Shawky & Yehia El Hgar v Sam Ashry

[2002] ATMO 103

TRADE MARKS ACT 1995

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

Re:Opposition by SHAWKY & YEHIA EL HGAR to registration of trade mark application 787068(29, 31) - MR EL OMDA AND DEVICE - in the name of SAM ASHRY.

Background

Trade mark application 787068 was filed by Ali Attia on 2 March 1999.  It is for

registration of the following trade mark:

The applicant has advised that the Arabic characters appearing in the trade mark may be transliterated as EL OMDA and HADRAT and translated into English as A TITLE FOR A VILLAGE LEADER and MISTER, respectively.

The application was examined at the Trade Marks Office and found to be deceptively similar to a prior one by Shawky and Yheia El Hgar (the Hgars), of which I will have more to say below. Despite this objection by the examiner, the present application was able to proceed under the provisions of s 44(4) of the Trade Marks Act 1995 (the Act).  This was because the applicant was able to show that he had used his trade mark before the date on which the Hgars had filed their own application.  The present application was therefore duly advertised as having been accepted for registration.  Registration is now opposed by the Hgars. 

Evidence

Both sides have followed the procedures set out in part 5 of the Trade Mark Regulations and served and filed evidence to support their positions.  I have, during the course of the opposition proceedings, unavoidably become aware that there is considerable personal animosity between the parties.  Secondly, it became necessary to deal with a string of new issues that first emerged in the evidence in reply, which would normally be the third and final stage.  Accordingly, in order that both sides should feel that they have had ample opportunity to address the various issues, I have been somewhat lenient with the grant of permission to bring in further evidence.

The evidence, including the additional evidence that has come in with my permission, is as follows:

Evidence in support:  declaration by Shawky El Hgar with annexures 1-8.

Evidence in answer:  declaration by Sam Ashry with annexures 1-4 and exhibits SA 1-11.

Evidence in reply:  declaration by Shawky El Hgar with annexures A1-11.

Further evidence:

• Sam Ashry: Declaration dated 13 March 2002 with exhibits SA12-16.  I note here that I have not granted permission for exhibit SA17 to come into evidence.  That exhibit went to certain aspects of the history of Mr Hgar, family matters that are utterly extraneous to the present opposition.  In so far as it purported to be relevant to the credibility of Mr Hgar, I was prepared to give it no weight at all.  I note also that a delegate of the registrar had already refused to allow this item in as further evidence in relation to the Hgars own application.  Similarly, the fact that the relevant exhibit had been in existence for more than a year before it was tendered in the present matter was not addressed.  I have therefore excluded that exhibit from the current matter.

• Shawky El Hgar:  Declaration dated 15 April 2002 - by way of a right of reply to the above and also raising new matters

• Sam Ashry: Declaration dated 28 June 2002, with exhibits SA18-22.  This I allowed in as a final reply to issues to date.

General matters

Following the evidence stages up to and including evidence in reply, a hearing was set down.  I was assigned to hear and decide the opposition, under delegation from the Registrar of Trade Marks.

By the time of the hearing the application was proceeding in the name of the new owner, Sam Ashry.  Mr Ashry is the beneficiary of an assignment from Mr Attia dated 20 December 2001.  Before that date, in the evidence in answer, Mr Ashry had already described himself as the co-proprietor of the trade mark.  He has declared that he, rather than Mr Attia, has been principally responsible for the conduct of the business under the trade mark.

At the hearing, Mr Ashry was represented by Sean McManis, solicitor, of the firm of Baldwin Shelston Waters.  The Hgars, as the opponents, were represented by their solicitor, Michael Ayache, of the firm of Vosnakis and Associates.  At that time, the first round of further evidence emerged.  Subsequently, in order to allow the additional material to be fully addressed, I allowed both sides an opportunity to file written submissions.  Mr McManis has done so but Mr Ayache has not.

It is opportune, in mentioning the opponents in the present matter, to also note that the Hgars have now successfully registered their own trade mark, number 769958, the application that had been an initial impediment to the present one.  The Hgars' trade mark is as follows:

 

That trade mark is registered in classes 29 and 31, for frozen vegetable and roasted seeds, and for seeds, respectively.  The registration of application 769958 was opposed by Soraya Ashry, who was then the wife of Sam Ashry, the applicant in the current matter.  Undisputed evidence in the present opposition suggests that the two are in a joint family business.  Ms Ashry's opposition was not successful on either of the two grounds relied on.  In particular, I note that the hearing officer concluded that the Hgars had a good claim to ownership of the mark in question.  The hearing officer concluded that there was no ownership conflict arising from the use of the following trade mark by Mr Ashry:

 

I will note, at this point, that there is a disturbing strand to the present opposition proceeding.  The applicant, via his advocate, Mr McManis, has made strong submissions that he was wronged, in the earlier opposition proceeding, due to a lack of representation and an inability to have all the relevant evidence submitted and fully considered.  His present advocate submitted, and I accept, that Mr Ashry is a man of good standing within the Arabic community and that he feels that he has suffered unfairly in proceedings at the Trade Marks Office to date.  However, it is beyond the role of the present opposition to revisit past decisions.  What is at issue here and now is not the substance of Mr Ashry's claim to ownership of a mark used by the Hgars, but the Hgars opposition to a mark that Mr Ashry asserts has been in use for a specified period of time.  This latter focus brings into issue things that, for reasons that I will set out below, have major consequences.

Grounds of opposition

The Hgars, in their notice of opposition, nominated grounds of opposition provided for under sections 58, 59, 60, 61 and 62.  However, at the hearing Mr Ayache attacked the application under two principal grounds, sections 60 and 62. 

Decision

Section 60 deals with a conflicting and deceptively similar trade mark that, prior to the filing of the application under attack, had acquired a reputation such that use of the attacked trade mark would be likely to deceive or cause confusion.  The material relied on by the Hgars is not such that I would have confidence in my own conclusion either way under this provision.  This is not a reflection on the Hgars evidence, although Mr Ashry is openly critical of the veracity of Mr El Hgar, as was Mr McManis.  Indeed, some of Mr El Hgar's evidence has been controverted, though the disputed evidence goes to a trade mark that is not the one now at issue.  All things considered, I think it is fairer to the views of the parties to simply acknowledge that the trend of the evidence is not easy to discern with confidence.

More to the point, the goods of interest are apparently sold into a specialized market in the Arabic community in Australia.  In view of a variety of reasons, I am not sure how much weight I should give to various conflicting pieces of evidence that go to beliefs and perceptions within that community.  Therefore, I prefer to deal with this application under the terms of s 62 where, for reasons that will emerge, there can be only one outcome.

Section 62 lays down that:

Application etc. defective etc.

62. The registration of a trade mark may be opposed on any of the following grounds:

(a) that the application, or a document filed in support of the application, was amended contrary to this Act;
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

Mr Ayache indicated that the essential thrust of the s 62 ground was the wrong statements he alleged Mr Ashry and Mr Attia had made to gain acceptance of the application for registration.  The applicant's difficulties at that point arose from s 44, of which I set out the relevant parts, omitting subsection (2):

Identical etc. trade marks

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

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:  For deceptively similar see section 10.

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

...

(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.

I have referred to the history of the application at the examination stage. The present application was accepted under the provisions of s 44(4). This was on the express finding that the trade mark had been used by the applicant prior to the filing date of the Hgars' application, 12 August 1998. Much of the evidence has striven to document, impugn or shore up, as the case may be, the details of the use of various marks. The evidence that finally emerges is somewhat less than satisfactory in view of the claims and counter-claims. However, it is clear that, for whatever reason, the mark now sought to be registered is simply not the one that was in use at the critical date.

Mr Ashry, in his evidence in answer, noted the first, and highly disputed, use of what I will call the EL OMDA trade mark.  This is the mark on which he based his opposition to the Hgars' application.  However, he goes on to say:

Around February 1999, it was decided that the food products being imported should be marked MR EL OMDA and at around the same time Ali Attia and I selected the trade mark which is the subject of Trade Mark Application No 787068 ("the MR EL OMDA Logo").  I indicated to our supplier Trusty Impex Co that I would like a different packaging design including the name MR EL OMDA and they offered me the MR EL OMDA Logo which was agreed to and has subsequently been used.

Since June 1999, roasted seeds and frozen vegetables imported by me have been traded under the mark MR EL OMDA and/or the MR EL OMDA logo.  Shown to me now and marked exhibit SA6 are samples of use of MR EL OMDA AND THE MR EL OMDA Logo.  While current packaging bears MR EL OMDA or the MR EL OMDA Logo, some EL OMDA is still on the market.

He quotes shipping details showing that the first produce under the MR EL OMDA Logo was dispatched under a bill of lading dated 4 November 1999.  The same table in his declaration shows that earlier shipments were under the EL OMDA trade mark, not MR EL OMDA.  For completeness of the picture, I will note that Mr Ashry makes various allegations about what would amount to the doctoring of exhibits supporting the Hgars claim to be first user of the trade mark EL OMDA.  Mr El Hgar has replied in kind.  I cannot unravel this tangle and in the end I have judged it unsafe, and unnecessary, to do so.

If I revert to the history of this matter, and of the Hgars' application, one thing is very clear.  Mr Ashry did not, during examination of his own application, draw any apparent distinction between the trade marks EL OMDA and MR EL OMDA.  His declaration was simple, and it may be that he unwittingly referred to the present trade mark as the EL OMDA trade mark simply because those words are a convenient, if significantly incomplete, description of the present trade mark.  His declaration was taken at face value as being relevant and sufficient, and the application was accepted. 

However, Mr Ashry clearly appreciates the difference between the trade marks EL OMDA and MR EL OMDA, as his evidence shows.  In the declaration of 13 March 2002, he again refers to this, and details matters that he has found from his supplier, an Egyptian company that "has supplied me with goods marked EL OMDA and MR EL OMDA".  The distinction Mr Ashry draws between marks is no abstract one and the addition of the word MR makes a very noticeable difference in the look of the mark.  Examples from SA6 bear this out.  Mr Ashry is in the position, therefore, of having either made an innocent mis-statement or of having failed to fully disclose facts that were relevant to the decision to accept the trade mark.

Now that full evidence has been brought into the opposition forum, the matter takes on a new significance. The difference between the EL OMDA trade mark and the subject mark may not preclude a finding of the deceptively similarity of the trade marks, but a much narrower distinction is at the core of, for instance, the ownership question under s 58. The question therefore arises, "Now that the facts are known, is Mr Ashry still entitled to rely on s 44(4)?"

I will repeat the provision of s 44(4) for convenience:

(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

Its terms are powerful, giving a real benefit to any applicant that can come within its scope.  Equally, and unlike s 44(3), if its terms are triggered there is no scope for the Registrar of Trade Marks to exercise discretion to withhold acceptance.  I note also that there is nothing in its terms to suggest that anything less than use of the actual trade mark in question or, at the extreme, that trade mark with additions or alterations that do not substantially affect its identity (s7), should be considered.  Whichever of these approaches I take, the mark allegedly used by Messrs Ashry and Attia before the Hgars filed their own application is significantly different to the one Mr Attia actually applied to register, and different in a way that substantially affects the identity of the mark.  Accordingly, I find the ground of opposition under s 62 has been established. 

Mr McManis, perhaps anticipating such a conclusion, argued that s 44(3) should also be available to the applicant. 

That provision reads:

(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.

However, such a course has its difficulties.  Firstly, it would be hard to allow the honest use of one mark to justify the registration of another as a matter of general principle.  It would be particularly so when, as here, an opponent has been successful in attacking the accuracy of a key statement that attended the acceptance. 

Conclusion

I have found that the ground under s 62 is established, and must decide, under s 55, if the application is to be registered or otherwise, "having regard to the extent (if any) to which any ground on which the application was opposed has been established".

Mr McManis, in his final written submission, has directed most of his argument at issues surrounding the EL OMDA trade mark.  Given the extent of the difficulties between the parties, that was inevitable.  He has, in concluding these arguments, argued simply that s 44(3) allows the registrar to issue a fair decision.  However, I think that Mr McManis was also arguing that his client should, as a good and honest man, be given a decision that is favorable, despite the fact that part of the overall outcome, in the previous opposition proceedings, has already gone in favor of the Hgars.  I do not believe that such a sweeping application of s55, to be used in one matter to right perceived, or even actual, wrongs in another, is open to me.

Accordingly, the ground under s 62 having been established, I refuse to register the trade mark.  I refuse, in the circumstances of this case, to make any order as to costs.

Terry Williams

Hearing Officer

Trade Marks Hearings

21 November 2002