Opposition by Mohammad Hashim Tajir Surma to registration of trade mark application 1985464 (3) – Hashmi (Figurative) – in the name of Oasis Corporation Australia Pty Ltd
[2021] ATMO 48
•8 June 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Mohammad Hashim Tajir Surma to registration of trade mark application 1985464 (3) – Hashmi (Figurative) – in the name of Oasis Corporation Australia Pty Ltd
Delegate: Nicholas Smith Representation: Opponent: Thomson Geer
Applicant: One IP International Pty LtdDecision: 2021 ATMO 48
Trade Marks Act 1995 (Cth) - Section 52 opposition: s 62A considered – ground established – registration refusedBackground
This decision concerns an opposition brought by Mohammad Hashim Tajir Surma (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Oasis Corporation Australia Pty Ltd (‘Applicant’):
Application Number:
1985464
Filing Date:
25 January 2019
Goods and Services:
Class 3: Eye make-up; Foundation make-up; Make-up; Make-up preparations; Make-up products; Eyeliner; Rose oil; Cosmetic products for eyebrows; Cosmetic products for eyelashes; Cosmetics for eyebrows; Cosmetics for eyelashes; Eyelash dye; Eyelid shadow; Eyeshadow; Eyeshadow pencils; Cosmetics in the form of mascara; Mascara; Cosmetics in the form of eye shadow; Almond oil; Essential oils for use in cosmetics; Natural oils for cosmetic purposes; Oils for cosmetic purposes; Oils for the hair; Oils for the skin (cosmetics)
(‘Applicant’s Goods’)
Trade Mark:
(‘Trade Mark’)
2. The application contains the following endorsement ‘The applicant has advised that the Arabic characters appearing in the trade mark may be transliterated as Hashmi and translated into English as Hashmi’.
3. Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively, unless otherwise indicated.
4. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 8 November 2019 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 13 January 2020.
Evidence
The Opponent filed the following evidence in support of its opposition:
·Declaration made on 14 April 2020 by Zaheer Babar Hashmi a partner of the Opponent (a cosmetics and healthcare company), with Confidential Annexures SL-1 to SL-5 (‘Hashmi declaration’).
6. The Applicant filed the following evidence in answer:
·Declaration made on 30 June 2020 by Jawed Dhedhy, director of the Applicant, with exhibits JD-01 to JD-06 (‘Dhedhy declaration’).
7. The Opponent did not file evidence in reply.
The entirety of the evidence filed by both parties, including publicly available information such as the public use of the Trade Mark or the contents of national trade mark registries, 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 (albeit in respect of the opponent in that case) 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].
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 this is an issue that has arisen by that party not specifically identifying that information as sensitive.
10. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing. The Opponent requested that the matter proceed to a decision without hearing and paid the appropriate fee. As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.
11. 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
The Opponent is a Pakistani family company whose business was first established in 1794 in India.
13. The Opponent has applied to register the trade marks listed below (‘Opponent’s Trade Marks’). Each of these trade marks postdate the date for which the Trade Mark was applied for and is presently deferred (undoubtedly until the conclusion of the present opposition proceeding)..
Number
Trade Mark
Priority Date
Goods
1999359
29 Mar 2019
Class 3: Cosmetics; perfumery; toiletry preparations for the care and cleaning of the skin and hair; surma (cosmetics); kohl; kajal (cosmetics); eye cosmetics; eye sticks, eyeliner, eye shadow, dentifrices; depilatories; henna in all forms; attar (perfume); preparations and substances all for care of eyes, preparations for the care of eye, hair, skin and scalp
Class 5: Pharmaceutical; dietetic substances adapted for medical use, food for babies, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin and fungicides, herbicides and food supplements, all types of Unani-Ayurvedic, homeopathic medicinal and herbal preparations particularly used for treatment and prophylaxis of various eye diseases (surma, kohl, collyrium, Ayurvedic Kajal), eye salve; kohl powder, medicated lotions, drops, medicated surma, preparations for the care of the eyes (medicated); medicated cosmetic products with antiseptic and medical effects, dietary supplements for humans
Class 30: Coffee; tea; rice; flour; pastry and confectionery; honey, salt, mustard; sauces (condiments), spices, Ispaghol husk (psyllium) being herbal remedies; herbs for medicinal purposes1467954
29 Mar 2019
Class 3: Cosmetics; perfumery; toiletry preparations for the care and cleaning of the skin and hair; surma (cosmetics); kohl; kajal (cosmetics); eye cosmetics; eye sticks, eyeliner, eye shadow; dentifrices; depilatories; henna in all forms; attar (perfume); preparations and substances all for care of eyes, preparations for the care of eye, hair, skin and scalp
Class 5: Pharmaceutical; dietetic substances adapted for medical use, food for babies, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin and fungicides, herbicides and food supplements, all types of Unani-Ayurvedic, homeopathic medicinal and herbal preparations particularly used for treatment and prophylaxis of various eye diseases (surma, kohl, collyrium, Ayurvedic Kajal), eye salve; kohl powder, medicated lotions, drops, medicated surma, preparations for the care of the eyes (medicated); medicated cosmetic products with antiseptic and medical effects, dietary supplements for humans14. The relevant claims/statements in the Hashmi Declaration can be summarised as follows:
· The Opponent owns numerous trade marks throughout the world that include the word ‘Hashmi’ and eye device, which is featured on the Trade Mark. It has spent significant amounts of time and money on marketing its products under the Opponent’s Trade Marks internationally.
· The Opponent has sold its cosmetics products, through distributors, in Australia since at least 2015. In that year the Opponent chose the Applicant as its preferred Australian distributor and began exporting its products to Australia.
15. The Annexes to the Hashmi declaration contain various marketing materials showing use of the Opponent’s Trade Marks internationally, examples of the registration of trade marks containing the same elements as the Trade Mark by the Opponent in other jurisdictions and e-mails between the parties in which the Applicant had ordered Hashmi products from the Opponent.
The Applicant
16. The relevant claims/statements in the Dhedhy declaration can be summarised as follows:
· The Applicant has used the Trade Mark for the Applicant’s Goods since August 2011. At the time of the commencement of use the Deponent was not aware of any other trade marks containing the term ‘Hashmi’.
· The Applicant continues to sell goods under the Trade Mark in Australia, with a significant annual turnover.
17. The Annexes to the Dhedhy declaration contain invoices, from which it is possible to discern that the Applicant has imported and distributed the Opponent’s Hashmi products (either directly or indirectly) from Pakistan, since at least 2011. The Dhedhy declaration does not address the question of the relationship between the Applicant and Opponent (i.e. that the Applicant appears, on the Opponent’s evidence, to have been importing products from the Opponent). The Declaration does not explain how the Deponent could not have been aware of the Opponent at the time of the commencement of the Applicant’s use, when the Applicant was at that time importing Hashmi products from Pakistan. Finally, the Deponent does not address how, if the Trade Mark was created independently, the Applicant happened to create a trade mark featuring a device that appears to have been part of registered trade marks held by the Opponent in Pakistan since at least the 1980s.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 62A. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.
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 the filing date 25 January 2019 (‘relevant date’).[4]
Discussion
Section 62A
[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 s 29(1) Trade Marks Act 1995 (Cth).
Section 62A of the Act is reproduced below:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:
·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application:[5]
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]
[5] [2004] EWCA Civ 1028; [2005] FSR 10.
[6] [2012] FCA 81, [147].
Her Honour continued later in the same decision:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, 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]
[7] Ibid [165]-[166].
Her Honour also noted with approval a number of cases in which bad faith were found in specific circumstances as set out below:
In William Leith New Century Marquees (SRISO/018/00, UK Registry), the applicant applied to register a trade mark in respect of marquees, tents and related goods, although aware that NEW CENTURY was the opponent’s trade mark in the United States of America and that the opponent had started to trade in the United Kingdom under the trade mark. He was himself a customer and the delegate found that he should have been aware that the opponent could be expected to expand that trade, if it had not already done so. He had previously proposed a licence arrangement with the opponent although its terms were not clear. The delegate of the Registrar concluded:
Mr Leith subsequently adopted the sign NEW CENTURY MARQUEES as his own trade mark, and he used it in the UK. When he was challenged about this he sought to register the mark in combination with his own name. In my view, the mark he has applied to register is confusingly similar with the mark NEW CENTURY.
...
It is difficult to see how a person who applies to register a mark in his own name which he has previously recognised as the property of a potential overseas principal can be said to be acting in accordance with acceptable standards of commercial behaviour. I do not believe that combining the mark with the applicant’s own name is any answer to that criticism.[8]…
In Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, Hearing Officer Nancarrow held that applications to register the trade marks HARD COFFEE MAIN BEACH and HARD COFFEE were made in bad faith within the meaning of s 62A, where a company controlled by the applicant’s controller had previously obtained a licence from the opponent’s predecessor in title to use the HARD COFFEE MAIN BEACH trade mark, acknowledging in that context that it had not purchased any right, title or interest in the names and that the vendor retained title to all related intellectual property rights. The Hearing Officer considered that in the circumstances, the director clearly understood that the trade mark in question remained the property of the opponent in respect of coffee shops.[9]
…
In Pritchard Pacific Pty Ltd Baltimore Aircoil (Australia) Pty Ltd v Brendan McCarrison and Breezewater Pty Ltd [2011] ATMO 46, the delegate upheld opposition to the registration of a trade mark for, inter alia, cooling towers and like apparatus and related services, on grounds including bad faith under s 62A of the Act. The delegate found that the applicant’s controller had a prior business connection with and knowledge of the opponent, such that a person standing in his shoes should have known that he should not apply for the registration of a trade mark deceptively similar to that used by his former business partner (at [42]).[10]
[8] Ibid [151].
[9] Ibid [153].
[10] Ibid [156].
The Opponent has particularised this ground of opposition in the SGP as follows:
The Applicant is a former distributor of the Opponent and is now a commercial competitor of the Opponent and would have been aware of the Opponent’s Marks and reputation associated with them at the time of filing the Opposed Mark.
The Applicant filed the application to register the Opposed Mark with the intention of misappropriating the Opponent's Marks. Persons adopting proper standards would regard the Applicant's decision to apply for registration of the Opposed Mark as being in bad faith, or reasonable and experienced persons in the field would view the Applicant's conduct as falling short of acceptable commercial behaviour,
The Applicant has applied for registration of the Opposed Mark in bad faith.
26. As would be apparent from paragraph 17 above, much of the Applicant’s evidence in this matter is either implausible or contains significant gaps. I am satisfied based on the evidence from the Opponent that the Applicant is a former distributor of the Opponent’s Hashmi products in Australia, and at all times was aware that the Opponent had created and used (in Pakistan and internationally) the Trade Mark that the Applicant now seeks to register. While the fact that the Applicant was aware of the Opponent’s business and its trade mark is not of itself fatal,[11] the act of applying to register a trade mark that an applicant has previously recognised as the property of another has previously been held to support a finding that s 62A has been established.[12]
[11] Next Group Plc v Nexcorp Australia Pty Ltd [2016] ATMO 34, [77].
[12] Bombala Council v Peter Wilkshire [2009] ATMO 33, [35].
27. In the present case the Applicant was distributing the Opponent’s products and sought to register an identical trade mark to the trade mark used by the Opponent for those products. I have been provided with no plausible explanation of the Applicant’s actions, nor is there an obvious reason for the Applicant to seek to register the Trade Mark (as opposed to, for example, a trade mark that reflects the Applicant’s own name). This matter has obvious parallels with the cases set out in paragraph 24 above in which bad faith was found when a former distributor seeks to register a trade mark used by its former overseas principal. I am satisfied that the Applicant’s conduct falls short of the ‘standards of acceptable commercial behaviour observed by reasonable and experienced persons’.[13] I find that the Opponent has established the ground of opposition under s 62A.
[13] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [77].
Decision and Costs
28. I have found the Opponent has established the ground of opposition it raised pursuant to s 62A of the Act. As the delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.
29. The Opponent 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 Applicant under s 221 of the Act in the relevant amounts under Schedule 8 of the Regulations.
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
8 June 2021
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