Re Opposition by Kapruka Pty Ltd to registration of trade mark application 1877023 (36) - Kapruka in the name of Kapruka LLC

[2020] ATMO 28

TRADE MARKS ACT 1995

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

ReOpposition by Kapruka Pty Ltd to registration of trade mark application 1877023 (36) – KAPRUKA - in the name of Kapruka LLC

Delegate:                 Robert Wilson

Representation:       Opponent: Self-represented

Applicant: Dentons Australia Limited

Decision:                   2020 ATMO 28

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 58 considered – applicant not the owner of the trade mark – registration refused

Background

1. This decision concerns an opposition brought by Kapruka Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to registration of the trade mark the subject of the application detailed below in the name of Kapruka LLC (‘the Applicant’):

Application Number:	1877023
Filing Date:	30 September 2017
Services:	Class 36: Money transfer services  (‘the Applicant’s Services’)
Trade Mark:	KAPRUKA	(‘the Trade Mark’)

2. On 22 February 2018 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 14 April 2018 and a Statement of Grounds and Particulars (‘the SGP’) on 29 May 2018. The SGP nominated grounds of opposition under ss 41, 43, 58 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 10 August 2018.

Evidence

Evidence in Support

3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 23 November 2018. This evidence consists of:

·Declaration made on 23 November 2018 by Kosala Alwis Jayasninghe (sic), the Director of the Opponent (‘Jayasinghe 1’). The evidence was filed in some 44 separate documents which are ambiguously named and ambiguously referenced by the declaration. These ambiguities are dealt with further below. I note that in this declaration the declarant gives his name as ‘Jayasninghe’ but in a subsequent declaration and in documents contained in the EIS the name ‘Jayasinghe’ is used. I proceed on the basis that Jayasninghe was a typographical error.

Evidence in Answer

4. The Applicant filed Evidence in Answer (‘EIA’) which consists of:

·Declaration made on 1 April 2019 by Dulith Herath, the founder, sole-shareholder and sole-director of the Applicant, with Annexures DH-1 to DH-10 (‘the Herath declaration’).

Evidence in Reply

5. On 2 June 2019 the Opponent filed a document entitled Kapruka Pty Ltd Response to DH Declaration ostensibly as their Evidence in Reply (‘EIR’); however, the document was not in the form of a declaration as is required by the Trade Mark Regulations 1995 (Cth) (‘the Regulations’). IP Australia gave the Opponent an opportunity to file the document in the form of a declaration on condition that the refiling contain no new information. The Opponent refiled its EIR on 15 August 2019 but did not adhere to that condition. IP Australia gave the Opponent a ‘final chance’ to correctly file its EIR. On 28 August 2019 the Opponent filed the following declaration which was accepted as correctly filed by IP Australia:

·Declaration made on 28 August 2019 by Kosala Alwis Jayasinghe (‘Jayasinghe 2’). The declaration includes a number of annexures which are referred to as Ref. 1 to Ref 17.

6. On 12 August 2019 the Applicant objected to some material included in the 2 June 2019 document. On 20 August 2019 the Applicant objected that the Opponent’s 15 August 2019 filing including material not present in the 2 June filing. As will be seen below, the Opponent established its s 58 ground of opposition on the basis of the EIS only. For this reason it is not necessary that these objections be considered further.

Evidence stage completed

7. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Neither party requested to be heard. On 20 December 2019, the Applicant filed submissions which were prepared by Dentons Australia Limited.

8. The Opponent filed submissions on 2 January 2020 which were prepared by Mr Jayasinghe. By correspondence dated 13 January 2020 the Opponent was advised by IP Australia that its submissions included new evidence. The correspondence also advised that submissions as to why that late evidence should be considered needed to be filed. The Opponent was given a 27 January 2020 deadline to file any such submissions. Submissions were received from the Opponent on 27 January 2020; however, those submissions were not filed on IP Australia’s document filing system Objective Connect (‘OC’) as required. Filing on OC automatically provides all parties to the proceedings access to the documents. On 30 January 2020 the Applicant objected to the Opponent’s attempt to file new evidence in its submissions. Again, the Opponent’s s 58 ground was established on the basis of the EIS only and this issue need not be discussed further.

9. On 5 January 2020 Mr Jayasinghe responded to an email from one of the Opponent’s customers to the Opponent. Mr Jayasinghe copied that email response to the email addresses of two IP Australia staff members in the Hearings team. On 8 January 2020, one of those staff members replied to Mr Jayasinghe noting that the evidence stage had finished and that if that email was intended to be considered as evidence in the matter it would need to be filed in the form of a declaration and submissions should be made as to why the late evidence should be considered. The Opponent did neither of these things; consequently, the email will not be considered further.

Decision on written record

10.     As a delegate of the Registrar of Trade Marks it falls to me to decide the matter on that of the material discussed above which is validly filed.

The Opponent

11.     According to Jayasinghe 1, the Opponent has been an Australian registered company since 1999 and ‘is known throughout Australia as a company providing money remittance services to Sri Lanka. The Opponent is also registered with AUSTRAC to provide money remittance services as required under Australian law. The Opponent is also registered as an affiliate of Xpress Money and Ria, ‘which are large remittance providers, servicing customers remitting funds to countries other than Sri Lanka, such as India, Pakistan, Philippines, Vietnam, the Middle East and several other countries’. In his submissions, Mr Jayasinghe indicated that ‘Kapruka’ means, ‘the Tree that gives wealth’.

The Applicant

12.     According to the Herath declaration, Mr Herath

commenced a business under the trade mark KAPRUKA in 2001. The business specialises in providing retail, gift and money transfer services to customers around the world, including in Australia. Customers can purchase products, gifts, and money/vouchers online to be sent to people in Sri Lanka … [The Applicant’s business] is now Sri Lanka’s largest e-commerce organisation.

13.     Mr Herath indicates that the term KAPRUKA 'is a unique term that symbolises a wishing tree in Sinhalese’.

Grounds of Opposition, Onus and Standard of Proof

14. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 41, 43, 58 and 62A of the Act. As will become apparent it is necessary only that I consider the ground pursuant to s 58. 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 appellate Court.

15.     The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 30 September 2017, being the filing date of the application (‘the Relevant Date’).[3]

Discussion

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Section 58

16. The ground based on s 58 of the Act is indicated in the SGP as follows:

Kapruka Pty Ltd (KPL) is a money remittance company registered in Australia since 1999 and provides services to a clientele of over 10,000 customers.

KPL has built a reputation as a reliable, trustworthy service provider who delivers an honest dependable service. Over an almost twenty year period KPL customers have received an exemplary service and remittances have always been delivered to customers’ nominated accounts accurately and on time as undertaken resulting in a high level of customer satisfaction and loyalty.

17. Section 58 of the Act is reproduced below:

Section 58. Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:For applicant see section 6.

18.     The owner of a trade mark for particular good/services is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:

·     that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent;[4]

·     that the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used;[5] and

·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant.[6]

[4] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

[5] Re Hicks’ Trade Mark (1897) 22 VLR 636.

[6] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

19.     Jayasinghe 1 is laid out in a somewhat unorthodox manner. There is a short overarching declaration and amongst the 43 separate accompanying documents are four text documents each of which addresses one of the grounds of opposition and refers to other of the accompanying documents. For ease of reference I will refer to those four text documents as ‘sub-declarations’.

20. In respect of s 58, the overarching declaration simply states:

Applicant is not the owner of the trade mark for which ground we have provided details in the attachment titled Evidence in support of Opponent – Section 58 together with supporting documents listed in the annexures.

21. The s 58 sub-declaration begins:

In support of our grounds for opposition under s 58 we provide the following as evidence that the Applicant does not have a good title to [the Trade Mark] because of the undermentioned reasons:

1.Kapruka Pty Ltd (the Opponent) has the prior registration and registration in Australia (1) and pre-dates Kapruka.com registrations and incorporations in Sri Lanka, the USA and UK.

a.Kapruka Pty Ltd was registered with ASIC on 4 August 1999. …

2.[The Opponent] enjoys a good reputation in the Sri Lankan community in Australia as evidenced by the attached commendations from customers (6.) are only a small sample of the goodwill Kapruka Pty Ltd enjoys.

3.Kapruka Pty Ltd provides remittance services to the Sri Lankan community in every state in Australia …

22.     The bold numbers in brackets in the above quote were included by the declarant and are apparent references to various of the other annexures to the declaration. The various documents are somewhat ambiguously named. I will do my best to determine which documents are referred to.

23.     The Opponent appears to be relying on its use of ‘Kapruka Pty Ltd’ to support this ground of opposition. The EIS shows a number of examples of use of ‘Kapruka Pty Ltd’ as a trade mark. The ‘(1)’ in the quote at para 21 of this decision seems to be pointing to a single page document which is a copy of the certificate of registration of the Opponent. The certificate shows that the company was registered on 4 August 1999. It appears from the s 58 sub-declaration that the registration of the Opponent is the principal event upon which the Opponent is relying to support this ground of opposition; however, the registration does not constitute use of ‘Kapruka Pty Ltd’ as a trade mark. The s 58 sub-declaration refers to a number of other documents which assert use of ‘Kapruka Pty Ltd’ as a trade mark. As it happens, the document which, in my view, establishes the earliest use of ‘Kapruka Pty Ltd’ as a trade mark is not found in any of the documents referred to by the s 58 but in a document referred to in the s 41 sub-declaration.

24. The s 41 sub-declaration contains the following:

[The Opponent] advertised its services in community newspapers such as Pahana, Serendib, and Indian voice for Xpress Money and Ria services. In all from 2002-2003 to 2017, [the Opponent] has spent [figure provided] in advertising alone, by which the business was built up over the years. If the trade mark is granted to [the Applicant], they will benefit from the expenses incurred by [the Opponent].

Customers and the principles (sic) we deal with as well as the banks both in Australia and Sri Lanka refer to the company as ‘Kapruka’. [The Opponent’s] advertisements too refer to the company as Kapruka Pty Ltd. (07.)

25.     The ’07.’ in the quote above appears to refer to four documents with the following file names:

·07. Ad1 – Kapruka-Serendib­_July 2008.pdf;

·07. Ad2 – KAPRUKA-XM-Ria-P1.pdf;

·07. Ad3 – Kapruka Indian Voice Ad from May 04.pdf;

·07. Ad4 – Newspaper and events. Pdf; and

·07. Kapruka.com Corporate Information E Commerce Orginizations (sic) in Sri Lanka.pdf

26.     One of those documents is of particular relevance: ’07. Ad3 – Kapruka Indian Voice Ad from May 04.pdf’ (‘Ad3’). ‘The Indian Voice’ is a community newspaper published for the Indian community in Melbourne. Ad3 is typical of a half-column (or so) advertisement in a newspaper. The top part of the advertisement is shown below. As can be seen, the advertisement prominently shows ‘Kapruka Pty Ltd’ as the trade source of the money transfer services on offer.

27.     In respect of the above advertisement the Applicant submitted:

Mr Jayasinghe declares that the Opponent advertised its services in community newspapers, however this evidence in (sic) unsupported and should not be given any weight. No particulars are given as to when, where and to whom such advertisements were published/distributed.

I am not persuaded by the Applicant’s criticism of Ad3. On balance, I am satisfied that the Opponent used ‘Kapruka Pty Ltd’ as a trade mark as early as May 2004. Further details about the publication of the advertisement might be required if reputation were being considered here, but the establishment of a reputation is not necessary for the purposes of s 58.

28. I am satisfied also that ‘Kapruka Pty Ltd’ is substantially identical to the Trade Mark; in line with s 7 of the Act, ‘Pty Ltd’ is not an addition or alteration which substantially affects the identity of the Trade Mark. There is nothing in the Opponent’s evidence which is sufficiently cogent to establish use of the Trade Mark earlier than May 2004. The question remains whether the Applicant’s evidence establishes earlier use.

29.     As indicated above, the Herath declaration states that the Applicant first used the Trade Mark in 2001 in connection with a business which ‘specialises in providing retail, gift and money transfer services to customers around the world, including in Australia’. The Herath declaration has referred to a number of documents to support this claim: only a few potentially assist the Applicant. Mr Herath indicates that the domain name lanka.info was registered on 13 September 2001 and that:

The KAPRUKA trade mark has been used on since at least around 4 January 2002. The archived webpage of from the Wayback Machine is attached and marked as Annexure DH-7.

30.     Annexure DH-7 shows an archive of the Applicant’s website from 4 January 2002. The webpage is typical of online shopping websites of the time. A number of goods and services are offered on the webpage, for example: ‘Read your horoscope’ and ‘Shop Online’. The goods offered for purchase under the heading ‘Shop Online’ include: ‘Arts and Paintings’, ‘CD – Store’ and ‘Stamp Collections’. The Trade Mark is used on the webpage a number of times for example:

Buy these original sinhala CDs from Kapruka and get them delivered to your door step for the most competitive prices ever to be offered.

and

At Kapruka you can shop with confidence.

Nowhere on the page do money transfer services appear. Neither are any of the goods/services which are on offer the same kind of thing as the Applicant’s Services; consequently, this annexure does not assist the Applicant.

31.     The Herath declaration also states that the Applicant registered the domain name kapruka.com on 26 July 2001. No relevant examples of that web site are shown.

32.     Confidential Annexure DH-9 is declared to be ‘a table showing customers in Australia who used [the Applicant’s] money transfer services from at least January 2006 to December 2013. This annexure does not assist the Applicant.

33.     Notwithstanding the assertion that the Applicant used the Trade Mark in connection with the Applicant’s Services since at least 2002, the evidence provided is not sufficient to establish that this is the case. Neither is the evidence sufficient to establish that the Applicant used the Trade Mark in connection with the Applicant’s services at any time prior to the earliest use established by the Opponent. Consequently, the Opponent has established this ground of opposition.

Decision

34. Section 55 of the Act relevantly provides:

55Decision

(1)Unless subsection (3) applies to the proceedings, 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.

Note:For limitations see section 6.

35. I have found the Opponent has established the ground of opposition it raised pursuant to s 58 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

Costs

36. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson
Hearing Officer
Trade Mark Oppositions and Hearings
25 February 2020