrar of Trade Marks I have determined this matter with reference to the written material filed during these proceedings as outlined above.

   Legal Framework

8. Part 9 of the Act deals with removal of trade marks from the Register due to non-use. In the removal application the Removal Applicant nominated the ground under s 92(4)(b) of the Act.

9. Section 92(4)(b) of the Act provides:

   92  Application for removal of trade mark from Register etc.
   […]

   (4)  An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

   […]

   (b)  that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)  used the trade mark in Australia; or

   (ii)  used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   […]

10. For the purposes of s 92(4)(b) the relevant period is the three-year period ending on 22 February 2020 (‘Relevant Period’).

11. Pursuant to s 100(1) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b). The Removal Opponent can rebut the allegation by establishing that it used the Trade Mark in good faith in relation to the Goods in the Relevant Period.[1]

    [1] Section 100(3) of the Act.

12. In Woolly Bull Enterprises Pty Ltd v Reynolds,[2] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92 of the Act, namely it is ‘real, as opposed to token, use in a commercial sense’. Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[3] However, if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[4]       

    [2] [2001] FCA 261, [16].

    [3] Ibid [17].

    [4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

13. The burden of proof is the ordinary civil standard of the balance of probabilities.[5]

    [5] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

14. In accordance with s 101 of the Act, if grounds for removal are established, I may decide to remove the Trade Mark from the Register in respect of the Goods, or, if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.

    Discussion

15. In the SGP the Removal Opponent particularises its rebuttal of the s 92(4)(b) ground as follows:

    All particulars of Trademark no. 1555063 in the name of 'AKETHAI' have been in use according to its subclass requirements of 'Coconut Cream'.
    This trademark has been in use according to its subclass since 2013, and is currently in use.
    The trademark AKETHAI has been printed on labels for cans of Coconut Cream since 2013. This product labelled AKETHAI Coconut Cream has been sold across food outlet stores in Perth of Western Australia.
    The food outlet stores this product labelled AKETHAI Coconut Cream has been sold and is currently being sold are as follows; IGA supermarket stores, MCQ Supermaket stores, NP Supermarket stores, Spud Shed stores, Farmer Jacks Supermarket stores.

16. The First Eissa declaration provides the following copies of documents showing use of the Trade Mark in Australia:

    ·Exhibit F(a) provides copies of two tax invoices issued by the Removal Opponent to MCQ supermarket warehouse. The first tax invoice dated 27 April 2015 is an order for 500 cartons of coconut cream and 1100 cartons of coconut milk. The second tax invoice dated 1 May 2015 is an order for 5 cartons of coconut cream and 12 cartons of coconut milk.

    • Exhibit F(e) is a copy of the MCQ supermarket store catalogue advertising coconut cream and coconut milk products bearing the Trade Mark, dated November 2017.
    • Exhibit F(f) is a copy of the MCQ supermarket store catalogue advertising coconut cream and coconut milk products bearing the Trade Mark, dated June 2018.
    • Exhibit F(g) is a copy of the MCQ supermarket store catalogue advertising coconut cream and coconut milk products bearing the Trade Mark, dated August 2019.
    • Exhibit F(h) is a copy of the MCQ supermarket store catalogue promoting coconut cream and coconut milk products bearing the Trade Mark, dated December 2019/January 2020.

17. In assessing the above evidence, I note that the tax invoices issued by the Removal Opponent are not within the Relevant Period, however taking into account the quantity of goods ordered by MCQ supermarket warehouse it is entirely possible this stock was still being sold within the Relevant Period. The remaining Exhibits clearly show that coconut cream and coconut milk products bearing the Trade Mark were advertised and promoted in Australia through MCQ supermarket stores during the Relevant Period.

18. Nonetheless, the Removal Applicant claims that any use by the Removal Opponent during the Relevant Period was made in bad faith. The basis for this claim is that the Removal Applicant manufactured the goods, was responsible for the quality control of the goods and owns the copyright of the Trade Mark. In support of this claim Annex SW-8 is a copy of email correspondence between the parties in which the Removal Applicant made it clear to the Removal Opponent that it considered the Trade Mark to be its property.

19. While the claim to ownership of the Trade Mark by the Removal Applicant is noted, I find that it does not bear on the ultimate question under s 92(4)(b) of the Act. In Edward v Liquid Engineering 2003 Pty Ltd, Gordon J stated (with emphasis added):

    Having considered the evidence led, and submissions made, I was poised to answer that question in the affirmative and uphold the appeal, on the basis that "good faith" for the purposes of s 92(4) requires no more than genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions: see generally E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [187] - [192] (examining the meaning of "good faith" under related provisions of the TMA). However, during the course of the hearings it became apparent that what LE 2003 really wanted, and should have applied for in the first place, was the expungement of the registrations by Edwards under s 88 of the TMA on the basis that Edwards was not the owner of the unregistered marks: ss 52 and 58 of the TMA. I therefore delayed giving judgment in VID 934 of 2006 so that a separate application could be brought on that basis and the matters resolved together.[6]

    [6] [2008] FCA 970 [8].

20. The Full Court in in Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd upheld the above reasoning. [7]

    [7] [2009] FCAFC 7; 175 FCR 26; (2009) 79 IPR 437 [54] (Tamberlin, Sundberg and Besanko JJ).

21. As addressed by Gordon J[8] above, an action under s 92 of the Act is not the appropriate place to determine the ownership of a registered trade mark. That question must be litigated in an action for cancellation brought under ss 58 and 88 of the Act.

    [8] [2008] FCA 970 [8].

22. While the evidence indicates that the Removal Applicant has cogent arguments that the Removal Opponent is not the proprietor of the Trade Mark in Australia, in this case, I am concerned only whether the Removal Opponent has made genuine commercial use of the Trade Mark during the Relevant Period. I am satisfied that the Removal Opponent has made such use of the Trade Mark in Australia, notwithstanding that the Goods were sourced from the Removal Applicant in Thailand.

    Decision

23. I decide that the Removal Opponent has rebutted the allegation of non-use. I direct that trade mark registration 1555063 remain on the Register.

    Costs

24. It is usual for cost to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Applicant as allowed by Schedule 8 of the Trade Marks Regulations 1995 (Cth).

    Louise Tuohy
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    31 March 2022