Sayed Jaffar Musawi and Sayed Mohammad Agha Musawi v Agha Juice Sydney Road Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Agha Juice Sydney Road Pty Ltd to registration of trade mark application number 1983911 - AGHA JUICE (Classes 29, 30, 32 and 43) - and trade mark application number 1983919 - AGHA JUICE with device (Classes 29, 30, 32 and 43) - in the names of Sayed Jaffar Musawi and Sayed Mohammad Agha Musawi.

Delegate: Timothy Brown

Representation: Opponent: Nadiya Khish of Beena Rezaee Legal & Migration.
Applicant: Susan Gatford of Counsel instructed by Linda Di Trocchio of Parkston Lawyers.

Decision: 2022 ATMO 162
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under sections 41, 43, 58, 60 and 62A – no grounds established – trade marks to proceed to registration.
Background

This decision concerns an opposition under section 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of trade mark applications 1983911 and 1983919 filed by Sayed Jaffar Musawi and Sayed Mohammad Agha Musawi (‘Applicants’). The details of the trade mark applications are set below:
Trade Mark Number:                    1983911
           Trade Mark:   AGHA JUICE (‘Word Trade Mark’)
           Filing Date:  16 January 2019
Specifications:  See Annexure A
(‘Applicant’s Goods and Services’)
Trade Mark Number:                    1983919
           Trade Mark:   (‘Composite Trade Mark’)
           Filing Date:   16 January 2019
           Goods and Services:   See Annexure B
(‘Applicant’s Goods and Services’)
(Collectively, ‘Trade Marks’)
Both of the Trade Marks were examined, accepted and subsequently advertised for opposition on the 16 July 2019.
On 13 September 2019, Agha Juice Sydney Road Pty Ltd (‘Opponent’) filed notices of intention to oppose, followed by statements of grounds and particulars (‘SGPs’) on 5 December 2019. Notices of intention to defend were filed by the Applicants on 17 January 2020.
The Opponent filed its Evidence in Support on 23 April 2020. On 26 October 2020, the Applicants filed their Evidence in Answer. On 19 July 2021, the Opponents filed its Evidence in Reply.
Following the end of the evidence period the parties were given an opportunity to request a hearing. On 17 August 2021 the Applicant requested to be heard via video conference and the matter was heard before me, a delegate of the Registrar of Trade Marks, on 17 June 2022. The Opponent was represented by Nadiya Khish of Beena Rezaee Legal & Migration. The Applicant was represented by Susan Gatford of Counsel, instructed by Linda Di Trocchio of Parkston Lawyers.
Evidence
Opponent
The Opponent’s evidence consists of the following declarations:
Evidence in Support
Declaration of Muhammad Hussain made on 21 April 2020 with Annexures MH-1 to MH-14.
Declaration of Muhammad Hussain made on 21 April 2020 with Annexures MH-1 to MH-14.
(‘Collectively, the ‘Hussain Declarations’).
Evidence in Reply
Declaration of Muhammad Hussain made on 26 February 2020 with Annexures MH-16 to MH-25.
Declaration of Muhammad Hussain made on 26 February 2020 with Annexures MH-16 to MH-26.
(Collectively, the ‘Second Hussain Declarations’).
I note that the contents of the declarations are largely identical but for the references to the relevant trade marks, some minor differences in formatting, and one additional annexure in the declaration made by Muhammad Hussain on 26 February 2020 in regard to the Composite Trade Mark.
As a preliminary observation, I note that the Opponent claimed information contained within its Evidence in Support to be confidential without identifying which parts of the declarations are commercially sensitive. The onus is on the Opponent to establish the nominated grounds of opposition and it is not possible for me to reach a satisfactory conclusion on those grounds without discussing the Opponent’s evidence. Accordingly, while I will endeavour to refrain from discussing commercially sensitive matters in the Opponent’s evidence, I will discuss the evidence to the degree necessary to provide reasons for my decision.
Mr Hussain, the Director and owner of the Opponent, explains that the Opponent was registered with ASIC on 30 May 2017. On 28 October 2017, the Opponent opened an eat-in and takeaway shop in Brunswick, Victoria, which sells what Mr Hussain refers to as ‘Agha Juice’ type fruit and vegetable juices, milkshakes, ice cream and falooda to the public under the trade mark ‘AGHA JUICE SYDNEY ROAD’ (‘Opponent’s Trade Mark’). The Opponent also provides its goods and services under the following trade mark:
(‘Opponent’s Composite Trade Mark’)
Annexed to the Hussain Declarations are screenshots from Opponent’s Facebook page featuring the Opponent’s Trade Mark and the Opponent’s Composite Trade Mark with posts advertising the opening of the Opponent’s shop dated 20 October 2017. I note that the earliest date included in the Opponent’s Facebook screenshots featuring either of the Opponent’s trade marks is 19 September 2017.
Mr Hussain explains that ‘Agha Juice’ is a brand from Pakistan that opened in the 1980s and became popular for selling fruit and vegetable juices, milkshakes, ice-cream and falooda. Mr Hussain claims that many businesses and shops in Australia sell the same kind of products under the name ‘Agha Juice’. Annexed to the Hussain Declarations is a copy of search results from ASIC Connect dated 20 March 2020 showing various registered business names containing the words ‘Agha Juice’. Mr Hussain opines that people with a Pakistani background or familiarity with the country would see the words ‘Agha Juice’ and understand the type of products being sold.
Mr Hussain is the brother-in-law of Amjad Hussain Syed, one of the original partners of the Applicants’ business. Mr Hussain explains that due to issues within the Applicant’s partnership, Mr Syed agreed to sell his share in the Applicant’s business to the Applicants. Mr Hussain claims that his knowledge of the dissolution of the Applicants’ partnership with Mr. Syed comes directly from Mr Syed. Annexed to the Hussain Declarations is the Dissolution of Partnership Agreement between Mr Syed and the Applicants. Mr Hussain alleges that Mr Syed did not transfer ownership of the intellectual property rights of the Trade Marks to the Applicants as part of the Dissolution of Partnership Agreement.
Mr Hussain claims that the Applicant was not the first to use ‘Agha Juice’ as a trade mark in Australia. Rather, Mr Hussain states that Mr Karim Babaie was the first to use ‘Agha Juice’ in Australia via the company Agha Juice Pty Ltd (‘Agha Juice Company’), which was registered with ASIC on 17 July 2014. Annexed to the Hussain Declarations are the following examples of use of ‘Agha Juice’ by the Agha Juice Company:
· Screenshots of the Agha Juice Company’s Facebook page dated 20 April 2015, which feature the words ‘AGHA JUICE’ in Farsi and English:
· The Agha Juice Company’s storefront displaying ‘Agha Juice’ in Farsi:
I note that the Opponent’s submissions make repeated reference to the ‘Bibi Declaration’. This declaration was not included in the Opponent’s evidence at any stage, and, consequently, has been disregarded.
Applicant
The Applicant’s evidence consists of the following declarations:
· Declaration of Sayed Jaffar Musawi made on 9 October 2020 with Annexures SJM-1 to SJM-36.
· Declaration of Sayed Jaffar Musawi made on 9 October 2020 with Annexures SJM-1 to SJM-35.
(Collectively, ‘Musawi Declarations’)
I note that the Musawi Declarations are identical but for references to the respective trade marks and an annexure concerning email discussions surrounding the design of the Applicant’s Composite Trade Mark.
Mr Musawi and his nephew, Sayed Ruhulla Musawi, are the owners of Agha Juice Plus Pty Ltd (‘Applicants’ Business’), which was incorporated on 19 April 2018. The business name ‘Agha Juice Centre’ was registered with ASIC by the Applicants on 20 January 2016.
In August 2016, the Applicants and Mr Syed opened a store in Dandenong, Melbourne called ‘Agha Juice Centre’. Mr Musawi declares that the name ‘Agha Juice’ was coined because the Applicants had previously never heard of the phrase being used in Melbourne and because it was the middle name of one of the Applicants, Sayed Mohammad Agha Musawi.
Mr Musawi declares that the Applicants have continuously used the Trade Marks in connection with the Applicants’ Goods and Services since July 2016. Annexed in the Musawi Declarations are the following examples of trade mark use:
·Photos showing use of the Trade Marks on signage, flyer, displays, banners, menus and in store advertising.
·Screenshots from the Applicant’s Facebook page showing use of the Trade Marks. Mr Hussain declares that the Trade Marks were first used on its Facebook page on 5 August 2016.
·Annexed to Musawi Declarations is a photo of a banner featuring the Applicants’ Composite Trade Mark dated November 2018.
·Promotions featuring the Trade Marks advertising the opening of the Applicants business on 6 August 2016. Also annexed to the Musawi Declarations are banners for other events, such as the first-year anniversary of the Applicants’ business and Australia day.
The Trade Marks have also been promoted via:
·Facebook paid advertising since 2018. Annexed to the Musawi Declarations are copies of receipts of Facebook paid advertising dated from 2018 to 2020.
·Sponsorships of various third-party goods and services. Since June 2019, the Trade Marks have been advertised in Ambulance Active, the Official Journal of the Australasian Council of Ambulance Unions, and AiPol, an organization comprised of police officers from Australia and New Zealand Police agencies.
·Various third-party websites, namely and >
In regard to the dissolution of the partnership between the Applicants and Mr Syed, Mr Musawi states that as there were no registered trade marks in existence at the time the dissolution agreement was signed, and as such, it was not possible to assign any intellectual property rights. Annexed to the Musawi Declarations is a copy of the Dissolution of Partnership Agreement between the Applicants and Mr Syed.
Annexed to the Musawi Declarations is an ASIC historical organization extract for the Agha Juice Company showing that the entity’s initial business name was Merrylands Fresh Juice Pty Ltd. The company name was later changed to Agha Juice Pty Ltd in 2015.
Onus, Grounds and Relevant Date
The nominated grounds of opposition are sections 41, 43, 58, 60 and 62A of the Act.
The Opponent bears the onus of establishing one or more of the grounds of opposition.[1] The required standard of proof is on the balance of probabilities.[2] The date at which the rights of the parties will be determined is the filing date of the Trade Marks, both being the 16 January 2019 (‘Relevant Date’).
Discussion and Reasons
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).
[2] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Section 41
Section 41 provides:
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note:          For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b)    the time of production of goods or of the rendering of services.
Note 2:       For goods of a person and services of a person see section 6.
Note 3:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1:       For applicant and predecessor in title see section 6.
Note 2:       If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
Whether the Trade Marks are capable of distinguishing the Applicant’s Goods and Services requires consideration of the extent to which the Trade Marks are inherently adapted to distinguish those goods and services from the goods or services of other traders. The test for assessing this was outlined in Clark Equipment Co v Registrar of Trade Marks[3]:
[t]he question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[4]
[3] (1964) 111 CLR 511 (Kitto J).
[4] Ibid 514.
The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[5] indicated that the test for distinctiveness is a two-step process. First, it necessary to establish the ordinary signification, or ordinary meaning, of the trade mark in Australia to those concerned with the relevant goods or services.[6] Then once the ordinary signification is established, consideration turns to whether other traders may legitimately desire to use the trade mark in respect of their goods or services.[7]
[5] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ).
[6] Ibid [71].
[7] Ibid.
Ordinary Signification
The Opponent submits that ‘Agha Juice’ is a generic name for range of fruit and vegetable juices, milkshakes, ice-cream and falooda, which were made popular in Pakistan during the 1980s. The Opponent further submits that the words ‘Agha Juice’ are now synonymous with the same style and type of goods that were sold by the Agha Juice brand in Pakistan.
To support this contention the Opponent points to the multicultural population of Dandenong, which the Opponent claims is familiar with ‘Agha Juice’ products, and the existence of many other businesses that use ‘Agha Juice’ to advertise the same variety of food and beverages that became synonymous with the ‘Agha Juice’ brand in Pakistan.
Conversely, the Applicants submit that ‘Agha Juice’ has no ordinary meaning in Australia. Rather, ‘Agha’ would be construed as either a person’s name, as demonstrated with ‘Agha’ being the middle name of one of the Applicants, or a derivative of ‘aga’, a noun used in Turkey and other counties as an honorific. The Applicants emphasise that there is no known edible fruit or juice known as ‘Agha’ or ‘Agha Juice’, nor does the Applicant or any other business sell a product called ‘Agha Juice’.
The basis of the Opponent’s contention is the popularity of a foreign brand called ‘Agha Juice’ that was prominent in Pakistan during the 1980s. However, despite the Opponent’s contention, there is no evidence from the Opponent explaining or otherwise establishing the use of ‘Agha Juice’ in Pakistan. The Opponent’s evidence also does not demonstrate any dilution of the ‘Agha Juice’ brand or any potential connotation that may have developed through the alleged reputation of this brand.
Further, the Opponent’s evidence does not establish any generic or known meaning for the ‘Agha Juice’ in Australia to those who would be concerned with the Applicant’s Goods or Services. The Opponent’s evidence in this respect is limited to use of ‘Agha Juice’ as a business name or trade mark by the Applicant, the Opponent and various third parties. Whilst I acknowledge that there are several businesses utilising ‘Agha Juice’ as part of their business name, this does not indicate ‘Agha Juice’ has an ordinary meaning in relation to the Applicant’s Goods or Services.
In my view, the words ‘Agha Juice’ do not have an ordinary meaning in relation to the Applicants’ Goods or Services. The Opponent’s evidence does not demonstrate, nor do the Opponent’s submissions explain, what the ordinary meaning of ‘Agha Juice’ is, nor why other traders would honestly desire to use ‘Agha Juice’ in relation to their own goods or services. It follows that I am satisfied that the Trade Marks are sufficiently capable of distinguishing the Applicant’s Goods and Services from those of other traders.
The ground of opposition under section 41 of the Act has not been established.
Section 43
Section 43 provides:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
In its SGPs the Opponent particularised this ground of opposition as follows:
The Applicants' trade mark AGHA JUICE is likely to deceive/confuse. Applicant attempting to secure ownership over general rather than special type of juice drink. Registration of AGHA JUICE likely to deceive/confuse consumers into thinking or believing that the Applicant has exclusive rights to an exclusive or scarce product or exclusive right to a recipe only available from the Applicant when this is clearly not the case in relation to goods/services. Consumers would be likely to be deceived or confused by creation of a false impression that Applicant has exclusive right in a connotation that the trade mark or a sign contained in the trade mark has.
Section 43 requires the Opponent to demonstrate that there is a connotation in the Trade Marks and that because of the connotation use of the Trade Marks would be likely to deceive or cause confusion.
A ‘connotation’, in the context of section 43, is a secondary meaning implied by the trade mark.[8]
[8] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).

The Opponent’s assertion that the Trade Marks convey a notion of ownership over the words ‘Agha Juice’, a ‘general… type of juice drink’, is contingent on establishing that other traders would need or desire to use ‘Agha Juice’. The concern over whether the Applicant has an exclusive right to use ‘Agha Juice’ would be more appropriately disposed of under section 41 of the Act. As discussed under that ground of opposition, I am satisfied that both Trade Marks are capable of distinguishing the Applicants’ Goods or Services from those of other traders.
Furthermore, the risk of deception or confusion alleged by the Opponent does not stem from any element of the Trade Marks, but from the attempt to apply for the trade mark registration of ‘Agha Juice’ and rights afforded under the Act through registration of a trade mark. The likelihood of deception or confusion under section 43 of the Act needs to derive from a connotation inherent to the trade mark itself.[9] Accordingly, I am not satisfied that either of the Trade Marks are likely to deceive or cause confusion due to a connotation inherent in the Trade Marks. The ground of opposition under section 43 of the Act is not established.
[9] Ibid.
Section 58
Section 58 provides:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Ownership of a trade mark can be established through authorship and use of a trade mark,[10] or, in the absence of use, a combination of authorship, the filing of an application or an intention to use the trade mark.[11] To succeed in this ground of opposition, the Opponent must establish the following:
·     The Trade Marks are identical, or substantially identical, to an earlier trade mark;
·     The earlier trade mark has been used in respect of good or services that are ‘the same kind of thing’ as the Applicant’s Goods and Services.
·     Another person has an earlier claim of ownership based on use of the earlier trade mark before the Relevant Date.[12]
[10] Moorgate Tobacco Co Ltd v Philip Morris Ltd (no 2) 156 CLR 414 (Deane J); Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [49], [55] (Keane CJ, Stone and Jagot JJ).
[11] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ) (‘Pham’); Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601, 627 (Dixon J).
[12] Pham (n 11) [50].
In its SGPs the Opponent particularised this ground of opposition as follows:
A business based in Merrylands, NSW has first and continuous use of the common law trade mark from 2014 in same classes of goods/services; Company Agha Juice Pty Ltd ACN 600 770 401 registered with ASIC on 17.07.14. The product generally described as Agha Juice is a kind of juice-drink originating in Pakistan. First Australian user of words has a first-use right to the trade mark at common law. Multiple businesses operate using words AGHA JUICE and have been using trade mark AGHA JUICE in before Applicants' priority date with implied consent of first-use owner of the common law mark.
In its submissions the Opponent also relied on the Opponent’s Trade Mark as a basis for this ground of opposition.
Turning first to the Opponent’s Trade Mark, I note that the Opponent’s Trade Mark was not particularised in either of the Opponent’s SGPs as a basis for the section 58 ground of opposition. Furthermore, there is no evidence that demonstrates use of this trade mark prior to the first use of the Trade Marks. The Opponent’s evidence indicates that it did not start trading until after its incorporation on 30 May 2017. The Applicants claim first use of their Trade Marks on 20 January 2016. Annexed to the Musawi Declaration is a screenshot of a poster advertising the opening of the ‘Agha Juice Centre’ dated 6 August 2016. The Hussain Declarations also include screenshots from the Applicants’ Facebook page featuring the Trade Marks dated 5 August 2016.
Regarding the Opponent’s claims that the Agha Juice Company was the first to use ‘Agha Juice’ in Australia, the Opponent relies on the registration of the Agha Juice Company on 17 July 2014, and a screenshot of Agha Juice Company’s Facebook page with posts dated 21 April 2015 that display the Agha Juice Company’s trade marks. For convenience I have reproduced the trade marks below:

Agha Juice Company Trade Marks

47.

48. (‘Collectively, Agha Juice Composite Trade Marks’

(‘MFJ Trade Mark’)

(Collectively, ‘Agha Juice Company Trade Marks’)

I also note that ‘Agha Juice Merrylands’ is the account name of the Agha Juice Company Facebook page.
Having considered the Opponent’s evidence, I am not satisfied that the evidence demonstrates that that the Agha Juice Company has used a substantially identical trade mark prior to the first use of the Applicants’ Trade Marks by the Applicant. The registration of the business name does not demonstrate that ‘Agha Juice’ has been used as a trade mark. There is a clear distinction between conducing business under a company name and using a trade mark to distinguish goods and services in the course of trade.[13] Similarly, I am not convinced the use of ‘Agha Juice Merrylands’ as an account name is trade mark use. There is no declaration or evidence from Mr Babaie regarding any use of these trade marks by his company, or how the Agha Juice Company utilises its Facebook page in the course of running its business. Whilst the Facebook posts referenced in the Hussain Declarations are dated prior to the first use of the Applicants’ Trade Marks, there is no indication in the screenshots of what goods or services are being offered for sale by the Agha Juice Company, nor of the nature of the Agha Juice Company’s business activities.
[13] Shahin Enterprises Pty Ltd v Exxonmobile Oil Corporation [2005] FCA 1278, [73] (Lander J).
I note that the one of the Facebook posts includes a photo of a juice bar, which are services of the same kind as the Applicants’. However, this photo clearly shows that the bar is branded under the MFG Trade Mark, not ‘Agha Juice’ or the Agha Juice Composite Trade Marks. The MFJ trade mark is not substantially identical to either of the Trade Marks. The test for whether trade marks are substantially identical was expressed by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia Limited)[14]:
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.[15]
[14] [1963] HCA 66.
[15] Ibid [12].
The letters MFJ are prominently displayed in MFJ Trade Mark. MFJ Trade Mark does not feature the words ‘Agha Juice’, which are the sole features of the Applicants’ Word Trade Mark and an essential feature of the Applicants’ Composite Trade Mark. Noting these differences, I do not consider there to be a total impression of resemblance between the MFJ Trade Mark and either of the Trade Marks.
In lieu of any supporting contextual material from the owner of the Agha Juice Company Trade Marks, I am not satisfied that there is clear or reliable evidence of any genuine use or intention to use these alleged earlier trade marks in the course of trade. I would also be unable to determine whether or not any relevant Agha Juice Company Trade Marks were used on goods or services of the same kind as the Applicants’.
Having regard to deficiencies in the Opponent’s evidence and the above reasons, I am not that satisfied that any other party has an earlier claim of ownership to the Applicants’ Trade Marks. The ground for opposition under section 58 has not been established.
Section 60
Section 60 provides:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
To establish this ground of opposition, the Opponent must establish:
·A reputation existing in another trade mark in Australia before the Relevant Date; and
·That because of the reputation of the other trade mark, use of the Trade Marks would be likely to deceive or cause confusion.
Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[16] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[17]
[16] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[17] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[18] or providing evidence of high volume of sales,[19] advertising expenditure or other promotion of goods or services to which the trade mark applies.[20] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[21]
[18] Ibid [118].
[19] McCormick (n 16) [86].
[20] Ibid.
[21] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
The reputation relied on by the Opponent must be amongst a significant or substantial number of persons.[22] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[23]
[22] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).
[23] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
The Opponent relies on the alleged reputation of ‘Agha Juice’ as used by the Agha Juice Company. The Opponent claims that Agha Juice Company has used ‘Agha Juice’ as a trade mark since 17 July 2014 and has developed a reputation in ‘Agha Juice’ such that use of the Applicants’ Trade Marks would be likely to deceive or cause confusion.
As indicated in my discussion of the section 58 ground, there are deficiencies regarding the Opponent’s evidence of the Agha Juice Company’s business activities. These issues are also relevant to the Opponent’s assertions under section 60 of the Act.
Whilst information on sales figures, revenue and advertising expenditure is not determinative to the question of reputation, the absence of these metrics makes it challenging for the Opponent to demonstrate the extent of any reputation that may have developed from use of the ‘Agha Juice’ by the Agha Juice Company. The Opponent’s evidence does not include any evidence of sales, advertising expenditure, promotions or any other indicia for commercial exposure of a trade mark. Rather, the Opponent’s evidence is limited to a list of company names registered with ASIC and screenshots of the Agha Juice Company’s Facebook page. Based on this limited information, I cannot be satisfied that any reputation has accrued from the Agha Juice Company’s use of ‘Agha Juice’.
I also note that in its SGP the Opponent stated that ‘many businesses in Australia’ have acquired a reputation using the mark generically in the same classes of goods/services as the Applicant’. There is an inherent difficulty in establishing a reputation for a trade mark that is used ‘generically’. In order for a trade mark to begin to accrue a reputation it would need to point to a single source of origin. This would be challenging if the use of the trade mark was generic as such use would likely fail to distinguish the traders goods or services from those of other traders.
As the evidence is not sufficient to establish that the Agha Juice Company had a reputation in a trade mark in Australia, the ground of opposition under section 60 is not established.
Section 62A
Section 62A provides:
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The Opponent has made no submissions on this ground of opposition. In its SGPs, the Opponent states:
Bad faith test: Subjective element made out by the knowledge Applicant had at the time of making the application. Applicant knew, or ought to have known at the time of application, of widespread commercial use of words “Agha Juice” in Australian business in same classes of goods/services and knew that the words “Agha Juice” describe a generic type of juice drink that is incapable of trade mark ownership/register protection and Application contrary to basic function of register. Objective element is made out in light of actual/implied knowledge; that the behaviour fell short of acceptable commercial standards in seeking leverage from trademark.
Whether the application to register the Trade Mark was made in bad faith requires me to first consider the Applicant’s state of knowledge at the time of making the application and then decide whether the Applicant’s behaviour fell short of acceptable commercial standards.[24]
[24] Fry Consulting Pty Ltd v Sports Warehouse (No 2) [2012] FCA 81, [164]-[167] (Dodds-Streeton J).
I have already concluded that ‘Agha Juice’ is not a generic description of a type of juice, or any of the other goods specified in the Applicants trade mark applications. Even had been the case, applying to register a trade mark that may be a generic description of a product does not mean the application was made in bad faith. In this regard, I note that Mr Musawi declared that the Applicants were not aware of any generic meaning associated with ‘Agha Juice’ and that their adoption of the of the Applicants’ Trade Marks was done in good faith.
As there are no other aspects of the Opponent’s evidence that point to any activity or actions taken by the Applicants that might be indicative of behaviour that is unscrupulous, underhanded or otherwise unconscientious in character, I am not satisfied that the applications for the Trade Marks were made in bad faith.
The section 62A ground of opposition is not established.
Decision
Section 55(1) of the Act relevantly provides:
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.
The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade marks 1983911 and 1983919 may proceed to registration one month from the date of this decision.
Should the Registrar be served with a notice of appeal before the registration of the Trade Marks, I direct that the registration of the Trade Marks not occur until the appeal has been decided or discontinued, and that any disposition of the applications be in accordance with the Court’s orders or direction.
Costs
Both parties sought an award of costs. As the Opponent was not successful in the opposition, I award costs against the Opponent under section 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
16 September 2022
Annexure A
Goods and Services of Trade Mark Numbers 1983911
Class 29: milk and milk products; milkshakes; flavoured milk drinks; drinks based predominantly of milk, yoghurt, dairy products, Milk drinks; Yoghurt based drinks; Yoghurt drinks; Almond milk; almond milk beverages; Almond milk-based beverages; dairy products; Soya based dairy substitutes; soya bean milk, flavoured soya bean milk; edible soy proteins; food protein for human consumption; cooked, crystallised, dried, canned or candied fruits; frozen fruit; fruit based snack food, fruit based dairy products; fruit concentrates; fruit desserts; Fruit in syrup; Fruit jams; Fruit jellies; fruit puree; Fruit salads; Fruit spread
Class 30: Ice Cream
Class 32: non-alcoholic beverages; fruit drinks, vegetable drinks; drinks based upon fruit and/or vegetables; drinks containing or consisting of fruit, vegetables, fruit and/or vegetable extracts; fruit juices, vegetable juices; drinking water; bottled non-alcoholic drinks, including those containing or consisting of fruit, vegetables, fruit and/or vegetable extracts; Bottled fruit drinks; Bottled fruit juices; syrups and other preparations for making beverages; non-alcoholic beverages contain protein supplements; Protein-enriched sports beverages; Concentrates for use in the preparation of fruit juice drinks; Fresh fruit juices; Frozen concentrated fruit drinks; Frozen concentrated fruit juices; Frozen fruit juices; Fruit ale; Fruit based drinks; Fruit juice beverages that contain multi vitamins
Class 43: juice bar services; Providing of fruit juices, vegetable juices, juice blends and fruit juice drinks; juice bar services, namely providing drinks consisting of specific blends of fruits, vegetables, fruit juices, vegetable juices, supplements, protein or dietary supplements and made to order for customers; Preparation of food and drink; Providing food and drink; Snack bars (provision of food and drink); Takeaway food and drink services; Cafe services; Cafes; Catering services; Bar services; Salad bar restaurant services; Cafeterias; Cafeteria services; Self-service cafeteria services; Canteen services; Coffee shop services; Snack-bars; Food preparation; Arranging of banquets; Provision of information relating to the preparation of food and drink
Annexure B
Specification for trade mark number 1983919
Class 29: milk and milk products; milkshakes; flavoured milk drinks; drinks based predominantly of milk, yoghurt, dairy products, Milk drinks; Yoghurt based drinks; Yoghurt drinks; Almond milk; almond milk beverages; Almond milk-based beverages; dairy products; Soya based dairy substitutes; soya bean milk, flavoured soya bean milk; edible soy proteins; food protein for human consumption; cooked, crystallised, dried, canned or candied fruits; frozen fruit; fruit based snack food, fruit based dairy products; fruit concentrates; fruit desserts; Fruit in syrup; Fruit jams; Fruit jellies; fruit puree; Fruit salads; Fruit spread
Class 30: Ice Cream
Class 32: non-alcoholic beverages; fruit drinks, vegetable drinks; drinks based upon fruit and/or vegetables; drinks containing or consisting of fruit, vegetables, fruit and/or vegetable extracts; fruit juices, vegetable juices; drinking water; bottled non-alcoholic drinks, including those containing or consisting of fruit, vegetables, fruit and/or vegetable extracts; Bottled fruit drinks; Bottled fruit juices; syrups and other preparations for making beverages; non-alcoholic beverages contain protein supplements; Protein-enriched sports beverages; Concentrates for use in the preparation of fruit juice drinks; Fresh fruit juices; Frozen concentrated fruit drinks; Frozen concentrated fruit juices; Frozen fruit juices; Fruit ale; Fruit based drinks; Fruit juice beverages that contain multi vitamins
Class 43: juice bar services; Providing of fruit juices, vegetable juices, juice blends and fruit juice drinks; juice bar services, namely providing drinks consisting of specific blends of fruits, vegetables, fruit juices, vegetable juices, supplements, protein or dietary supplements and made to order for customers; Preparation of food and drink; Providing food and drink; Snack bars (provision of food and drink); Takeaway food and drink services; Cafe services; Cafes; Catering services; Bar services; Salad bar restaurant services; Cafeterias; Cafeteria services; Self-service cafeteria services; Canteen services; Coffee shop services; Snack-bars; Food preparation; Arranging of banquets; Provision of information relating to the preparation of food and drink

[2022] ATMO 162

16 September 2022

Key Legal Topics

Areas of Law

Commercial Law

Statutory Interpretation

Legal Concepts

Appeal

Costs

Remedies

Statutory Construction

Delegate:	Timothy Brown
Representation:	Opponent: Nadiya Khish of Beena Rezaee Legal & Migration. Applicant: Susan Gatford of Counsel instructed by Linda Di Trocchio of Parkston Lawyers.
Decision:	2022 ATMO 162 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under sections 41, 43, 58, 60 and 62A – no grounds established – trade marks to proceed to registration.