Sresta Natural Bio Products Private Limited v Ashok Bhimaraju

[2024] ATMO 41

TRADE MARKS ACT 1995

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

Re:Opposition by SRESTA NATURAL BIO PRODUCTS PRIVATE LIMITED to registration of trade mark application 2170419 (29, 30) – MANTRA LOVE EVERY SPOONFUL (Figurative) – in the name of Ashok Bhimaraju

Delegate:

Nicholas Smith

Representation:

Opponent: Lex Protector Pty Ltd

Applicant: YIP LEGAL PTY LTD

Decision:

2024 ATMO 41

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 60 and 62A considered – neither established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by SRESTA NATURAL BIO PRODUCTS PRIVATE LIMITED (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Ashok Bhimaraju (‘Applicant’): 

Application Number:

2170419

Filing Date[1]:

19 April 2021

Goods:

Class 29: Cooking oils; Snack foods made from potatoes and wheat (potatoes predominating); Ghee; Drinks flavoured with spices and having a base of milk
Class 30: Snack foods made of wheat; Snack foods made of whole wheat; Wheat flour; Curry spices; Food pastes (spices); Spices

(‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

2.  Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars, significantly rectified by this office, on 16 December 2021 (‘SGP’).  The SGP as rectified raised grounds of opposition under ss 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 11 April 2022. 

Evidence

1. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Rajashekar Reddy Sellam, managing director of the Opponent (‘Sellam declaration’)	12 July 2022	Pages 1-77
Evidence in answer
N/A (none filed)
Evidence in reply
N/A (none filed)

5.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  On 11 November 2022 the Opponent requested a hearing.  The matter was set down for a hearing by written submissions in Canberra on 7 December 2023 and the matter was allocated to me.  In line with usual practice, a notice was sent to the parties on 23 October 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 7 December 2023 (‘Opponent’s Submissions’).  These submissions attached what appears to be pages 1-77 of the Sellam declaration.  I do not need to have regard to these attachments to the Opponent’s submissions because they have already been filed as part of the Sellam declaration.  The Applicant did not file any submissions.

6. I note that significant portions of the Opponent’s Submissions make reference to s 44(4) of the Act. I have disregarded these portions as the ground of opposition under s 44 of the Act is not particularised in the SGP, and in any event s 44(4) is not relevant, being a provision an Applicant can rely on to obtain registration in the event that the elements set out in s 44(1) or (2) are satisfied. The Opponent’s Submissions also refer to a ‘significant loss in consumption based on the redirection of consumers to confusingly similar marks’ but again this submission is not supported by the evidence.

1. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 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

2. The Opponent is an Indian company.   The Sellam declaration claims that the Opponent has used its trade mark (identified in the next paragraph) in Australia since 2015 for goods in classes 29 and 30.  When the Applicant filed its application for registration it did so in bad faith.

   9.  The attachments to the Sellam declaration consist of 11 invoices, 10 of which predate the application date for the Trade Mark.  These invoices bear a figurative mark (‘Opponent’s Mark’) that consists of the words/numbers ’24 mantra organic’ inside a diamond with a sun device.  The number ‘24’ is prominent and in green.   These 10 relevant invoices, which date between 2015 and 2020, depict sales of quantities of food, such as mung bean powder, rice, dal, sambar powder to 3 distributors in Australia (8 of the 10 invoices being to a single distributor).  The value of each of the invoices varies but is between $5,000 and $25,000 USD, with a majority of the invoices at around the US$20,000 mark. 

   10.     The only evidence of use of the Opponent’s Mark is on the invoices.  There is no evidence before me that the food sold displayed the Opponent’s Mark on their labels or packaging, nor any evidence of advertising of or reputation in the Opponent’s Mark, either in Australia or India.  It is not clear on the evidence before me whether the Opponent is producing and selling foodstuffs bearing the Opponent’s Mark, or merely exporting third party products that do not bear the Opponent’s Mark. The Opponent does not provide any evidence of any third-party measurement of the reputation held by the Opponent in the marketplace or indeed any reputation whatsoever.  There is also no evidence about the Applicant, including any evidence suggesting that the Applicant would be aware of the Opponent or its mark.

   The Applicant

   11.     The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

   Grounds of Opposition, Onus and Standard of Proof

3. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 60 and 62A.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.  

   13.     The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of s 60.[4]

   Discussion

   Section 60

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

4. Section 60 is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

   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.

5. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

6. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

   The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

   The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[5]

   [5] [2023] FCA 487, [20-21] (Kennett J)

7. In McCormick & Co Inc v McCormick[6], Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[7]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[8]

   [6] [2000] FCA 1335.

   [7] Ibid, [81].

   [8] (1992) 33 FCR 302, 343.

8. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[9]

   [9] (1999) 47 IPR 423, 436.

9. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered.  The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[10] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[11]

   [10] [2000] FCA 1587.

   [11] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

10. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    The Opponent has been using the mark ’24MANTRA’ in classes 029 and 030 since 2011.  Such use has been documented and is available in the public domain.  The Opponent has acquired a reputation in Australia that is being subjected to infringement by the Applicant.  

11. For the reasons set out in paragraph 9 above, I am not satisfied from the Opponent’s evidence that it had established a reputation in Australia in the Opponent’s Mark at the priority  date.  The market for the food goods in classes 29 and 30 is broad, being the entire Australian population.  The provision of invoices showing sale of foodstuffs to 3 distributors in a 5-year period, absent evidence that the foodstuffs themselves actually displayed the Opponent’s Mark (or evidence of some other use of the Opponent’s Mark), is not sufficient to establish reputation in the Opponent’s Mark at the relevant date and as such the requirement under s 60(a) is not satisfied.  I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Section 62A

12. Section 62A is reproduced below:

    62A Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

13. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

14. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[12] is a leading Australian authority on s 62A.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[13]:

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[14]

    [12] [2012] FCA 81 (Dodds-Streeton J).

    [13] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).

    [14] [2012] FCA 81, [147].

15. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[15]

    [15] Ibid [165]-[166].

16. The Opponent has particularised this ground of opposition in the SGP as follows:

    The Opponent has been trading under their ’24MANTRA’ mark in the relevant commercial market since 2011.  The Applicant has adopted a similar mark ‘MANTRA LOVE EVERY SPOONFUL’ with overlapping dominant portion for similar services to ride on the goodwill of the Opponent and applied for the said application in bad faith.  The Applicant has deliberately chosen the reputed Mark of Opponent to confuse the consumers.

17. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[16]  Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register a mark containing the word ‘mantra’ in respect of the Applicant’s Goods was a decision made to take advantage of the reputation of the Opponent’s Mark.  This is because there is virtually no evidence of the Opponent’s use of or reputation in the Opponent’s Mark in Australia.  There are also significant differences between the marks, with the only commonality being the common English word ‘mantra’.  Furthermore, the Opponent provides no evidence about the Applicant that would suggest that the Applicant was aware of the Opponent at the relevant date.  In circumstances where the evidence in support of the s 62A ground of opposition is very limited and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character.  Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62A.

    [16] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

    Decision and Costs

18. The Opponent has failed to establish either of the grounds of opposition it nominated in the SGP.  Trade mark application number 2170419 may proceed to registration not less than one month from the date of this decision.  If the Registrar is 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.

1. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   1 March 2024