Opposition by Suree Interfoods Co Ltd to registration of trade mark application number 2029354 (class 29, 30) – AKETHAI with device - in the name of Almma Holdings Pty Ltd.

[2022] ATMO 41

TRADE MARKS ACT 1995

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

Re:Opposition by Suree Interfoods Co Ltd to registration of trade mark application number 2029354 (class 29, 30) – AKETHAI with device - in the name of Almma Holdings Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: A.P.T. Patent and Trade Mark Attorneys. Applicant: Self-represented.
Decision:	2022 ATMO 41 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 60, and 62A pressed – s 42(b) established – use of trade mark likely to constitute an infringement of copyright – registration refused.

Background

1. This is a decision on the opposition to registration of trade mark application number 2029354 (‘Application’) for the following trade mark:

   (‘Trade Mark’)

2. The Application was filed on 20 August 2019 (‘Relevant Date’) for the following goods:

   Class 29: Blended vegetable oils; Sesame oil for food; Soya bean oil for food; Sunflower oil for food; Vegetable oils (edible); Coconut butter; Coconut cream; Coconut fat; Coconut flakes; Coconut milk; Coconut milk for cooking; Blends of edible oils and fats; Coconut milk-based beverages; Desiccated coconut; Dried coconuts; Butter oil; Coconut oil for food; Cooking oils; Edible oils; Edible vegetable oils; Olive oil; Palm oil for food

   Class 30: Edible rice paper; Rice mixes; Rice paper (edible); Sauces for rice; Fish sauce (condiments); Sambal oelek (ground red pepper sauce); Sambal sauce (ground red pepper sauce); Satay sauces; Sauces flavoured with nuts; Soy sauce; Soya sauce; Flour of rice; Spicy sauces; Stir fry sauces; Sweet and sour sauce; Sauce (edible); Sauce mixes; Sauces containing nuts; Sauces for frozen fish; Foodstuffs made of rice; Fried rice; Instant rice; Rice; Rice cakes; Rice chips; Rice flour

   (‘Goods’)

3. Suree Interfoods Co Ltd (‘Opponent’) filed notice of its intention to oppose registration of the Trade Mark on 22 March 2020 and a statement of grounds and particulars (‘SGP’) on 22 April 2020. The Applicant filed a notice of intention to defend on 29 June 2020.  

4. The parties had the opportunity to file evidence in accordance with reg 5.14.[1] The Opponent filed Evidence in Support (‘EIS’) on 1 October 2020. The Applicant filed Evidence in Answer (‘EIA’) on 2 January 2021. The Opponent filed Evidence in Reply (‘EIR’) on 5 March 2021.  

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

5. Each party was given the opportunity to request an oral hearing or be heard by way of written submissions. The Opponent requested to be heard by written submissions, which were filed by Mr Paul Wyk of A.P.T. Patent and Trade Mark Attorneys. The Applicant did not request to be heard. As a delegate of the Registrar, I have decided this matter having regard to the particulars set out in the SGP, the evidence of the parties, and the submissions of the Opponent.

   Grounds and onus

6. The SGP nominates grounds of opposition under ss 42(b), 60, and 62A.

7. The Opponent carries the burden of establishing one of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

   [2] 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).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   Evidence

8. The following evidence was filed under reg 5.14:

   EIS

   Declaration of Mr Jack Wattanaporn, Deputy Managing Director of the Opponent, made on 1 October 2020, with Annexes SW-1 to SW-12.

   EIA

   Declaration of Mr Mohammed Eissa, Director of Applicant, made on 1 January 2021, with Exhibits A to I.

   EIR

   Second declaration of Mr Jack Wattanaporn, made on 5 March 2021, with Annexes SW-15 to SW-17.

   EIS

9. Mr Wattanaporn declares that the Opponent is a Thai company that produces and exports a range of food products made from Thai sourced ingredients.

10. Mr Wattanaporn declares that the Trade Mark was created in 2006 and used in the local Thai market. Mr Wattanaporn states that the Opponent’s employee, Mr Daeing Aucharataveewut (‘Author’), was the graphic artist responsible for designing the Trade Mark in 2006. Mr Wattanaporn annexes to the declaration three trade mark registrations for the Trade Mark in Thailand, each filed in early 2006 by Perfect Foodmedia Co., Ltd, an entity which Mr Wattanaporn explains is a subsidiary of the Opponent. Mr Wattanaporn also annexes a ‘CONFIRMATION MEMORANDUM OF ASSIGNMENT’ dated 28 September 2020 wherein the Author confirms his creation of the Trade Mark in 2006 in the course of his employment with the Opponent, and also that copyright was assigned to the Opponent at the time of creation of the Trade Mark.

11. Mr Wattanaporn declares that the Opponent first encountered the Applicant in 2013 at a trade show in Dubai, where Mr Eissa of the Applicant indicated an interest in the Opponent’s coconut milk that he wished to import to Australia. Mr Wattanaporn states that the Opponent offered him product branded with the Trade Mark.  Mr Wattanaporn annexes email correspondence from 2013 between the Opponent and Applicant wherein the Opponent attaches proposed artwork for ‘Ake Thai’ coconut cream. In that correspondence, the Applicant requests that reference to the product being ‘imported by’ the Applicant on the label should be changed to ‘manufactured by’. The Opponent responds by stating “But for the wording of manufacturer for. Can you suggest what is your main purpose? As Ake Thai is our brand and if you just would like to declare that you are the importer or distributor. Maybe you might declare as imported by: or distribute by:”. Mr Wattanaporn annexes the label that was ‘settled on’:

12. Mr Wattanaporn provides a table including quantity and wholesale value of products shipped by the Opponent to the Applicant between 2013-2019. Mr Wattanaporn states that all products shipped to the Applicant were manufactured and labelled in Thailand.

13. Mr Wattanaporn states that the Opponent learned that in early 2019 the Applicant had previously registered the AKETHAI word mark in Australia (trade mark number 1555063). Mr Wattanaporn states that the relationship between the Opponent and the Applicant subsequently broke down in early May 2019 after the Applicant refused to transfer the AKETHAI word mark to the Opponent.

    EIA

14. Mr Eissa declares that the Applicant imports and exports a wide variety of goods and food groceries under “our brand only” from Asia, Europe, and the USA, and that the nature of the Applicant’s business is to “invest, develop and distribute our own brands of products”.  

15. Mr Eissa annexes copies of catalogues and invoices which indicate that AKETHAI branded products have been sold by the Applicant in Australia.

16. Mr Eissa states that: “The Opponent … claims ownership of their trade mark in Thailand without any evidence showing it is related to [the Opponent]. The Opponent is wrongfully claiming that AKETHAI existed in Australia before [the Applicant] filed for registration of the trade mark AKETHAI. AKETHAI trade mark belongs to [the Applicant] in Australia since 2013 and is protected by the Trade Marks Act 1995. In 2013 the trade mark AKETHAI 1555063 in respect of its goods or services was sourced and supplied into Australia where it never existed in the market place prior to this date. Investment in our time and financial costs to build the trade mark AKETHAI into a reputable product has taken years of hard work and strategic marketing and planning to stay strong in a competitive market within Australia.”

17. Mr Eissa declares that in 2014, the Opponent was made aware of the Applicant’s ownership of the AKETHAI mark in Australia. He states that at this time, he told the Opponent not to supply other companies in Australia using the AKETHAI mark as the Applicant had invested time and financial costs to introduce the AKETHAI mark to the Australian market. Mr Eissa declares that the Applicant subsequently notified other parties that they had no right to sell products under the AKETHAI trade mark in Australia without authorization, and that products were subsequently removed from the shelves. Mr Eissa annexes email correspondence with the Opponent from 2015 wherein he states (in the context of including the ® symbol on a label for sweet chilli sauce) that he has “registered Akethai here in Australia. Can send you attachment of registration documents”.

18. Mr Eissa declares that in May 2015, the Opponent gave the Applicant an award which was stated to be ‘in grateful appreciation for your contributions, support and inspiration to success’.

19. Mr Eissa declares that the relationship between the Opponent and Applicant broke down in 2019 due to product quality issues.

    EIR

20. Mr Wattanaporn responds to various claims made by the Applicant in the EIA, including reiterating the Opponent’s dissatisfaction regarding the registration of the AKETHAI mark in Australia and the fact it was not aware of the filing of that mark by the Opponent in 2013. Mr Wattanaporn annexes additional emails between the parties from 2019. In an email to the Opponent dated 26 July 2019, Mr Eissa states: “Hi Nattaporn, AkeThai brand belonds to [the Opponent] in Thailand. Created by [the Opponent] in Thailand. Akethai belongs to [the Applicant] in Australia. Created by [the Applicant] Australia. I’ve created it here in Australia. Please let your manager know to get over this as I have no time to waste on this.”

    Discussion

    Section 42(b)

21. In order to establish the ground of opposition under s 42(b), it is necessary for the Opponent to demonstrate that the use of the Trade Mark by the Applicant would be contrary to law.

22. The Opponent in the SGP makes several contentions which form the basis for the s 42(b) ground. However, for the reasons given below, it is only necessary to consider one of those contentions, which is that the use of the Trade Mark by the Opponent would constitute an infringement of copyright.

23. In order to establish that use of the Trade Mark would be in breach of the Copyright Act 1968 (‘CA’), it is necessary to establish that the Trade Mark is or contains subject matter in which copyright subsists in Australia, and that use of the Trade Mark by the Applicant would constitute an infringement of that copyright.

24. Under s 32 of CA, copyright subsists in an unpublished original artistic work, or an artistic work first published in Australia, where the author was a qualified person (being an Australian citizen or resident) when the work was made. Under s 33 of the CA, copyright subsists for 70 years after the end of the calendar year in which the author died. Under s 31 of the CA, copyright includes the rights to reproduce an artistic work in material form and publish the work. Under s 36 of the CA, the reproduction or publication of an artistic work without licence from the owner constitutes an infringement of the copyright.

25. Under reg 4 of the Copyright (International Protection) Regulations 1969 (Cth), copyright subsists in artistic works authored by residents of, and subsequently published in, other countries that are party to various international agreements, including the International Convention for the Protection of Literary and Artistic Works (‘Berne Convention’).

26. Under s 10 of the CA, the definition of ‘artistic work’ includes a drawing, whether the work is of artistic quality or not. The threshold for what constitutes an artistic work is low.[4]

    [4] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [17] (Madgwick J).

27. The Opponent’s uncontradicted evidence establishes that the Trade Mark was created in 2006 in Thailand by the Author in his capacity as an employee of the Opponent. I note Thailand has been party to the Berne Convention since well before 2006, and as such, copyright can subsist in an original artistic work created by a Thai resident and first published in Thailand in 2006. While there is no direct evidence that the Author was a Thai resident, or that the Trade Mark was created in Thailand, given the addresses provided for both the Opponent and the Author, these facts can be reasonably inferred. I am also satisfied that the Trade Mark, being a composite of pictorial and stylised word elements, is a drawing and therefore an artistic work. As such, I am satisfied that copyright has subsisted in the Trade Mark from 2006 up until the Relevant Date.

28. I am also satisfied that the Opponent was at the Relevant Date the owner of copyright in the Trade Mark, either in its capacity as the assignee of copyright from the Author or by reason of the creation of the Trade Mark in the course of the Author’s employment with the Opponent. In any event, it is not necessary that the Opponent prove its ownership of copyright, merely that the Opponent establish that the Applicant was not the owner of copyright and had no licence to use the artistic work in which copyright subsisted at the Relevant Date.  

29. The Applicant has not contended that it had a licence, express or implied, to reproduce or publish the artistic work that constitutes the Trade Mark at the Relevant Date. Further, the evidence of both parties indicates that at the Relevant Date, the business relationship between the Opponent and Applicant had broken down and in those circumstances a licence was highly unlikely to exist.  As such, any use of the Trade Mark by the Applicant, in relation to goods where the Trade Mark has not been applied by or with the authorisation of the Opponent, would likely constitute an infringement of copyright in Australia and therefore be contrary to law.  

30. As I have found that a ground of opposition has been established under s 42(b), I do not need to consider the Opponent’s other contentions under that ground, or the remaining grounds of opposition under ss 60 and 62A.

    Decision and costs

31. The Opponent has established a ground of opposition. As such, I have decided to refuse registration of the Trade Mark. Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

32. The Opponent has requested an award of costs in its favour. Costs generally follow the event, and I see no need to depart from that rule. I award costs against the Applicant. 

    Blake Knowles

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    24 March 2022