Opposition by Grand River Enterprises Six Nations Ltd to registration of trade mark application number 1955363 (Classes 5, 29, 31, 34) – MOHAWK - in the name of Aphria Inc.
[2021] ATMO 155
•16 December 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Grand River Enterprises Six Nations Ltd to registration of trade mark application number 1955363 (Classes 5, 29, 31, 34) – MOHAWK - in the name of Aphria Inc.
Delegate: Blake Knowles Representation: Opponent: Andrew Sykes of counsel, instructed by Churchill Attorneys.
Applicant: Andrew Wiseman and Lena Balakrishnan of Allens.Decision: 2021 ATMO 155
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under sections 42(b), 43, 60 and 62A pressed by Opponent – no ground established – trade mark to proceed to registration.Background
This is a decision in the opposition by Grand River Enterprises Six Nations Ltd (‘Opponent’) to registration of trade mark number 1955363 (‘Application’). The Application was filed on 13 September 2018 by Aphria Inc (‘Applicant’) claiming a priority date of 1 August 2018[1] (‘Relevant Date’) for the trade mark MOHAWK (‘Trade Mark’) and goods:
[1] Priority claimed from Canadian Trade Mark Application Number 1912932.
Class 5: Cannabis related product, namely, oils; oils derived from cannabis; cannabis and marijuana; cannabis related products, namely oils, salves, concentrated pastes, tinctures, tablets and capsules, each containing cannabis; oils, salves, concentrated pastes, tinctures, tablets and capsules each containing resins and oils derived from cannabis; food additives or supplements for medicinal purposes; food additives or supplements for medicinal purposes containing cannabis; food additives or supplements for medicinal purposes containing derivatives of cannabis, namely resins and oils; topical skin creams, bar and liquid soaps, bath additives, bath herbs, bath oils, body creams, body oils, face and body lotions, face and body milk, face lotion, and skin care preparations each containing derivatives of cannabis; each of the aforementioned products for the relief of pain, for relaxation, for reducing stress and fatigue, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid; personal sexual lubricants; transdermal patches containing cannabis; oral sprays containing cannabis
Class 29: Oils and resins derived from cannabis for use as comestibles; cannabis related product, namely, oils for use as comestibles; oils derived from cannabis for use as comestibles; food products containing cannabis, cannabis resins and cannabis oils, namely butter
Class 31: Live cannabis plants; live marijuana plants; cannabis seeds
Class 34: Dried marijuana, dried cannabis; derivatives of cannabis, namely resins and oils; cannabis and marijuana for recreational use; smokers' articles, namely, smoking pipes, pouches for use with marijuana and cannabis, lighters for smokers, grinders for use with cannabis and marijuana, oral vaporizers for smokers
(‘Goods’)
As required by the Trade Marks Act 1995 (Cth)[2] the Trade Mark was examined. The Trade Mark was advertised for opposition purposes and the Opponent filed notice of its intention to oppose registration of the Trade Mark on 13 March 2020 and a statement of grounds and particulars (‘SGP’) on 9 April 2020. The Applicant filed a notice of intention to defend the Application from opposition on 9 July 2020.
[2] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The parties had the opportunity to file evidence in accordance with the timetable set out in reg 5.14. The Opponent filed Evidence in Support (‘EIS’) on 9 October 2020. The Applicant filed Evidence in Answer (‘EIA’) on 15 January 2021. The Opponent filed Evidence in Reply (‘EIR’) on 10 March 2021. Both parties also filed additional evidence.
Both parties requested to be heard and paid the relevant fee. I heard the opposition, as a delegate of the Registrar of Trade Marks, on 3 November 2021. The Opponent was represented by Mr Andrew Sykes of counsel, instructed by Mr Steven Borovec of Churchill Attorneys. The Applicant was represented by Mr Andrew Wiseman and Ms Lena Balakrishnan of Allens.
Grounds and onus
The SGP nominated grounds of opposition under ss 42(b), 43, 58, 60, and 62A. However, at the hearing, the Opponent chose not to press the s 58 ground.
The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[3] The rights of the parties are assessed as at the Relevant Date.[4]
[3] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Evidence
The following evidence was filed under reg 5.14:
EIS
Declaration of Donald Ferrigan, Purchasing Director of Opponent, made on 8 October 2020 with Exhibits DJF-1 to DJF-6.
EIA
Declaration of Patricia Holmes, Global Medical Affairs Director of Althea Company Pty Ltd, made on 18 December 2020 with Annexures A to D.
Declaration of Sarah Dixon, Solicitor of Chrysiliou IP, made on 15 January 2021 with Annexures A to H.
EIR
Declaration of Steven Borovec, attorney of Churchill Attorneys, made on 10 March 2021.
Declaration of Steve Williams, President of Opponent, made on 9 March 2021.
Applicant’s additional evidence
Declaration of Lena Balakrishnan, lawyer of Allens, made on 31 August 2021 with Exhibit LB-1.
Opponent’s additional evidence
Second declaration of Steven Borovec, made on 7 October 2021 with Exhibit SB-1.
EIS
Mr Ferrigan declares that the Opponent was founded in 1993 and is ‘proudly 100% owned by First Nations people of Canada’. Mr Ferrigan states that the Opponent sells tobacco products, mainly to the Canadian market, but also outside Canada including in Europe and Central and South America. Mr Ferrigan states that the Opponent has advertised for international partners on its website since 2017. Mr Ferrigan also states that retailers of the Opponent’s products sell products from their own websites, and such products can be purchased by Australians. Mr Ferrigan annexes a screenshot of the Opponent’s website on which the Opponent advertises for international partners, and a screenshot of a third party website which advertises the Opponent’s tobacco for sale.
Mr Ferrigan states that the MOHAWK brand used by the Opponent appeals to its customers because it conveys they are buying an authentic product based on North American knowledge and the values of traditional tobacco. Mr Ferrigan states that that the word ‘Mohawk’ has a well-known meaning in Canada and internationally. Mr Ferrigan explains that the Mohawk people of North America are “well known in Canada, the United States and internationally for the cultivation and use of plant products for medicinal and other uses. So called “traditional tobacco” is a plant material that has been well used by American Indians (including the Mohawk people) for use in ceremonies or for mental well-being and spiritual reasons”. Mr Ferrigan annexes an article from the National Native Network which “details the centuries old link between American Indians and traditional tobacco”.
Mr Ferrigan states that purchasers of cannabis products often also purchase tobacco products, and often from a single retailer. Mr Ferrigan notes that tobacco is often mixed with cannabis prior to smoking. Mr Ferrigan annexes to the declaration screenshots of the websites and which show that retailers sell tobacco products and paraphernalia that can be used by users of tobacco and cannabis.
Mr Ferrigan states that a consumer seeking a tobacco or cannabis product would believe that such a product bearing the MOHAWK brand would originate from a Mohawk person or a Mohawk controlled company.
Mr Ferrigan states that both the Opponent and the Applicant operate from the province of Ontario, Canada, and that the Applicant would have known that the Opponent sold smoking products under the MOHAWK brand in Ontario. Mr Ferrigan states that the Opponent should also have been aware of recent media attention, protests, and a Canadian Royal Commission regarding the issue of appropriation of indigenous intellectual property. Mr Ferrigan opines that the Applicant sought to register the Trade Mark understanding that it has no connection to an indigenous Mohawk person or business.
EIA
Ms Holmes declares that her company, Althea Company Pty Ltd (‘Althea’), is a licensed producer, supplier, and exporter of pharmaceutical grade medicinal cannabis. Althea currently operates in highly regulated medicinal cannabis markets including in Australia and the UK.
Ms Holmes states that Althea has a supply agreement in place with the Applicant to import medicinal cannabis finished products from Canada and supply these to Australian pharmacies. Ms Holmes explains that the cannabis industry in Australia is highly regulated, and distribution for recreational use is currently illegal. Ms Holmes provides some information regarding the process for obtaining a licence to supply cannabis, and the process for a person to obtain medicinal cannabis via a medical practitioner. Ms Holmes opines that medicinal cannabis and traditional tobacco products fall in different segments of the Australian market.
Ms Dixon declares that in her capacity as a solicitor of Chrysiliou IP acting on behalf of the Applicant, she conducted searches of the Australian and Canadian trade marks databases. Ms Dixon annexes her search results which indicate numerous trade marks for or containing the word Mohawk were filed and registered in both Australia and Canada over a long period of time. I note from the annexures that the last Australian registration for the word “Mohawk” solus has been registered from February 2016 for non-metallic flooring products (owned by a US company located in Georgia). Another Australian registration from 2013 for “Mohawk Cider” is registered for cider (owned by an Australian company located in Tasmania).
Ms Dixon declares that tobacco supply and sale in Australia is subject to strict regulation, and that tobacco products are not prescribed by medical doctors or sold in pharmacies. Ms Dixon also explains that medicinal cannabis is not subject to plain packaging and health warning laws applicable to tobacco.
Ms Dixon states that her research indicates that the word Mohawk is used in number of industries in Australia, without any apparent connection to the Mohawk people.
Ms Dixon provides dictionary definitions of the word Mohawk which indicate that it has several different meanings aside from being the name of a North American First Nations’ people, including a type of hairstyle and a US army aircraft.
EIR
Mr Williams declares that he is the President of the Opponent, and that he has also served as Chief of the Six Nations of the Grand River, the largest First Nations reserve in Canada and the only reserve in North America that has representatives of all six Iroquois nations – the Mohawk, Cayuga, Onondaga, Oneida, Seneca, and Tuscarora – living together.
Mr Williams states that while he does not contest that the word Mohawk has been used as a brand name over the years in both Australia, and Canada, he considers that such use is entirely inappropriate given it is the name of a First Nations people. Mr Williams declares that “wrongful appropriation of the word MOHAWK misleads by invoking some connection of the marked product with First Nations people. Use of the term MOHAWK by persons that have no connection to the First Nations is simple cultural appropriation – which prioritizes the entertainment or enjoyment of privileged people at the expense of a marginalized population and trivializes a history of violent oppression by exploiting a minority culture and allowing the privileged to gain financially.”
Mr Williams refers to indigenous Australians as also being protective of their reputation in cultural products, and that it would be highly offensive or misleading to mark any artwork as being of indigenous origin if it was not made by an indigenous person.
Mr Williams states that Ms Dixon’s search results did not appear to locate any use of Mohawk in Australia in relation to goods for which the Mohawk people have a reputation. However, Mr Williams emphasises that the Mohawk people do have a strong reputation in relation to plant products such as tobacco.
Mr Williams states that the Applicant has not sought to contradict many points raised in the EIS, namely, that the Opponent is controlled by and principally benefits First Nations people, the Applicant has no connection to the Mohawk people, the word Mohawk invokes aspects of First Nations culture when used with traditional plant products, and the Applicant was aware of the Opponent’s use of Mohawk for tobacco products.
Mr Borovec in his capacity as the attorney for the Opponent, and as a person educated and experienced in medical matters, refers to Ms Dixon’s declaration and disputes her statement regarding prescription of tobacco products in Australia. Mr Borovec states that prescriptions are required for the supply of nicotine preparations for use in e-cigarettes, and that only pharmacies dispense such preparations. Other forms of nicotine products dispensed by prescription are lozenges and patches. Mr Borovec also opines that consumers of cannabis and tobacco are likely to be overlapping, and that cigarettes and cannabis share some properties including the ability to induce relaxation, reduce anxiety, and alter mood, while also conferring some addictiveness. Mr Borovec also observes that supermarkets that sell cigarettes also sell pharmaceutical products, and that pharmacies are often also located near supermarkets.
Additional evidence
Both parties filed additional evidence and agreed that the evidence should be considered under regulation 21.19.
Ms Balakrishnan in her capacity as attorney for the Applicant provides extracts from the website The intention of this evidence is to demonstrate that the website does not offer shipping to Australia, but only to countries in Europe.
Mr Borovec declares in response that it is possible for an Australian consumer to engage a service provider in the UK to receive goods at a UK address and forward them to Australia.
The evidence appears to have mainly been of relevance to the Opponent’s case under s 58, with some peripheral relevance to s 60. However, ultimately, the evidence has no bearing on the outcome of the matter, and I give it little weight.
Discussion
Section 62A
To establish the s 62A ground, the Opponent must establish that the Application was made in bad faith.
Whether an application was made in bad faith requires consideration of a subjective and an objective element. For the subjective element I must form a view of the actual knowledge of the Applicant at the time the Application was filed. The objective element then asks, would a person adopting proper standards, knowing what the Applicant knew, regard the act of filing the Application as being in bad faith? This is to be assessed by determining whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in the relevant industry.[5] In Fry Consulting Pty Ltd Pty Ltd v Sports Warehouse Inc (No 2), Dodds-Streeton J in considering the tests for bad faith quoted the UK decision in Harrison’s Trade Mark Application:
[5] DC Comics v Cheqout Pty Ltd (2013) 212 FCR 194, 206 [62] (Bennett J).
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.
…
…The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[6]
Justice Dodds-Streeton went on to say:
… mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[7][6] Fry Consulting Pty Ltd Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [147], Harrison’s Trade Mark Application [2005] FSR 10 [24]-[26] (Sir William Aldous).
[7] Ibid, [166].
I am without evidence as to any standards of behaviour peculiar to this industry, so I proceed in my assessments here based on general commercial behaviour.
The Opponent bases the ground under s 62A on a combination of factors, including the Applicant’s knowledge of the Opponent’s business, the fact that both parties are based in Ontario, and the Applicant’s knowledge of the exploitation of indigenous people in Canada, which has been the subject of a Royal Commission, public protests, and has received significant media attention.
At the hearing, the Opponent focused particularly on the allegation of appropriation of the Mohawk name as the primary bad faith conduct. The Opponent emphasised that the abovementioned factors had been put to the Applicant in the SGP and in evidence, and the Applicant had not provided a direct response. The Opponent referred to the decision of the delegate in Hard Coffee Pty Ltd v Hard Coffee Mainbeach Pty Ltd (‘Hard Coffee’), where the delegate upheld a claim of bad faith where the Applicant failed to respond to the bad faith allegations or challenge the Opponent’s supporting evidence.[8]
[8] [2009] ATMO 26, [22]-[24].
The Opponent also refers to the decision of the Federal Court in Australian Competition and Consumer Commission v Birubi Art Pty Ltd (in liq) (‘Birubi’)[9] where the respondent was held to have breached ss 18, 29, and 33 of the Australian Consumer Law by making false and misleading representations that its products (including didgeridoos and boomerangs) were made in Australia and hand painted by indigenous Australians. The conduct of the respondent in Birubi resulted in a fine of approximately $2.3 million.[10]
[9] [2018] FCA 1595 (Perry J).
[10] Australian Competition and Consumer Commission v Birubi Art Pty Ltd (in liq) (No 3) [2019] FCA 996
(Perry J).
I note that Hard Coffee dealt with a specific allegation of bad faith arising out of facts concerning a prior business relationship and agreement between a director of the Applicant and the Opponent. In this case, the Opponent’s characterisation of bad faith conduct is based on a combination of more general factors that are to my knowledge not analogous to those considered in any other opposition decided under s 62A. That said, s 62A is ‘potentially applicable to diverse species of conduct’[11] and I can see no reason why allegations of cultural appropriation, particularly appropriation of indigenous intellectual property, could not be considered in the context of standards of acceptable commercial behaviour. The significant penalty in Birubi, which acknowledged the cultural, economic, and social harm resulting from misrepresentations relating to indigenous origins of goods, illustrates the public policy desire to deter such conduct. Further, even if conduct is not unlawful, many in the business community who are cognisant of principles of ethical trade might well consider that the misuse of indigenous names would fall short of standards of acceptable commercial behaviour.
[11] Fry Consulting Pty Ltd Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164] (Dodds-Streeton J).
Turning to the evidence of the Opponent, I am satisfied that ‘Mohawk’ is the name of a First Nations people of North America. I also accept that the Mohawk people produce tobacco, and the Opponent is a Native American owned producer of tobacco products.
Nevertheless, I also consider that the Trade Mark is more likely to be perceived by Australians as a reference to the Mohawk hairstyle. This does not necessarily defeat the allegation of bad faith, but it is a relevant factor, particularly in determining the objective element of s 62A.
Taking all relevant circumstances into account, I must consider whether the filing of the Application by the Applicant was conduct falling short of standards of acceptable commercial behaviour. This is a serious allegation, and the evidentiary onus falls on the Opponent. However, there are issues with the Opponent’s evidence that affect the weight it can be given.
First, the EIS consists of a single declaration of Mr Ferrigan, who is a purchasing director of the Opponent. Mr Ferrigan refers to the media attention in Canada regarding appropriation of indigenous intellectual property and a Royal Commission into the same issue. However, very little in the way of supporting material has been provided which gives context to these statements. For instance, a Royal Commission generally results in the publication of a report. No copy of any report or extracts of a report have been filed in evidence. Further, while Mr Ferrigan states that the Opponent is 100% owned by First Nations people, it does not appear that the Opponent represents the Mohawk people in any official capacity, or that Mr Ferrigan’s views reflect the views of the Mohawk people generally.
Second, the Opponent’s EIR includes a declaration by Mr Williams, a former chief of the Six Nations of the Grand River. This declaration also repeats the allegation of cultural appropriation. However, again, no supporting material was filed with the declaration which would indicate that the views held by Mr Williams are views held more broadly among others of the Mohawk people. I also note that Mr Williams refers numerous times to statements he made in an earlier declaration, although no such declaration was filed in the opposition. I assume that when Mr Williams refers to his earlier declaration, he is actually referring to the declaration of Mr Ferrigan. While nothing ultimately turns on this, I note that as the Opponent relied heavily on the declaration of Mr Williams to support the allegation of bad faith, it would have been more appropriate that the declaration be filed in the evidence in support phase, so the Applicant would have been provided the opportunity to respond in evidence in answer.
Third, neither party sought to file evidence about the outcome of the corresponding application to register the Trade Mark in Canada, or information generally about how trade marks of this type are considered under Canadian law. I consider that this evidence would have been of probative value, notwithstanding that the matter must ultimately be decided under Australian law. If the Trade Mark was considered registrable and permissible to use under Canadian law, it would be difficult to conclude that the Applicant had acted in bad faith by seeking registration in overseas jurisdictions where the Applicant may wish to export goods. Similarly, if the Trade Mark had been rejected in Canada on the ground that it constituted a cultural appropriation (or for similar reasons), this would significantly enhance the Opponent’s case.
On balance, despite the skilful advocacy of Mr Sykes at the hearing which made the most of limited evidence, I do not consider the Opponent’s evidence suffices to establish that the Applicant’s conduct fell short of acceptable standards of behaviour, or that it is sufficient to require that the Applicant respond more directly to the allegations made by the Opponent. While preferably the Applicant would have more directly addressed the allegation of cultural appropriation, ultimately, the Opponent bore the onus of proof. The lack of material supporting the allegations, in addition to the lack of clarity around particular issues (particularly the legal treatment of the Trade Mark in Canada), weighed against the Opponent’s case.
Further, to the extent the Opponent relied on the Applicant’s knowledge of the reputation of the Opponent in MOHAWK as a trade mark for traditional tobacco products as the basis for s 62A, I do not consider that such knowledge would render an application to register the same trade mark for cannabis related products as being in bad faith. Considering that the legal sale of cannabis products in the Australian market (and many other markets) is still highly restricted, I am not satisfied that the Applicant would or should have concluded that its products were similar to those of the Opponent, or that there would be a likelihood of confusion in the Australian market. I consider that the question of whether the Application should be refused based on use or reputation in the Opponent’s MOHAWK mark is more relevant to ss 60 and 42(b) grounds, which are discussed below.
The evidence is insufficient to establish the Applicant filed the Trade Mark in bad faith. As such, s 62A is not established.
Section 43
To establish this ground, the Opponent must show that there is a connotation within the Trade Mark itself and, because of this connotation, the use of the Trade Mark would be likely to deceive or cause confusion.
Section 43 of the Act is concerned with a connotation arising from the Trade Mark itself, not from a likelihood of deception or confusion arising from similarities between the Trade Mark and another trade mark.[12]
[12] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J); Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720, [43] (Wilcox, Kiefel & Emmett JJ).
The Opponent’s case is that the Trade Mark would be likely to cause confusion as it implies a connection with the Mohawk people of North America. The Opponent alleges that the likelihood of confusion arises due to the connection of the Mohawk people with the cultivation and provision of plant materials (such as tobacco) for medicinal and recreational purposes.
The Opponent refers to Himalaya Global Holdings Limited (‘Soliga’), where the delegate determined that the trade mark SOLIGA FOREST HONEY lacked capacity to distinguish given it referred to the Soliga tribe of India, who were known for producing honey. The delegate in that case also observed that use of the trade mark would be deceptive and contrary to s 43 if the goods denoted were not honey originating from the Soliga tribe.[13]
[13] [2012] ATMO 19, [21]-[24].
As discussed under s 62A, I consider that the trade mark would primarily bring to the minds of Australian consumers the Mohawk hairstyle. This connotation of the Trade Mark is arbitrary in relation to the goods, and not likely to deceive or confuse. However, I must also consider whether other connotations in the Trade Mark are likely to deceive or confuse.
The Opponent refers to Aventis Pharma SA v Alphapharm Pty Ltd,[14] as supporting the proposition that a name does not need to be famous or particularly well-known to be used in a manner that would deceive or confuse. The Opponent submits that ‘Mohawk’ is the only name of the Mohawk people, and that at least some Australians would know that the Mohawk are Native Americans. The Opponent also submits that Australians know that Native Americans cultivated and traditionally used tobacco, and this is a fact of which judicial notice can be taken.
[14] [2005] ATMO 15.
I accept that numerous Australians would understand that the word Mohawk refers to the Mohawk people, and that some consumers would also know the origin of the ‘Mohawk’ hairstyle. However, I am not satisfied that a significant number of Australians with such knowledge would wonder whether the Goods originate from or have some connection with the Mohawk people. The evidence does not establish that Australians are familiar with the commercial production of tobacco, or other plant-based products used for medicinal or recreational purposes, by Native Americans, or that they would expect to see tobacco or tobacco paraphernalia sold in Australia that is of Native American origin. The connection alleged by the Opponent is not a fact in respect of which I can take judicial notice. Further, even if some Australians perceived the necessary link between Native Americans and tobacco, I am not satisfied the same could also be said of the Goods under consideration, which are cannabis derived products and cannabis related paraphernalia.
The Soliga case, to the extent it is relevant to determining a ground of opposition under s 43, can be distinguished given the word ‘Soliga’ has no meaning other than as the name of an indigenous tribe of India. In this case, the Trade Mark, aside from being the name of a North American people, has another more well-known meaning which I consider mitigates the risk of confusion in the Australian market.
I also note that Birubi, which concerned goods bearing Australian indigenous artwork, concerned different representations in a significantly different factual context when compared to the circumstances under consideration in the present opposition. As such, while I consider that Birubi is an important authority, it is not analogous to the present case and does not guide me to a conclusion on the facts under consideration.
The Opponent has not established a likelihood of deception or confusion based on a connotation in the Trade Mark. As such, s 43 ground is not established.
Section 60
To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of this reputation, use of the opposed Trade Mark is likely to deceive or cause confusion.
The Opponent at the hearing referred me to the brief written submissions on s 60. The written submissions indicate that the Opponent relies on essentially the same arguments in pursuing s 60 as it relied on under s 43, namely, that the Trade Mark connotes a connection with the Mohawk people. The Opponent in the SGP also refers to particulars listed in the s 58 grounds, which summarise the Opponent’s use of Mohawk for tobacco products since 2017.
Section 60 requires that reputation be established in a ‘trade mark’. However, the Opponent’s evidence does not establish reputation in Australia of ‘Mohawk’ as a trade mark. The Opponent’s evidence at most indicates that the Opponent may have a reputation in the trade mark ‘Mohawk’ for tobacco in Canada. The Opponent’s evidence also indicates that a particularly enterprising Australian consumer may be able to purchase the Opponent’s tobacco from a foreign website and arrange third party shipping to Australia. I consider this is an unlikely scenario. Neither of the above facts are sufficient to establish any reputation exists in the Opponent’s trade mark in Australia.
Further, although Mohawk is the name of a particular group, this does not mean it has been used or is recognised as a trade mark in Australia in relation to goods originating from that group. While use of a term as both the name of a people and as a trade mark are not mutually exclusive concepts, the evidence does not show any relevant trade mark use of the Mohawk name in Australia at the Relevant Date.
As the evidence is insufficient to establish that the Opponent, or any other person, has a reputation in a relevant trade mark in Australia at the Relevant Date, I cannot conclude that the use of the Trade Mark is likely to cause confusion. As such, s 60 is not established.
Section 42(b)
The Opponent alleges the Applicant’s use of the Trade Mark would be misleading or deceptive, and therefore constitute a breach of s 18 of the Australian Consumer Law.
The basis argued by the Opponent for this ground is the assumed connection between the Goods and the Mohawk people of North America.
I refer to my reasons given above in relation to s 43. For the same reasons, as I am not satisfied that the Trade Mark is likely to cause confusion, I am also not satisfied that it is likely to mislead or deceive. As such, s 42(b) is not established.
Decision and costs
The Opponent has not established any of the grounds of opposition. As such, my decision is to register the Trade Mark. Noting the appeal period, it should proceed to registration one month from the date of this decision. If the Registrar of Trade Marks is served with a notice of appeal before that time, registration should not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the opposition should be in accordance with the Court’s order or direction.
The Applicant applied for an award of costs. Costs usually follow the event. There being no reason to make an exception here, I award costs against the Opponent.
Blake Knowles
Hearing Officer
Delegate of the Registrar of Trade Marks16 December 2021
0
12
0