Storm Group v Storm International Group Pty Ltd

[2016] ATMO 99

TRADE MARKS ACT 1995

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

Re:Opposition by Storm Group to registration of trade mark applications nos. 1530464 – STORM – and 1530468 – STORM and device - in the name of Storm International Group Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: Victor Ng of Markwell Applicant: Melissa Marcus of Counsel instructed by Sharon Givoni Consulting
Decision:	2016 ATMO 99 Trade Marks Act 1995 - Section 52 opposition: sections 42(b), 58, 60 and 62A pressed – no ground of opposition established.

Background

1. Storm International Group Pty Ltd (‘the applicant’), filed trade mark application numbers 1530464 and 1530468 on 10 December 2012 in class 45 of the International Classification of Goods and Services. Current details of the applications are set out below.

   Trade mark:  STORM  (the ‘STORM trade mark’)

   Trade mark application no: 1530464

   Filing Date:  10 December 2012

   Specification:  Class 45: Personal and social services rendered by others to meet the needs of individuals; migration agent services (immigration and immigrant services); consultancy services relating to immigration; agency services for arranging introductions; arranging for visas other than travel visas; arranging for student visas; advisory, consultancy and information services in relation to the aforesaid services; including the provision of the aforesaid services online via a website, the Internet or other computer networks and/or                accessible by mobile phone and other Internet-enabled devices

   Trade mark:    (the ‘STORM Logo’)

   Trade mark application no: 1530468

   Filing Date:  10 December 2012

   Specification:  Class 45: Personal and social services rendered by others to meet the needs of individuals; migration agent services (immigration and immigrant services); consultancy services relating to immigration; agency services for arranging introductions; arranging for visas other than travel visas; arranging for student visas; advisory, consultancy and information services in relation to the aforesaid services; including the provision of the aforesaid services online via a website, the Internet or other computer networks and/or accessible by mobile phone and other Internet-enabled devices

2. Acceptance of the applications for possible registration was published in the Australian  Official Journal of Trade Marks dated 5 June 2014. Subsequently Storm Group (‘the opponent’) filed Notices of Intention to Oppose registration followed by Statements of Grounds and Particulars.

3. The applicant then filed its Notices of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 26 August 2016. The opponent was represented by Victor Ng of Markwell. The applicant was represented Melissa Marcus of Counsel instructed by Sharon Givoni Consulting.

   Grounds of Opposition

5. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’). The grounds under sections 42(b), 58, 60 and 62A were pursued at the hearing. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities[2]. Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

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

   [2] Pfizer Products Inc v Karam [2006] FCA 1663 [6] - [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133]

   Evidence

6. The evidence in these matters consists of the following declarations being:

   Evidence in Support

   ·Declaration of Srinivas Reddy  ( ‘Reddy 1’) dated 28 February 2015 with annexures SR-1 to SR-27

   Evidence in Answer

   ·Declaration of Vamsi Krishna Parvataneni (the ‘Parvataneni declaration’) dated 28 February 2015 with annexures VKP-1 to VKP-44

   ·Declaration of Anil Arbindi (the ‘Arbindi declaration’) dated 4 June 2015

   ·Declaration of Daryl Stewart  (the ‘Stewart declaration’) dated 4 June 2015

   ·Declaration of Ravi Goli (the ‘Ravi declaration’) dated 4 June 2015

   ·Declaration of Roja Goli  (the ‘Roja declaration’) dated 9 June 2015

   ·Declaration of Sharon Givoni (the ‘Givoni declaration’) dated 11 June 2015

   ·Declaration of Naveen Davala (the ‘Davala declaration’) dated 15 June 2015

   ·Declaration of Nitesh Shinde (the ‘Shinde declaration’) dated 7 July 2015

   Evidence in Reply

   ·Declaration of Srinivas Reddy (‘Reddy 2’) dated 24 August 2015 with annexures SR-28 to SR-30.

   ·Declaration of Victor Wei Cho Ng (the ‘Ng declaration’) dated 24 August 2015 with annexure VWN-1

   ·Declaration of Gajjala Ramakoteswar Rao (the ‘Rao declaration’) dated 21 September 2015 with annexures GRR-1 and GRR-2

   ·Declaration of Pavan Kakani (the ‘Kakani declaration’) dated 24 September 2015

   ·Declaration of Rajesh Madipalle (the ‘Madipalle declaration’) dated 24 September 2015

7. The evidence put forward by the parties is voluminous and the history between the parties is long running and dates from 2001. I believe it is important to discuss this history as the vast majority of it is based on conflicting statements unsupported by documentary evidence which have been made by the parties and their respective associates.  

   Opponent’s Evidence

8. Reddy 1 states that Mr Reddy conceived the STORM trade mark in 2001. He asserts that the opponent’s predecessor, Storm Consulting Group (‘SCG’), was established in September 2001 in Hyderabad, India. SCG provided international recruitment services to Indian students looking to study overseas. Mr Reddy asserts that the applicant’s director, Mr Vamsi Parvataneni, was supposed to be a partner in SCG as he was residing in Australia at the time and Mr’s Reddy’s intention was that Mr Parvataneni would act as the Australian representative and liaison for SCG. According to Mr Reddy, Mr Parvataneni’s participation as a partner was contingent on him making an initial investment in SCG for the purpose of working capital and executing a power of attorney appointing his mother, Ms Sheshu Kumari, as his attorney to sign documents and fulfil certain functions in respect of SCG as she was based in India.

9. Mr Parvataneni did not provide the initial investment and did not submit the required power of attorney so he was not accepted as a partner despite having signed a partnership deed[3]. However, this partnership deed does not appear to be in relation to student recruitment services but rather to the sale of computers, software, hardware, electronic goods etc. SCG eventually ceased to operate in 2003, which Mr Reddy states was largely as a result of Mr Parvataneni failing to provide his share of capital. SCG’s international student recruitment business continued to be operated by its successor, Storm Consultancy Services Pvt Ltd (‘SCS’), an India company incorporated in 2003 with new investors.

   [3] Confidential Annexure SR-28 accompanying Reddy 2

10. Mr Reddy asserts that Mr Parvataneni contacted him during this time seeking a role with the opponent and that he eventually decided to engage Mr Parvataneni as a consultant to act as the opponent’s representative in Australia. In this role, Mr Parvataneni was apparently responsible for supporting Indian students recruited by the opponent who were studying in Australia, including arranging airport transfers, assisting with accommodation and other post-arrival issues. According to Mr Reddy, Mr Parvataneni was eventually entrusted with liasing with tertiary education providers in Australia on the opponent’s behalf. However, I note that no dates have been provided on when this hand-over in responsibility took place.

11. Reddy 1 asserts that from 2003 until 2010, Mr Parvataneni operated the Melbourne branch support office for the opponent. Mr Reddy asserts that the opponent licensed Mr Parvataneni to use the opponent’s name and the storm logo in Australia in his capacity as its representative. However, the license and arrangement with Mr Parvataneni were not put in writing and could apparently be terminated by the parties at any time.

12. Following a restructure in 2007, the opponent, Storm Group, was established and from then on it took over from SCS. However, I note that the opponent states it has used a number of different names and trade marks including STORM, STORM CONSULTING, STORM CONSULTANCY SERVICES, STORM EDUCATION CONSULTING GROUP, STORM CONSULTING GROUP and STORM GROUP.

13. Mr Reddy asserts that from 2002 the opponent has held representation agreements with a large number of universities and other tertiary education providers in Australia whereby the opponent is appointed to assist the university to recruit international students. Mr Reddy has provided documentation at annexures SR-18 and SR-19 which he asserts supports this statement. However, I note that the certificates in annexure SR-18 are all dated after the priority dates of the opposed applications. Annexure SR-19 contains two awards to who I assume to be the opponent’s predecessors. The first is for recognition of valuable contribution and services to the Faculty of Science, Technology and Engineering with no available information on what those contributions were, and the second is in recognition of service excellence in student recruitment.

14. Mr Reddy states that from around 2007 the opponent stated to use the storm logo:

15. The above logo is asserted to have been designed and created by an employee of the opponent, Mr Koteswar Rao, in 2005 and 2006. In his declaration Mr Rao confirms that he designed the STORM Logo. However, I note that he was not one of the opponent’s employees until 5 October 2007. Prior to this he was ‘a free lancer’. The opponent has registered the STORM Logo in India and in the United States.[4]

    [4] Annexure SR-4 accompanying Reddy 1

16. Reddy 1 asserts that in 2010 the opponent ceased engaging Mr Parvataneni as its representative in Australia. The main reason for this according to Mr Reddy was the significant fall in Indian students wanting to study in Australia. However, there is nothing in the opponent’s evidence to support this claim. Although I do note copies of emails contained in annexure SR-20 which clearly indicate that the applicant severed the relationship between the parties in September 2012 which is contrary to Mr Reddy’s statements.

17. Just after this falling out between the parties, Mr Reddy became aware that a business offering international student recruitment services commenced business in India using the name Storm International Group. Mr Reddy discovered that a director of the business was Seshu Kumari, Mr Parvataneni’s mother. The opponent commenced legal proceedings against Storm International Group in the City Civil Courts at Hyderabad in India in December 2012 and this is when the opponent became aware of the applicant’s Australian trade mark applications. The opponent was successful in the Hyderabad proceedings[5] and a Memorandum of Understanding (‘MOU’) was signed by the parties[6]. According to Mr Reddy, the applicant breached this MOU and the opponent filed a criminal complaint in the City Criminal Courts at Hyderabad[7]. I note that legal proceedings are ongoing between the parties in India.

    [5] Annexure SR-24 accompanying Reddy 1

    [6]Annexure SR-25 accompanying Reddy 1

    [7] Annexure SR-26 accompanying Reddy 1

18. Turning to the opponent’s use of its trade marks, Mr Reddy asserts that since 2002 the opponent (including its predecessors) has used its STORM trade mark, and since 2007 the STORM logo extensively in India and Australia. The trade marks have been used on the opponent’s corporate stationery, business cards, letterheads, invoices[8], brochures and promotional materials[9], signage on its Indian and Australian offices[10], website[11] and advertisements[12]. In addition, Reddy 2 claims that a number of the advertisements put into evidence by the applicant were paid for by the opponent. His statements on this matter are supported by the statements made in the Madipalle declaration, Kakani declaration and Rao declaration although no documentary evidence has been provided to support the statements.

    [8] Annexure SR-6 accompanying Reddy 1

    [9] Annexure SR-7 accompanying Reddy 1

    [10] Annexure SR-8 accompanying Reddy 1

    [11] Annexures SR-9 to SR-13 accompanying Reddy 1

    [12] Annexure SR-14 accompanying Reddy 1

19. Confidential annexures SR-15 and SR-16 accompanying Reddy 1 contain the opponent’s gross revenue in relation to student placement in Australia for 2003 and the opponent’s gross expenditure relating to its marketing activities from 2007. However, I note that the marketing materials all appear to have taken place in India. I also note that the opponent’s website lists Mr Parvataneni as “President” and “Founder” of the opponent with the Melbourne branch office referred to as the opponent’s global head office. Other website printouts list the Melbourne Office and the Hydrabad Office as the Head Quarters[13]. Reddy 2 explains that this is because it was beneficial from a marketing perspective and that having the founder be an Australian graduate was attractive to potential students who would use the recruitment services. This statement is supported by the Rao declaration although once again no documentary evidence has been provided to support the statements of either party.

    [13] Annexure VKP-12 accompanying the Parvataneni declaration

    Applicant’s evidence

20. The Parvataneni declaration states he is the director and Chief Executive Officer of the applicant and has been the director since the applicant was incorporated on 3 July 2007. The applicant provides international student recruitment services amongst other things. Prior to July 2007 Mr Parvataneni states that he owned and operated a business that provided the same services as the applicant. This business operated under the business name Storm Consulting Group. Mr Parvataneni states that he registered the Victorian business name Storm Consulting Group on 15 October 2001.

21. Mr Parvataneni came to Australia in 2000 to study at the Melbourne Campus of Central Queensland University. Given his frustrating experience in organizing his Visa and entrance into Australian educational institutions he decided to establish an international student recruitment consulting business. Mr Parvataneni states that in that same year he decided to start his business and spent time discussing ideas about his business with friends and professional colleagues at the Central Queensland University. It was at this time that Mr Parvataneni states that he came up with the name “Storm” because he wanted to create a storm in the area of international student recruitment. The Arbindi, Shinde, Davala and Ravi declarations echo this statement made by Mr Parvataneni.

22. Mr Parvataneni states that his business plan was analogous to being a ‘middle man’ by exchanging documents between the educational institution or government department and students overseas, or students already studying in Australia and wanting to change courses. In March 2001 Mr Parvataneni states that he commenced trading under and by reference to the name Storm Consulting Group. This is supported by a letter contained in exhibit VKP-5. This letter is addressed to the applicant and is about recruiting students on behalf of Australian educational institutions. Similar documents are also reproduced in additional exhibits accompanying the Parvataneni declaration[14].

    [14] Annexures VKP-6, VKP-7A, VKP-15, VKP-16 accompanying the Parvataneni declaration

23. Mr Parvantaneni asserts that he operated the business from his home in the suburb of Glenhuntly, Victoria. He further asserts that he worked as a correspondent on behalf of international students in Australia whereby he would assist international students with applications to educational institutions in Australia. He states that he acted as a liaison between international students and Australian educational institution and arranged airport pick-ups and accommodation among other things.

24. On 7 July 2001 Mr Parvataneni returned to India and met with his good friend Mr Reddy along with Mr Shanthi Swaroop and Mr Chandra Mohan. He asserts that at this time he told them that he had started building an international student recruitment business in Australia and that he wanted to expand this consulting business into India. Mr Parvataneni states that he asked each of them whether they were interested in working with him and he asserts that at the time of these conversations he had already chosen the name ‘Storm’ as part of the Storm Consulting Group. Mr Parvataneni states that Mr Reddy and Mr Swaroop said that they wanted to work with him and he said that he would appoint them as managers of the Indian Office. The first Indian office was established in the city of Hyderabad, India on or about September 2001.

25. Mr Parvataneni avers that in the course of his discussions with Mr Reddy an agreement was reached about how Mr Parvataneni would conduct ‘Storm’ operations in India. He states that as he and Mr Reddy had been friends for approximately nine years, their agreement was oral and based on understanding and trust. Mr Parvataneni cannot recall the exact words of the agreement but that to the  best of his knowledge and recollection they agreed:

    ·Mr Parvataneni will be the founder, President and CEO of the student recruitment business called Storm and Mr Reddy and Mr Swaroop will manage and operate an office in Hyderabad, India.

    ·Mr Swaroop and Mr Reddy will collect completed admission forms and supporting documents from Indian students in Hyderabad and will forward those forms and supporting documents to Mr Parvataneni in Australia. Mr Parvataneni would then forward those forms and supporting documents to respective Australia educational institutions.

    ·Mr Parvataneni would provide Mr Reddy and Mr Swaroop with full support and training whenever they require it and he claims he did so from 2001 until 2003.

    ·Mr Parvataneni would make regular visits to India to rain Mr Reddy and Mr Swaroop’s staff in India.

    ·The Australian business will be the main business and Mr Reddy and Mr Swaroop will provide an Indian ‘arm’ to the Australian business by collecting documents such as admission forms, letters of reference and financial documents from people in India wanting to study in Australia.

26. Mr Parvantaneni goes on to state that in 2003-2004 he considered Mr Reddy and Mr Swaroop capable of dealing with the Indian office without his constant input and that he allowed them to deal with students in India but that all major decisions were approved by him. Mr Parvataneni points to the promotional materials listing him as the founder and CEO as documents which support his assertions[15]. The Roja declaration supports Mr Parvataneni by advising that she had always believed him to be the founder and CEO of the student recruitment services provided under the name ‘Storm’.

    [15] Annexures VKP-9 and VKP-11 accompanying the Parvataneni declaration

27. Mr Parvataneni asserts that in 2004 he was involved in the commissioning and design of the STORM Logo and that he had creative input into the design. Melissa Marcus, counsel for the applicant, points out that that printouts from the Waybackmachine annexed to the Givoni declaration demonstrate that versions of Mr Rao’s (and others’) work was already being used on the website located at in 2006[16]. Mr Parvataneni asserts that it is he who came up with the idea of using a map of Australia in the STORM Logo as he was based in Australia. This is not what the designer of the STORM logo, Mr Rao, stated in his declaration. However, I do note that Mr Rao does not go into detail about what dealings he had with Mr Parvataneni. 

    [16] Annexure SG-02 accompanying the Givoni declaration

1. Mr Parvataneni states that in order to formalize the business relationship between himself and Mr Reddy a Partnership Deed dated 30 May 2005 was signed by Mr Reddy. It states that nobody apart from Mr Parvataneni has any share in the profit of any operations of the Australian side of the business and that Mr Parvataneni was required to pay all expenditure in relation to Australia such as phone lines and office space rent. Mr Reddy etc. would cover and share all expenditure in India[17]. Mr Parvataneni points out that part of this document also indicates that he was entitled to a share of profits generated in India and that this further proves he was the CEO of all the student recruitment services offered in Australia and by the opponent overseas[18]. 

   [17] Annexure VKP-13 accompanying the Parvataneni declaration

   [18] Annexure VKP-14 accompanying the Parvataneni declaration

2. Mr Parvataneni has put into evidence significant statements of how he ran his business under the STORM trade marks in Australia and that the opponent has never had a presence in Australia. He also details the breakdown in the relationship between the applicant and the opponent in which he severed the association with the opponent in order to protect the reputation of the applicant in Australia. He states that as Mr Reddy was running operations in India and that he, Mr Parvataneni, was running operations in Australia that it was best to part ways[19]. Following the termination of the relationship Mr Parvataneni emailed Australian educational institutes to advise them of what had happened[20].

   [19] Annexure VKP-40 accompanying the Parvataneni declaration

   [20] Annexure VKP-41 accompanying the Parvataneni declaration

3. He states that he was the main liaison between the business and Australian educational institutes and that through the applicant and its predecessor he had been operating a Storm business continuously in Australia for a period of 14 years and using the STORM trade mark continuously in Australia since that time and that he had been using the STORM logo in Australia since 2007. This is supported by the Rao declaration where he states that he designed business cards for Mr Parvataneni using the STORM Logo and listing him as being the CEO of Storm and Global Head Quarters being the Melbourne Office[21].

   Discussion

   [21] Annexure GRR-2 accompanying the Rao declaration

   Section 58 – Applicant not the owner of the trade mark

4. Section 58 of the Act provides:

   58             Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

5. In order to make out a ground of opposition under section 58, the opponent must establish that:

   ·   the respective trade marks of the applicant and opponent are either identical or substantially identical [22],

   ·   the respective services on which the trade marks have been or are to be used  are the ‘same kind of thing’ ^[23]

   ·   the opponent has the earlier claim to ownership based on authorship[24] and use of its trade mark prior to both the filing of the application and any actual use of the opposed trade mark by the applicant[25].

   [22] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 120 ALR 495; 31 IPR 375

   [23] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75

   [24] Authorship in that sense involves the origination or first adoption of the word as and for a trade mark Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 [399]

   [25] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 [413]

6. It is clear from the evidence that the opponent and the applicant are using substantially identical trade marks being the STORM trade mark and the STORM Logo. It is also clear from the evidence of both parties that they use these trade marks on the same services being international student recruitment services and the other broad services which they engage in as part of this process.

7. Therefore, I must now determine whether the opponent was the first user of the trade marks in Australia. There is dispute between the parties about who came up with the STORM trade mark and who was actually in charge of the student recruitment services in Australia as I have outlined in the evidence. However, the onus is upon the opponent to establish that they were the owner of the STORM trade mark and the STORM Logo.

   Trade Mark Application No. 1530464 STORM

8. I turn to the STORM trade mark first. The applicant has demonstrated first use of this trade mark on its student recruitment services in Australia in 2001. The opponent is based in India and the earliest dated advertisements in its evidence appear to be from its promotions in India and not in Australia. The opponent asserts that the use demonstrated by the applicant was authorized by the opponent, but there is insufficient evidence to support this claim. No formal agreement was ever written down by the parties and the documents in evidence list Mr Parvataneni as the CEO and Founder of the recruitment services bearing the name Storm. The early agency certificates with Australian educational institutes list Mr Pavataneni’s business, Storm Consulting Group, as the agent[26]. Annexure VKP-21 is a copy of an agreement dated 16 March 2007 with ASPEN (Nepal) Pvt. Ltd which lists the opponent as a division of the applicant’s predecessor in title: Storm Consulting Group, Australia.

   [26] Annexures VKP-16 to VKP-20 accompanying the Parvataneni declaration

9. Without the opponent being able to put forward sufficient documentary evidence to support its assertions to the contrary, and that it created the STORM trade mark and that Mr Parvataneni used it in Australia only with the permission of the opponent, I am left with a case of the opponent not demonstrating use of the STORM trade mark in Australia before the applicant. Therefore, the opponent has not discharged the onus incumbent upon it to establish the section 58 ground of opposition in regards to the STORM trade mark.

   Trade Mark Application No. 1530468 STORM Logo

10. Similarly to the above, the applicant’s evidence demonstrates that it has used the STORM Logo on its services since 2007. The opponent’s evidence demonstrates that it has used the STORM Logo in India since 2007 and that Mr Rao states he designed the STORM Logo as an employee of the opponent. Mr Rao states that Mr Reddy asked him to design the STORM logo as well as various artworks for advertisements to be used by the Melbourne branch office. Mr Rao states that understood that Mr Reddy was the CEO and Founder of Storm Group despite creating business cards for Mr Parvataneni which refer to Mr Parvantaneni as the CEO of Storm and the Global HQ being in Melbourne, Australia. He states that his understanding of this was that Mr Parvantaneni was being presented this way for marketing purposes. However, there is no evidence to support these statements.

11. I am faced with documents which evidence a long history of Mr Parvataneni being referred to and represented as the CEO and Founder of Storm recruitment services by both Mr Parvataneni and the opponent in Australia and in India. While the opponent asserts this was for marketing purposes only there is nothing except unsupported statements from Mr Reddy’s associates to backup this statement in the face of the extensive evidence of representations to the contrary. The applicant and the opponent’s evidence demonstrates that Mr Parvataneni used the STORM Logo in Australia since 2007. There is no evidence that this was under a license from the opponent.

12. The opponent is unable to demonstrate earlier use in Australia of the STORM Logo, therefore, the opponent has not established the section 58 ground of opposition in regards to the STORM Logo.

    Section 60 - Reputation in Australia

13. Section 60 of the Act provides:

    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.

14. Unlike section 44 of the Act, section 60 does not require that the services upon which the opponent uses its trade mark be of a specified standard of similarity with the services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. But I say now that the trade marks are substantially identical and in relation to the same services. Therefore, it is for me to determine whether the opponent has established that before 10 December 2012 its trade marks were recognized by the public generally, or at least by a significant number of persons in the student recruitment market and whether because of that, the use by the applicant of its trade marks would be likely to cause the public confusion.

15. The principles relevant to the assessment of the likelihood of confusion, etc., were set out by French J in Registrar of Trade Marks v Woolworths: [27]

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[28]

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

    [27] [1999] FCA 1020 [50]

    [28] [1973] HCA 43; (1973) 129 CLR 353, 362

16. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[29] by Kenny J at paragraph 81:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [29] [2000] FCA 1335

17. In determining the reputation of the opponent I am faced with evidence of advertisements which bear the identical trade marks on the same services, but aimed and circulated through India rather than Australia. The opponent has stated that the advertisements bearing the STORM trade mark and STORM Logo used by the applicant in Australia were paid for by the opponent and that the applicant used the trade marks with the permission of the opponent. However, once again there is nothing in the evidence to support this assertion and there is much evidence to support that the applicant was the main contact between the Australian educational institutes and actively promoted as the Founder and CEO of all Storm recruiting services. Similarly, there are also indications through the agreement between Mr Reddy and Mr Parvataneni which indicate that Mr Parvataneni was to incur all expenses in relation to the Australian office and that Mr Reddy and associates would bear the costs in India[30].

    [30] Annexure VKP-13 accompanying the Parvataneni declaration

18. It is clear that Mr Parvataneni has extensively promoted his business under the STORM trade mark and STORM Logo in Australia, and there is nothing before me to demonstrate that he was acting on behalf of the opponent rather than promoting his own business. Therefore, I turn to the opponent’s evidence of use. As I discussed earlier in the decision, the opponent has provided promotional material in its evidence. However, the vast majority of these advertisements have clearly been aimed at students in India and took place in India. 

19. While the evidence put forward by the opponent does suggest that the opponent has a reputation in India for its student recruitment services, how much of that reputation had spilled across into Australia before 10 December 2012 is very unclear. The agency certificates provided by the opponent at annexure SR-18 are dated after 10 December 2012. Annexure SR-19 is dated before the 10 December 2012 but these two awards are not sufficient to demonstrate that the opponent had established such a reputation in Australia that there is a likelihood of deception or confusion in the marketplace.

20. The opponent has not established the section 60 ground of opposition in regards to either of the opposed trade marks.

    Section 42 – Use contrary to law

21. Section 42 of the Act provides:

    An application for the registration of a trade mark must be rejected if:
                     (a) the trade mark contains or consists of scandalous matter; or
                     (b) its use would be contrary to law.

22. Victor Ng, counsel for the opponent, submitted that as at 10 December 2012, the use of the STORM trade mark and the STORM Logo would be contrary to law on the basis that :

    a.It would contravene sections 18 and 29 of the Australian Consumer Law;

    b.In relation to the STORM Logo, it would infringe the opponent’s copyright in the STORM Logo;

    c.In relation to the claimed migration agent services (immigration and immigrant services); consultancy services relating to immigration, it would contravene section 280 of the Migration Act 1958; and

    d.It would breach an injunction issued on 2 June 2014 by the City Civil Court at Hyderabad.

23. In regards to the first point that use of the applicant’s trade mark for the relevant goods would breach sections 18 and 29 of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010) which proscribe misleading or deceptive conduct or the making of false or misleading representations. As I have found that the use of the STORM trade mark and STORM Logo is not, at a minimum, likely to “confuse” under section 60, it follows that use is not, on the stricter test posited by Australian Consumer Law, likely to mislead or deceive, nor do I believe use would amount to a false representation in terms of section 29.

24. Mr Ng has argued that the opponent owns the copyright in the STORM Logo, but I am not convinced of this. The opponent has provided Reddy 1 and the Rao declaration in support of this argument but the statements made by those parties is contradictory and is not supported by the evidence before me.

25. The STORM logo is asserted to have been designed and created by an employee of the opponent, Mr Rao in 2005 and 2006. Mr Rao confirms that he designed the STORM Logo with other designers in his declaration. However, I note that he was not one of the opponent’s employees until 5 October 2007. Mr Parvataneni asserts that it is he who came up with the idea of using a map of Australia in the STORM Logo as he was based in Australia. Mr Rao confirms that he made business cards for Mr Parvataneni in 2007.

26. Given all the seemingly conflicting statements and unsupported assertions in the opponent’s evidence, on the balance of probabilities, I am satisfied from the  evidence and that it is likely Mr Parvataneni had significant input into the design of the STORM Logo. This would fit with him being the Founder and CEO of the STORM student recruitment services.

27. Given the opponent bears the onus to prove its case under section 42(b), I find that this second point also fails to be established.

28. I turn now to the opponent’s arguments that the applicant using the STORM trade mark and the STORM logo on migration services would contravene section 280 of the Migration Act 1958. Mr Ng argued that as Mr Parvataneni was not a registered migration agent at the time of the application and that as there is no evidence that one of his employees was, use of the trade marks in connection with migration agent services would have been contrary to law.

29. I am not persuaded by the argument. I note that the applicant has the right to license the use of its trade marks to whomever it so chooses or to use the trade mark in the future on services that it has an intention to branch into.  Mr Parvataneni provided evidence in annexure VKP-22 that he was granted his Migration Agents Registration Number on 2 November 2007. However, Mr Parvataneni has stated that any migration matters brought to him by a student he refers on to Venkata Tanari, a Registered Migration Agent. Annexure VKP-23 contains a letter from Venkata Tanari dated 18 September 2014 which states:

    “…I have been advising Mr Vamsi Parvataneni’s clients on Migration matters when ever required since 2007.

    …Vamsi Parvataneni is aware that he cannot provide immigration advice within the jurisdiction of Australia, unless registered by OMARA.”

30. Ms Marcus drew my attention to the seriousness of the allegations being made by the opponent and the consequences flowing from a finding that the allegations have been established. She pointed to the case of Briginshaw v Briginshaw[31] where Justice Dixon said that:

    “…where the law requires the proof of any act, the tribunal must feel an actual persuasion of its occurrence or existence before it can be found. It cannot be found as a result of a mere mechanical comparison of probabilities independently of any belief in this reality…it is enough that the affirmative of an allegation is made out to the reasonable satisfaction of the tribunal. But reasonable satisfaction is not a state of mind that is attained or established independently of the nature and consequence of the fact or facts proved. The seriousness of an allegation made, in inherent unlikelihood of an occurrence of a given description, or the gravity of the consequences flowing from a particular finding are consideration which must affect the answer to the question whether the issue has been proved to the reasonable satisfaction of the tribunal. In such matters, “reasonable satisfaction” should not be produced by inexact proofs, indefinite testimony, or indirect inferences.”

    [31] (1938) 60 CLR 336 [361-362]

1. This principal is echoed in DC Comics v Cheqout Pty Ltd[32]. In the situation before me, the opponent has not put forward any evidence to demonstrate that the applicant has breached Commonwealth legislation imposing penalty units. Given the serious nature of this allegation, more than mere assertions would be needed to satisfy me that the opponent had discharged its onus on this point under section 42(b). Therefore, the third point the opponent has argued under section 42(b) has not been established.

   [32] [2013] FCA 478, [62]

2. The last argument put before by the opponent is that the use of the opposed trade mark swould be a breach of the interlocutory injunction in India. However, I deal with this argument swiftly in stating that I am not persuaded that use of the opposed trade marks in Australia by the applicant would breach an interlocutory injunction in India relating to Indian trade mark registrations in the name of the opponent. As Ms Marcus pointed out at the hearing, trade mark rights are territorial. The Indian injunction does not seek to impose restrictions on rights to use trade marks in Australia, nor should it.

3. I thus find that the opponent has not established its ground of opposition under section 42(b).

   Section 62A – Application made in bad faith

4. Section 62A of the Act provides:

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

5. Bennett J in DC Comics v Cheqout Pty Ltd[33] considered bad faith and endorsed the approach taken by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2) [34], wherein her Honour commented:

   Bad faith, in the context of s62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

   The formulation in the 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 [Harrison’s Trade Mark Application [2005] FSR 10, in which the “combined test” of bad faith was said to involve both subjective and objective elements].

   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…

   The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.

   [33] [2013] FCA 478; (2013) 101 IPR 334.

   [34] [2012] FCA 81; (2012) 94 IPR 551, at [164].

6. I am not persuaded the opponent has discharged the onus of establishing that the applicant, as at the priority dates, applied for the opposed trade marks in bad faith, in the sense that in all the circumstances, persons adopting proper standards would regard the decision to register as in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.

7. Mr Ng’s submissions on section 62A were based on the argument that the opponent’s evidence shows that Mr Parvantaneni was engaged by the opponent’s predecessor to act as its representative in Australia and that Mr Parvantaneni’s version of events is ‘entirely fanciful and factually implausible’. Mr Ng argues that because of this prior business relationship between the parties, the applicant applied for the opposed trade marks with the knowledge that they were owned by the opponent and had been used by it in the preceding 12 years.

8. However, for the same reasons as I discussed in the previous grounds of opposition, this argument falls short of establishing the ground of opposition because it is simply not supported by the evidence before me. In this situation I am faced with a lot of “he said, she said” statements which are unsupported by documentary evidence because the parties chose at the time to not write anything down or formalize the dealings they had with each other. When the relationship between the parties broke down, both claim the exact opposite of the other. Therefore, documentary evidence to support the statements made by a party carries more evidentiary weight than unsupported statements.

9. The opponent bears the onus in opposition proceedings to establish a ground of opposition and the evidence it has provided is simply not sufficient to satisfy me, on the balance of probabilities, that a ground of opposition under section 62A has been established. At most, I have before me an opponent attempting to cast a possible inference of bad faith upon the applicant by virtue of unsupported assertions that the applicant, who is listed as the CEO and Founder of the Storm recruitment services on the majority of the opponent’s own promotional material, was merely a representative of the opponent in Australia acting wholly on the instruction of the opponent. The applicant argues the opposite, and has provided significant documentation from Australian educational institutes which demonstrates that they dealt with him and believed he was the CEO and Founder of the Storm student recruitment services within Australia.

10. In the end, I am not satisfied on the opponent’s argument and evidence that the applicant’s decision to apply to register the STORM trade mark and the STORM Logo in Australia was one of “an unscrupulous, underhand or unconscientious character”[35]. The onus of establishing bad faith rests on the opponent and I find in this particular case, the onus of proof has not been discharged. On the balance of probabilities, I find that the STORM trade mark and STORM Logo were not filed in bad faith.

    [35] Fry Consulting Pty Ltd v Sports Warehouse Inc(No 2) [2012] FCA 81, [165 -167]

11. The ground of opposition under section 62A of the Act has not been established.

    Decision

12. Section 55 of the Act provides:

    55  Decision

    (1)  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.

    Note:          Forlimitationssee section 6.

13. My decision is that none of the grounds of opposition against trade marks 1530464 and 1530468 have been established.

14. Accordingly, I direct that the trade mark applications may proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the trade mark shall not occur until the appeal has been discontinued or registration is ordered by the courts.

    Costs

15. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent in terms of Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Trade Marks Hearings

    8 November 2016