Opposition by Grocery Industries Australia Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Sharmas Kitchen Pty Ltd to remove trade mark number 1508657 (Classes 29 and 30) – Sharma’s...

[2021] ATMO 100

TRADE MARKS ACT 1995

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

Re:Opposition by Grocery Industries Australia Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Sharmas Kitchen Pty Ltd to remove trade mark number 1508657 (Classes 29 and 30) – Sharma’s with device - in the name of Grocery Industries Australia Pty Ltd as trustee for the CFI Trust.

Delegate:

Blake Knowles

Representation:

Opponent: Cooper Mills Lawyers.  

Applicant: Shauna Ross of counsel, instructed by IP Solved.

Decision:

2021 ATMO 100

Trade Marks Act 1995 (Cth) – application under section 92 – insufficient evidence of use of trade mark during relevant period – discretion not exercised - trade mark removed.

Background

1. Sharmas Kitchen Pty Ltd (‘Applicant’) on 1 October 2019 filed an application (‘Application’)  for the complete removal of the following trade mark:

(‘Trade Mark’)

1. The Trade Mark has been registered since 20 August 2012. At the time of filing of the Application, the Trade Mark was registered in the name of Grocery Importers Australia Pty Ltd (‘Owner’), for the following goods:

   Class 29: Dried lentils; pickles; relishes (pickles); coconut cream

   Class 30: Unleavened bread; spices; curry paste; bread; garlic bread; pitta bread; wholemeal bread mixes; chutneys; rice; cooking sauces; curry sauces; satay sauces; sauces in a pouch; savoury sauces; simmer sauces; pappadums

   (‘Goods’)

2. On 16 October 2019, the Owner filed a notice of intention to oppose the Application, followed by a statement of grounds and particulars (‘SGP’) on 17 October 2019. The Applicant filed a notice of intention to defend the Application on 29 November 2019.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 9.16 of the Trade Marks Regulations1995 (Cth).[1] The Owner filed Evidence in Support on 17 February 2020. The Applicant did not file Evidence in Answer.  

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 or the Trade Marks Regulations 1995 (Cth), respectively.

4. Subsequent to the filing of the Evidence in Support, the Trade Mark was assigned to another entity, Grocery Industries Australia Pty Ltd, as trustee for the CFI Trust (‘Opponent’). As successor in title to rights in the Trade Mark, the Opponent also assumed responsibility under s 96A for the opposition to removal of the Trade Mark.  

5. At the conclusion of the evidence stages of the opposition, the parties were given an opportunity to request an oral hearing or file written submissions. The Applicant requested a hearing by video conference. The matter was heard by me, a Delegate of the Registrar of Trade Marks, on 6 September 2021. The Applicant was represented by Shauna Ross of counsel, instructed by IP Solved. The Opponent elected not to appear at the hearing or file written submissions.

6. As the Application was filed on 1 October 2019, for the purposes of deciding this opposition, the relevant period is the three-year period ending on 1 September 2019 (‘Relevant Period’). 

Evidence

1. The following Evidence in Support was filed:

   Declaration of Anita Martini, made on 17 February 2020, with Exhibits 1-7.

2. Ms Martini declares that the name ‘Sharma’ is common in India and Nepal, as is the product sold under the Trade Mark, namely, roti bread. Ms Martini explains that the Sharma’s branding is used on food products sold in supermarkets in Australia (approximately 890 retailers) and has been in use since 2013. The Trade Mark itself is used on food packaging and featured on a website, retailer catalogues, and product labels. The relevant exhibits include:

   ·An electronic record indicating quantity of roti products sold in 2019 and 2020 and bearing the header ‘LWS- Properties of (2627) SHARMAS ROTI BREAD TRADITIONAL 280g’.

   ·An electronic record indicating transactions with two suppliers in 2013 and 2016 and referring to ‘SHARMA’S TRADITIONAL ROTI 240g’.

   ·A purchase order issued by Dallas International Pty Ltd (‘Dallas’) to Master Craft Foods Pty Ltd for Sharma’s roti bread on 7 October 2019.  Also included is an order for labels issued by Dallas to United Labels on 27 November 2019.

   ·Images of packaged traditional roti bread bearing the Trade Mark, including on the website dallasinternational.com.au and in a catalogue with a footer containing contact details for Dallas. Neither exhibit is dated.

3. I also note that while Cooper Mills Lawyers are listed as the Opponent’s representative on this matter, they were appointed after the Evidence in Support was filed.

Grounds, onus and standard

1. The Application alleges grounds for removal under s 92(4)(b), which is reproduced below:

   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:

   (a)…

   (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.

2. The allegation of non-use during the Relevant Period is for the Opponent to rebut.[2] The Opponent relies on use of the Trade Mark for the rebuttal.[3] However, I also have a discretion to allow the Trade Mark to remain registered even if there has been no use of the Trade Mark during the Relevant Period.

   [2] Trade Marks Act 1995 (Cth) s 100(1)(c).

   [3] Ibid s 100(3)(a).

3. Findings of fact in this decision are based on the civil standard of the balance of probabilities.

Discussion

Use of the Trade Mark during the Relevant Period

1. I must first decide whether there has been use of the Trade Mark by the Owner, or an authorised user, in good faith, on or in relation to the Goods during the Relevant Period. If I am satisfied there has been such use, the opposition will succeed. If I am not satisfied there has been use, or if there has only been use in relation to some of the Goods, I must then decide whether to exercise discretion to allow the Trade Mark to remain registered for any of the Goods for which use during the Relevant Period has not been established.

2. The ‘use’ required to be demonstrated by the Owner is ‘use as a trade mark’. ‘Use as a trade mark’ is use of the sign as a badge of origin in the sense that it indicates a connection in the course of trade between the goods or services and the person who applies the sign to or in relation to those goods or services.[4]

   [4] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

3. Use of a trade mark for goods includes use in relation to the goods and is not limited to a direct application of the mark to the goods or their packaging.[5] A trade mark may be used in relation to goods where it is included on an invoice or some other document (including a webpage) associated with the sale or promotion of goods.[6]

   [5] Trade Marks Act 1995 (Cth) ss 7(4), 92(4)(b).

   [6] Ibid s 9. See also Thunderbird Products Corp v Thunderbird Marine Products P/L [1974] HCA 51 (Jacobs J).

4. The use of a trade mark for goods may be direct use by the Owner, or authorised use by an authorised user[7]. Authorised use is considered use by the Owner only to the extent that such use is under the control of the Owner.[8] For the purposes of the Trade Marks Act 1995, the exercise of quality control over the Goods by the Owner is sufficient to meet the control requirement for ‘authorised use’.[9] Further, the exercise of financial control by the Owner over the authorised user’s relevant trading activities is also considered to be an acceptable form of control.[10] However, these types of control are not considered exhaustive, and other forms of control may suffice to establish authorised use.[11] Further, if the Owner and authorised user of the Trade Mark act with a unity of purpose in relation to the Trade Mark, this may be sufficient to establish effective control and authorised use.[12]

   [7] Trade Marks Act 1995 (Cth) s 7(3).

   [8] Ibid s 8.

   [9] Ibid s 8(3).

   [10] Ibid s 8(4).

   [11] Ibid s 8(5).

   [12] Trident Seafoods Corp v Trident Foods P/L [2019] FCAFC 100, [45]-[46] (Reeves, Jagot and Rangiah JJ).

5. Turning to the present case, the Evidence in Support establishes that some use of the Trade Mark has likely occurred since 2013. However, the evidence contains a number of significant deficiencies which were examined methodically by Ms Ross in her submissions. It is not necessary that I discuss each of these deficiencies in detail. I will instead focus only on one particular flaw that is ultimately fatal to the Opponent’s case.  

6. In her declaration, Ms Martini does not explain her relationship to the Owner or the Opponent. However, she does repeatedly refer to use of the Trade Mark by ‘our company’. The exhibits corresponding to those particular statements indicate the company referred to by Ms Martini is Dallas, not the Owner. I also infer from these statements and exhibits that the internal records provided by Ms Martini are records of Dallas, not the Owner. 

7. Dallas and the Owner are different entities, with different ACN and ABN numbers. Any use of the Trade Mark by Dallas could only be relied on by the Opponent if such use was authorised use, namely, use under some form of relevant control by the Owner. However, no evidence of control has been provided. There is no written licence, nor any explanation of the relationship between the Owner and Dallas from which to determine that some relevant form of control was exercised. In these circumstances, I can give little weight to evidence of use of the Trade Mark by Dallas, as it is not use by the Owner or under the control of the Owner.

8. As the Opponent has not established use of the Trade Mark by the Owner during the Relevant Period, I must decide whether to exercise discretion to maintain the Trade Mark on the Register.   

Discretion

1. The discretion available to the Registrar is ‘limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act’.[13] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[14] Nevertheless, the subject-matter, scope and purpose of Part 9 is the removal of unused trade marks from the Register and this should be the starting point of any consideration of the exercise of the discretion. Where an opponent has not established that a challenged trade mark was used during the relevant period, the exercise of the discretion in favour of the opponent is not one which should be exercised lightly: there must be good reason to do so. As stated by Jacob J in Laboratoire De La Mer Trade Marks:

   There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[15]

   [13] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ).

   [14] Ibid [69].

   [15] [2002] FSR 51 (Ch) 790, [19].

2. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited (‘Gallo’), Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’, the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register. Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[16]

   [16] [2008] FCA 934, [210] (citations omitted) (‘Gallo’).

3. The Opponent bears the onus of establishing that the discretion should be exercised in their favour: it is not for the Applicant to establish that it should not.[17]

   [17] Austin Nichols & Co Inc v Lodestar Anstalt [2012] (n 13) [44].

4. Justice Flick in Gallo also referred to a non-exhaustive list of factors which may provide some assistance in considering the discretion, they are:

• whether there has been abandonment of the trade mark;

• whether the registered proprietors of the mark still had a residual reputation in the mark;

• whether there had been sales by the registered proprietors of goods or services for which removal was sought since the relevant period ended; and

• whether the applicant for removal had entered the market without having taking steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.[18]

  [18] ‘Gallo’ (n 16) [202]–[203].

1. The evidence at its highest indicates that some entity (most likely Dallas) has been using the Trade Mark in relation to roti bread. However, in the absence of any compelling evidence which sufficiently explains the business relationship between Dallas and the Owner and/or the Opponent, I do not consider it would be appropriate to exercise discretion to allow the Trade Mark to remain registered. The effect of such a decision may be to allow a trade mark to remain on the register in the name of an entity that itself does not use the Trade Mark or exercise any control over the use of the Trade Mark. This would potentially affect the integrity of the Register as an indicator of the trade source of the Goods and therefore be contrary to the public interest. The public interest would be better served by the entity that actually uses or exercises control over the use of the Trade Mark applying for its registration.

2. For these reasons, I decline to exercise discretion to allow the Trade Mark to remain registered.

Decision and costs

1. The Opponent has not established use of the Trade Mark by the Owner for the Goods during the Relevant Period, or that it is appropriate to exercise discretion to allow the Trade Mark to remain registered. As such, the Trade Mark should be removed for all of the Goods.

2. Given it is the right of both parties to appeal this decision to the courts, the removal shall not take place until at least one month from today. If the Registrar is served with a notice of appeal before then, the Trade Mark shall not be removed until the appeal has either been discontinued or the Application has been otherwise dealt with as the Court sees fit.

3. The Applicant has requested an award of costs. The usual rule is that costs follow the event. I therefore award costs against the Opponent.  

Blake Knowles

Hearing Officer

Delegate of the Registrar of Trade Marks

10 September 2021