Soraya Ashry v Shawky El Hgar

[2000] ATMO 58

TRADE MARKS ACT 1995

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

Re:Opposition by Soraya Ashry to registration of trade mark application 769958 - EL OMDA  HAJJAR and device - filed in the names of Shawky El Hgar

and Yehia El Hgar

Background

This matter concerns a multi-class application number 769958 for registration of a trade mark, which was filed on 12 August 1998 in the names of Shawky El Hgar and Yehia El Hgar (the applicants).  The trade mark of this application is shown below:

 

The goods in respect of which the applicants wish to register the mark are:

Frozen vegetables, roasted seeds, in class 29

Seeds, in class 31.

Acceptance of the application was advertised in the Australian Official Journal of Trade Marks of 21 January 1999.  The application bears the following endorsement:

The applicant has advised that the Arabic characters appearing in the trade mark may be transliterated as EL OMDA and HAJJAR, both of which are surnames.

On 23 February 1999, a notice of opposition was filed to registration of the mark by Soraya Ashry (the opponent).  The grounds upon which the opponent relies are in terms of sections 58, 59 and 60 of the Act.  Together with the notice of opposition, the opponent filed some submissions and annexures in relation to the opposition to which, in this decision, I will refer under the headings 'The Evidence' and 'Submissions and discussion'.   

The hearing on the opposition was held in Sydney.  At the hearing, Mr Sam Ashry appeared on behalf of the opponent, having produced a statutory declaration made by the opponent, authorising him, the opponent's husband, to represent her interests at the hearing.  No representations, either oral or in written form, were made by the applicants. 

The evidence
The evidence in support comprises a statutory declaration with annexures, by Carlos Bielli, who is employed by Naef & Associates, the solicitors instructed by the opponent to file the notice of opposition. The eight annexures to Mr Bielli's declaration are identified by the letters  'A' to 'H' in alphabetical order.  These include samples of packaging of the opponent's products, adhesive labels, copy of a certificate from the Department of Health in Egypt and copies of the bill of lading.  The annexures, which accompanied the notice of opposition, consist of eleven "forms of acknowledgment" from retailers and a Certificate of Registration of a Business Name, the business name being Bavaria Trading - Import & Export.  The proprietor of this business name is identified as Soraya Ashry, the present the opponent.   

The statutory declaration filed as evidence in answer is from Shawky El Hgar (Mr El Hgar's first declaration), who declares that it has been made with the authority from Yehia El Hgar.  The declarant has affixed a large number of exhibits to his declaration under letters 'A' to 'L'.  These include photocopies of a Certificate of Registration of a Business Name 'El Omda', registered on 11 August 1998 (the name of the proprietor being Shawky El Hgar), advertising material, labels, packaging of products, bills of lading, certificates from the Department of Health in Egypt, invoices, quarantine directions relating to inspection of products, and food inspection reports.

A statutory declaration from Dr Yehia Arfa forms evidence in reply.  Mr Arfa recalls a meeting between Mr Ashry on behalf of his wife - the opponent - and Mr El Hajjar (no given name is stated) in the presence of the declarant.   At that meeting, to a question raised by Mr Ashry as to why Mr El Hajjar had adopted the name 'El Omda', Mr Hajjar had referred to some wrongs done to him in the past.  It transpired that Mr El Hajjar was willing to reconsider his "position", if he were to be paid an amount of $20,000.00.  In response to this, Mr Ashry had indicated that he would be taking legal action on the allegedly illegal appropriation of the name 'El Omda' by Mr El Hajjar.                 

The applicant was successful in being granted permission to file further evidence.  It is a statutory declaration by Shawky El Hgar (Mr El Hgar's second declaration), filed with the authority from Yehia El Hgar.   Mr El Hgar does acknowledge that the meeting, to which Mr Arfa referred in his declaration, took place and that the transfer of the business name to the opponent was raised, subject to payment of the mentioned amount, but he denies "stealing" the business name from the opponent, claiming that he had used it even before the opponent had thought of her business venture. 

Submissions and discussion
As a preliminary comment, I must explain that, at the hearing, Mr Ashry showed me documents, some of which he had obtained under the Freedom of Information Act, and therefore, in his opinion, those documents should be admissible for the purpose of my decision on the present opposition. 

As none of the documents he produced had been served on the applicants, I reminded Mr Ahsry that any evidence in support of the opposition must conform with the relevant provisions of the Trade Marks Act and Regulations.  I will make further comments in relation to this matter in my decision.  

S.58 - ownership of the mark
In the written submissions that accompanied the notice of opposition in relation to the s.58 ground, the solicitor acting for the opponent at the time of filing the notice of opposition has stated that the reason for the applicants' adopting the name EL OMDA was the success of the marketing of the product under the name by the opponent.  The applicants had become aware of the name in early July 1998.  Mr Ashry submitted that the choice of the words for use as the applicants' business name was a deliberate attempt by Mr Shawky El Hgar to injure the opponent's business, because of an event in the past which did not favour Mr El Hgar.   

S.58 of the Act states that -

58.  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.

It is well settled law that the term "owner" under the Trade Marks Act 1995 is to be read in the same sense as it was under s.40 of the Trade Marks Act 1955.  A person who claims ownership rights in a mark may apply to register the mark.  These provisions are expressed in s.27:

27.(1)         A persons may apply for registration of a trade mark in respect of goods and/or services if:
(a)   the person claims to be the owner of the trade mark; and
   (b)   one of the following applies:

(i)  the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii) the person intends to assign the trade mark to a body corporate that    

is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

In order to consider the issue concerning ownership in opposition proceedings, it must be shown that the opponent's mark, upon which it relies to claim ownership rights, is substantially identical with the mark the subject of the application for registration - Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) AIPC 91-049. Additionally, the goods or services involved must be the 'same kind of thing' - Re Hicks' Trade Mark (1897) 22 VLR 636 at 640 - and the use of the mark or application to register the mark must pre-date the applicant's claim to ownership. An applicant can claim its ownership rights based on the date of its application, or the first use of the mark, whichever is the earlier date.

The opponent has provided a number of samples of adhesive labels and packaging material to illustrate how the words EL OMDA and the device of a man with a turban are used in the trade.  I will reproduce below copy of a plastic bag as representative of this material:

The opponent has indicated use of its mark in respect of frozen vegetables and roasted seeds, hence covering the same goods as are nominated in class 29 of the subject application. 

In relation to substantial identity of the marks, in Carnival Cruise v Sitmar, supra, following a reference to proprietorship in The Shell Co  of Australia Ltd v Rohm and Haas Co (1949) 78 CLR 601, Gummow J said, in Carnival Cruise v Sitmar, at 38,114:

When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice.  The phrase "substantially identical" as it appears in s.62 (which is concerned with infringement) was discussed by Windeyer J. in The Shell Company of Australian Limited v Esso Standard Oil (Australia) Limited (1961-1963) 109 C.L.R. 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.    

The test in Shell v Esso, to which his Honour has referred in the above passage, reads as follows:

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. 

Being mindful of the fact that, to determine whether a mark is substantially identical with another mark the marks are to be viewed side by side, on comparing the applicant's mark and the opponent's mark exhibited under 'F' by Mr Bielli and reproduced above, I make the observations as follows.  In both marks the dominant element is the head of a man wearing a headgear of what appears to be a turban, the shoulders of the men being partially visible.  One man is smiling, whereas the other man's facial expression appears to be serious, or is hidden behind the thick moustache.  Of what can be seen of the vertically striped shirt the man is wearing in the applicant's mark, it appears to be a shirt without a collar, whereas the opponent's man could be wearing a uniform jacket with a stiff collar.  Another distinguishing element between the marks is inherent in the prominent stripes that extend from half of the circle device that surrounds the head in the opponent's mark.  Notable differences are also discernible between the marks in the words included therein: while both marks contain the words  EL OMDA, together with Arabic characters, an additional word HAJJAR is featured in the applicant's mark.  The fact that the marks share a device element of two men with turbans, or some other similar head gear, as well as the words EL OMDA which are also included in the marks, is insufficient to find that the marks are identical or virtually the same mark, because the other elements which appear in the marks are dissimilar, creating a somewhat different impression of each of the marks.               

Having applied the appropriate guidelines as are set out in Shell v Esso, supra, I do not consider the marks to be substantially identical.  As a result of such a finding, the opposition based on s.58 does not succeed.

S.59 - applicant not intending to use the trade mark
The opponent's submissions in writing assert that the applicants do not appear to have on the market any products under the brand name EL OMDA as at the date of the submissions.   The opponent can therefore conclude, the submissions maintain, that such a name has never been used by the applicants and the applicants' purpose is, in the main, to deprive the opponent of an opportunity to continue using its trade mark. 

S.59 of the Act provides that:

59.  The registration of a trade mark may be opposed on the ground that the applicant does not intend:
   (a)    to use, or authorise the use of, the trade mark in Australia; or
   (b)    to assign the trade mark to a body corporate for use by the body
           corporate in Australia;
in relation to the goods and/or services specified in the application.

The onus rests on the opponent to prove no intention to use the mark on the part of the applicant.  This was made clear in Aston v Harlee Manufacturing Co (1960) 103 CLR 391, where Fullagar J said at 401:

[T]he making of the application itself is, I think, to be regarded as prima facie evidence of intention to use.  I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent …  of proving the absence of intention. 

For the opponent to succeed in relation to this ground, it needs to show that, although it would have been assumed that the applicant's intention to use the mark did exist at the time of accepting the application, in accordance with the provisions of s.27 which I have quoted in relation to the s.58 ground, such intention never existed, or that it was no longer present at the date of opposing the mark for registration.  Lack of intention to use the mark is normally difficult to establish by the opponent as it is not sufficient to show that the mark applied for has not been used at all at the date of opposition.  It must be shown that the applicant did not have the intention to use the mark.   

It is not a requirement under the Act for the applicant to use the mark immediately upon applying for its registration.  Indeed, the Registrar has taken the view that, on some occasions, an applicant may desire to wait until the mark is registered before commencing use of the mark - Michael Sharwood & Partners Pty Ltd v Fuddruckers Inc (1989) AIPC 90-596 at 39,188. Whilst I note the different versions of the trade mark in the applicants' evidence, and the fact that these do not appear to be related to the applicants but to a company Hajjar Trading International or Hgar Trading International, unless the opponent can point to some material evidence that the applicants filed the application for a different purpose than with the intention to use the mark, or that they have abandoned their intention to use it since the date of filing the application, I am bound by the Act and case law to find that the opponent's have not succeeded on this ground of opposition.

S.60 - trade mark similar to trade mark that has acquired a reputation in Australia
In the brief statements submitted by the opponent in writing, the opponent relies on the provisions of s.60 in claiming that the names EL OMDA or EL OMDA HAJJAR are designed to confuse the consumers.  In this regard, the opponent also invokes the provisions of  s.52 of the Trade Practices Act. 

At the hearing, Mr Ashry also sought to rely on documents which were not in evidence, but which Mr Ashry sought to put before me.  A description of these materials, together with the submissions in support of their admittance, is set down hereunder. 

• Mr Ashry wished to rely on documents, which, he said, establish that the opponent used the name EL OMDA prior to the date 11 August 1998, the date on which one of the applicants had registered these words as a business name.  These documents, he said, augmented and strengthened the force of the documents in the evidence in support which, although issued by the Australian Government Analytical Laboratories, were simply customers' clearance papers required to support the bill of lading.  Mr El Hgar's first declaration establishes that the declarant, Shawky El Hgar, did register the business name 'El Omda' on 11 August 1998.   

• Mr Ashry wished me to admit a statutory declaration by a Customs broker declaring to details of a shipment of watermelon seeds around 12 January 1998 bearing the brand EL HAJJAR.  This declaration establishes, he said, that the goods did not carry the name EL OMDA, as alleged in Mr El Hgar's first declaration.  The fact that the opponent was the only supplier of products under EL OMDA name had been confirmed in the "forms of acknowledgment" from the traders in the opponent's evidence.

• Further material which Mr Ashry sought to admit included a translation in English of a newspaper advertisement, which is included in the applicants' evidence, and copies of invoices dated prior to 11 August 1998 showing the words EL OMDA and the logo of a man's head with a turban.

Mr Ashry maintained that I could and should have regard to this new material.  As I explained at the hearing, however, the Trade Mark Regulations 1995 do not permit me to receive this material, and therefore I cannot give it any weight.  I wish to add that, had the material been properly served and filed in accordance with the regulations, it would not have affected the final outcome of my decision for the reasons which should be evident from the decision.      

In his submissions, Mr Ashry stressed the importance of the word EL OMDA in the opponent's business.  He alleged (although in absence of any evidentiary support) that the applicants' only reasons for seeking registration of the subject trade mark were to preclude the opponent from use of that mark. 

Turning his attention to Mr El Hgar's first declaration and exhibits, Mr Ashry criticised examples of the applicants' mark in use, saying that none of the exhibited representations corresponded with the subject mark.  He said that the name appearing in the marks was also inconsistent.  Referring to an exhibited newspaper advertisement in Arabic, of 1 November 1995, to Mr El Hgar's declaration and the translation of the advertisement he sought to admit as evidence, he said that there was no mention of the name EL OMDA.  Mr Ashry further asserted that the production dates on the copies of packaging of seeds, annexed under exhibits 'E1' and 'F1' to the declaration as evidence of importing watermelon seeds under the name EL OMDA, were forged, because the dates had been changed.  He also directed my attention to the words "Registered Trade Mark of El Hajjar" appearing on the copies of the bags.        

Section 60 of the Act reads as follows:

60.  The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
    (a)   it is substantially identical with, or deceptively similar to, a trade mark
          that, before the priority date for the registration of the first-mentioned
          trade mark in respect of those goods or services, had 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.
Note 1:  For deceptively similar see section 10.
Note 2:  For priority date see section 12. 

At the outset, I must make it clear that any issues under the provisions of Trade Practices Act are outside the Registrar's jurisdiction and must be taken to another forum if the opponent desires to pursue the matter in terms of that Act.

In relation to the s.60 ground, it is to be determined first whether the applicants' mark is either substantially identical with, or deceptively similar to, the opponent's mark, then a decision must be made whether there has been a reputation built up by the opponent's mark at the date of filing the present application - 12 August 1998 - and, in view of that reputation, there was the likelihood of deception or confusion occurring as a result of use of the applicants' mark.  That likelihood of deception or confusion must extend to a substantial number of people likely to be concerned in the purchase of the particular goods - Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300.

In considering the s.58 issue, I found the opposed mark not to be substantially identical with that of the opponent.  On how to determine deceptive similarity of marks, Windeyer J, in Shell v Esso, supra, said at 414-415:

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 television exhibitions. 

Pursuant to these guidelines, the marks are not to be viewed side by side, but an account should be taken of what impression the marks are likely to leave on the mind of persons with "ordinary intelligence".   I have already referred to the similarities and differences between the marks in question when considering the issue of whether the marks are substantially identical.  I noted there the presence of the common elements in the marks - the devices of the head of a man with a turban and the words EL OMDA.  Being mindful of what is known as the "imperfect recollection" principle outlined in Rysta Ltd's Appn (1943) 60 RPC 87, and what was stated in de Cordova v Vick Chemical Co (1951) 68 RPC 103, where Lord Radcliffe observed at 106, that:

in most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole,

I believe the marks are deceptively similar.  In the absence of an opportunity to compare the marks in close proximity in order to scrutinize their details so as to detect the differences between the representations of the heads, or, in instances where the potential purchasers are not very familiar with one of the marks and see the other mark, it is very likely that one of the marks could be taken for the other.  This is even more likely, given that the marks also have other particulars in common such as the words EL OMDA. 

Moving on to consider the reputation accumulated by the opponent's mark, the opponent has been engaged in the business of exporting and importing products since 1992.  Its main activity involves the importing of goods - roasted seeds, nuts and frozen foods, from Egypt.   In the written submissions it is stated that the opponent has invested substantial amounts of money in producing, marketing, promoting and distributing the products in New South Wales and other states in Australia.    However, no evidence has been made available as to the value of sales of the products under the trade mark featuring the words EL OMDA and the device of the man wearing the turban, nor have any details been provided as to the amounts expended in relation to advertising, nor the manner in which the mark has been introduced to the potential buyers of the opponent's goods.  The opponent has argued in terms of prior use of the brand EL OMDA before one of the applicants, Shawky El Hgar, registered those words as a business name.  However, s.60 concerns a conflicting trade mark that has acquired a reputation.  In order to mount a successful case under the s.60 ground, the opponent needed to establish that reputation in Australia before the applicants filed their application, and also that use of the opponent's similar trade mark to the applicants' mark was so extensive and the mark so well known in respect of the particular goods that, if the applicants commenced trading by applying their mark to the goods, deception or confusion was likely to result among purchasers of those goods.   The provisions of s.44, mentioned by Mr Ashry, are irrelevant here and, in any event, no ground in the notice of opposition concerned those provisions.

In the absence of the evidence as to reputation acquired by the opponent's trade mark that would lead me to the conclusion that the existence of the applicants' mark would be likely to deceive or cause confusion, I am obliged to find that the opponent failed in its opposition in terms of s.60 of the Act.  

Conclusion
Having regard to the foregoing, I have no option but to find that the opponent has failed on all the grounds upon which the opposition was based.  The opposition to registration of trade mark application number 769958 is therefore dismissed.

Vija Zars
Hearing Officer

16 June 2000