Saravana Bhavan Holdings Limited v Hotel Saravana Bhavan Pty Ltd

[2018] ATMO 157

TRADEMARKSACT 1995

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

Re:Opposition by Saravana Bhavan Holdings Limited to registration of trade mark application 1632399 (43) – HOTEL SARAVANA BHAVAN VEGETARIAN & NON   VEGETARIAN   INDIAN   &   SRILANKAN   RESTAURANT   B.Y.O

(Composite)- in the name of Hotel Saravana Bhavan Pty Ltd

DELEGATE:

Nicholas Smith
Decision on the Written Record

DECISION:

2018 ATMO 157

TradeMarks Act 1995 (Cth) - Section 52 opposition: ss 44 and 60 considered – neither established – trade mark to proceed to registration

Background

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

ApplicationNumber:	1632399
FilingDate:	4 July 2014
Services:	Class 43: Restaurant services; Restaurants (‘Applicant’s Services’)
TradeMark:	(‘Trade Mark’)
Endorsements	Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

2.Following the advertisement on 28 July 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 27 September 2016. The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 27 October 2016. The SGP raised grounds of opposition under ss 44 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 29 November 2016.

Evidence

3. The Opponent filed no evidence in this matter.

4.The Applicant filed Evidence in Answer (‘EIA’) on 13 June 2017. This evidence consists of the following declarations:

Rajkumar Dixit made on 2 February 2016 with Annexures RD-1 to RD-10 (‘Dixit Declaration’);

Muttukumar Paramanathan made on 3 February 2016 with Annexures MP-1 and MP- 2 (‘Paramanathan Declaration’);

Alexander Kennedy made on 2 February 2016 (‘Kennedy Declaration’); and Marea Rayment made on 2 February 2016 (‘Rayment Declaration’).

The Opponent did not file any evidence in reply.

5.Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. On 4 October 2017 the Applicant filed its submissions (‘Applicant’s Submissions’). By letter issuing from IP Australia on 26 October 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record. The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon (or in the Applicant’s case, any further submissions).  Neither party filed any submissions in response to the letter.

6.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

7.As the Opponent has not provided any evidence, I cannot provide any information about the Opponent other than what is set out on the Register, namely that the Opponent is the registered owner of the trade mark set out below (‘Opponent’s Trade Mark’), which is particularised in the SGP.

Number	Trade Mark	Priority Date	Services
1038695	21 January 2005	Class 43: Services for providing food and drink; restaurants; take away and home delivery food services; cafes; snack bars; catering services

The Applicant

8.The Applicant is an Australian company that operates a restaurant located at 15 The Strand, Croyden, known as Hotel Saravana Bhavan.

9.The Kennedy and Rayment Declarations are from long-time customers of the restaurant and state that the declarants are aware that the Applicant’s Hotel Saravana Bhavan has traded continuously from at least 2003 (Kennedy Declaration) and 2000 (Rayment Declaration).

1. The Dixit Declaration contains the following claims/statements:

·The Applicant operates a restaurant known as Hotel Saravana Bhavan, which displays the Trade Mark as signage at the front of the property. The Hotel Saravana Bhavan opened in 2000 and has traded continuously and used the Trade Mark since that date.

·The Applicant has operated the Hotel Saravana Bhavan since 2007 when it purchased the business as a going concern (including all goodwill) from the then owner, Arumanayagam Gabiryalpillai.

1. The Dixit Declaration includes business name registrations confirming that the business name Hotel Saravana Bhavan was registered in 2000 and photos of signage, advertising and menus confirming the use of the Trade Mark or variants of the Trade Mark by the Applicant.

1. The Paramanathan Declaration contains the following claims/statements:

·The declarant, along with his wife and brother in law, opened the Hotel Saravana Bhavan in 2000 and continued to operate it until 2007.

·The Trade Mark is used on external signage, which has been used continuously since 2000.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 44 and 60 of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

2. 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 4 July 2014 (‘relevant date’), being the filing date of the application in Australia.3

1. As the Opponent has filed no evidence and provided no submissions I have no hesitation deciding that the Opponent has not discharged the onus on it and has consequently not to any extent established the s 60 ground of opposition nominated in the SGP since the s 60 ground of opposition requires evidence of a reputation in a nominated mark.

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

2 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].

3  Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1)

Trade Marks Act 1995 (Cth).

Discussion

Section 44

1. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

(1) …

(2)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services  (applicant's services) must be rejected if:

(a)    it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)    the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10. Note 2: For similar services see subsection 14(2). Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3)    If the Registrar in either case is satisfied:

(a)    that there has been honest concurrent use of the 2 trade marks; or

(b)    that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:  For limitations see section 6.

(4)    If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a)    beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)    ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies:

   ·has  a  priority  date  which  is  earlier  than  that  of  the  Trade  Mark  (‘the  first requirement’);

   ·is  substantially  identical with or  deceptively similar  to  the Trade Mark  (‘the second requirement’); and

   ·is in respect of similar services, and/or goods which are closely related to, the Applicant’s Services (‘the third requirement’).

1. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application if the Registrar is satisfied that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark, pursuant to ss 44(3) and 44(4) of the Act.

1. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark, which is registered for services including restaurants. They are identical to the Applicant’s Services, which are ‘restaurant services, restaurants’. The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark. The first and third requirements are satisfied.

Substantially identical or deceptively similar

1. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In  considering  whether  marks  are  substantially  identical  they  should,  I  think,  be compared side by side, their similarities and differences noted and the importance of

these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.4

1. The Trade Mark and the Opponent’s Trade Mark are set out below:

1. On a side by side comparison there is a clear difference between the respective trade marks, including different devices and the presence of the additional words ‘& non vegetarian’, ‘& Srilankan’ and the contact details. The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical. I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

1. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].5

1. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

4 (1963) 109 CLR 407, [12].

5 Ibid [13].

Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths6at [49]; Australian Woollen Mills7 at 658.

Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s8at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating9at 594 – 595.

Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].10

1. I consider that the Trade Mark and Opponent’s Trade Mark are deceptively similar.  The essential features of each of the marks are the words ‘hotel saravana bhavan’.                   The

6 Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

7 Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
8 Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.
9 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

10 [2012] FCA 1022, [38]-[46].

remaining word elements are essentially descriptive or provide information relating to the services for which both marks are registered. The device elements are not distinctive enough to overcome the shared essential features. The respective marks are visually similar and aurally and conceptually very similar. I find that allowing for imperfect recollection, there is a real tangible danger that the use of the Trade Mark will result in deception or confusion. The Opponent has established a ground of opposition pursuant to s 44(2) of the Act. It is then necessary to consider whether the Registrar should accept the application on the basis of ss 44(3) or 44(4) of the Act.

Subsection 44(4): prior continuous use

1. S 44(4) of the Act gives an applicant the option of overcoming a finding under s 44(2) through the provision of evidence showing that it continuously used the Trade Mark for a period beginning before the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

1. In the present case the priority date for the registration of the Opponent’s Trade Mark is 21 January 2005.

1. The EIA provides evidence to the effect that the Applicant has continuously used the Trade Mark for the Applicant’s Services since before 21 January 2005. In particular the evidence in the Dixit and Paramanathan Declarations is that the Trade Mark has been continuously used as external signage for the Hotel Saravana Bhavan restaurant since 2000. I find that the Applicant has continuously used the Trade Mark (with alterations or additions that do not substantially affect the identity of the Trade Mark) from a period beginning before the priority date for the registration of the Opponent’s Trade Mark to the relevant date, in respect of the similar services.

29.I find that the Opponent has failed to establish the ground of opposition under s 44.

Decision

30.      The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade Mark application no. 1632399 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is

withdrawn or discontinued.   Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Nicholas Smith Hearing Officer

Oppositions and Hearings 2 October 2018