Taj Food Sales Pty Ltd v G S Pacific Marketing (Aust) Pty Ltd

[2012] ATMO 100

TRADE MARKS ACT 1995

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

Re:Opposition by Taj Food Sales Pty Ltd to registration of trade mark application 1294336 (29, 30) – SARTAJ and crown device - filed in the name of G S Pacific Marketing (Aust) Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: Carmen Champion of Counsel instructed by MathewsFolbigg Lawyers Applicant: Anny Slater of Slaters Intellectual Property Lawyers
Decision:	2012 ATMO 100 s.52 opposition – s. 44 – trade marks are not substantially identical or deceptively similar - s. 60 opponent establishes market presence but failed to demonstrate the there was likely to be any deception or confusion in the marketplace – no ground of opposition established.

Background

1. G S Pacific Marketing (Aust) Pty Ltd (‘the applicant’) filed application number 1294336 on 15 April 2009 in classes 29 and 30 of the International Classification of Goods and Services. Details of the application are set out below.

   Trade mark:  

   Trade mark application:      1294336

   Filing Date:  15 April 2009

   Specification:  Class 29: Preserved, dried and cooked fruits and vegetables including cooked meals, pickles, jellies, jams,milk and milk products, edible oils, fats and ghee

   Class 30: Coffee, tea, sugar, rice, sago, flour and preparations made from cereals, bread, pastry and confectionery, baking powder, salt, sauces and spices

2. The Application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 13 August 2009.  Taj Food Sales Pty Ltd (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 29 September 2009. Thereafter the parties served and filed evidence as allowed by the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the matter in Sydney on 21 June 2012 as a delegate of the Registrar of Trade Marks. Carmen Champion of Counsel instructed by MathewsFolbigg Lawyers represented the opponent. The applicant was represented by Ms Anny Slater of Slaters Intellectual Property Lawyers.

   Grounds of Opposition

4. The Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

5. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on the grounds under sections 44 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that these grounds have not been established.

6. Therefore, the grounds remaining for my consideration are those under sections 44 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods and services specification, there is no requirement for the other ground of opposition to be considered.

   Evidence

7. The evidence of the parties consists of the following declarations:

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

Declarant	Position	Date Made	Exhibits
Evidence in Support
Gautaam Varma	Managing Director of Taj Foods Sales Pty Ltd t/a UV Enterprises	18 April 2010	GV-1 to GV-11
Evidence in Answer
Terivinder Kaur Kohli	Director of G S Pacific Marketing (Aust) Pty Ltd	19 October 2010	TKK1
Gurmeet Singh Kohli	Director of G S Pacific Marketing (Aust) Pty Ltd	19 October 2010	GSK-1
Ann Rosa Mary Slater	Solicitor for G S Pacific Marketing (Aust) Pty Ltd	10 December 2010	AS-1 to AS-2
Ann Rosa Mary Slater	Solicitor for G S Pacific Marketing (Aust) Pty Ltd	23 December 2010	AS-3
Ann Rosa Mary Slater	Solicitor for G S Pacific Marketing (Aust) Pty Ltd	27 January 2010	AS-4 to AS-6

Section 44 - Identical etc. trade marks:

8. Section 44 of the Act relevantly provides:

44Identical etc. trade marks

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

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

(i)a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)…; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

9. To establish its opposition in terms section 44 of the Act the opponent must show all of the following:

Øa trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the applicant’s trade mark is either substantially identical or deceptively similar;

Øthe trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

Øthe priority date of the trade mark(s) of the other person is (are) earlier than the priority date of the applicant’s trade mark.

10. The opponent has specified four trade mark registrations in its evidence in support of the section 44 ground of opposition. However, only two of those registrations are arguably relevant to the current proceedings. Details of these registration are as follows:

Trade mark:  

Trade mark registration:     413098

Filing Date:  8 August 1984

Specification:  Class 30: Rice

Endorsement: Registration of this trade mark shall give no right to the exclusive use of the words LONG GRAIN PURE and phrase NATURE'S TREASURE OF EXCELLENCE IN FRAGRANCE AND FLAVOUR FROM ITS ORIGINAL HOME. In use the description BASMATI RICE appearing in the mark is varied in accordance with the application of the mark to other goods comprised in the specification. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

Trade mark:  

Trade mark registration:     724133

Filing Date:  16 December 1996

Specification:  Class 30: Rice

11.   The opponent is the registered owner of the above trade marks which have earlier priority dates to that of the applicant’s trade mark. The trade mark registrations cover ‘rice’ in class 30, goods which are also incorporated in the applicant’s goods claim. I note that the dispute between the parties is only in regards to rice and do not involve any of the other goods claimed in the applicant’s specification of goods in classes 29 and 30.

12.  The key issue to be decided is whether the applicant’s trade mark ‘SARTAJ with crown device’ is either substantially identical or deceptively similar to either of the opponent’s registered TAJ trade marks. The respective trade marks can be seen below.

Opponent’s trade marks Applicant’s trade mark

13.  It is clear that the applicant’s trade mark is not substantially identical with either of the opponent’s TAJ trade marks according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[3]. The additional words and graphic devices in the opponent’s registrations as well as the difference in the spelling of the word in the applicant’s trade mark all act as clear visual difference between the opponent’s trade mark registrations and the applicant’s trade mark.

[3] (1963) 109 CLR 407 at 414

14.  On the other hand, the determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have recalling the opponent’s trade mark, to the impression they would get from the applicant’s trade mark.[4]  The probability of deception must be finite and non-trivial.[5]

[4] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J at 415

[5] Registrar of Trade Marks v Woolworths Limited 45 IPR 411, per French J at [43]

15.  The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 415:

The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]

16.  The Court added at 416, that:

[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

17.  The decisive question is whether the use of the applicant’s SARTAJ and crown device trade mark for rice in class 30 given the previous registrations for TAJ trade marks for rice in class 30 would result in a tangible danger of confusion or deception. I do not believe it would. In coming to this decision it is important that trade marks are considered in their entirety – ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[6]

[6] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

18.  In comparing the trade mark is becomes apparent that a single common element of the opponent’s trade mark registrations is the prominent word TAJ. The applicant’s trade mark is SARTAJ with a crown device. The opponent has argued that the –TAJ suffix in the applicant’s trade mark will lead consumers to believe that that goods branded with the SARTAJ trade mark are somehow related to the opponent’s TAJ branded goods and that there will be confusion. I am not satisfied that this is going to be the case.

19.  While the applicant’s trade mark SARTAJ does have the suffix –TAJ which is a prominent element in the opponent’s trade mark registrations, I am not convinced that consumers will be deceived or confused between the trade marks. Visually the trade marks are very different with a number of different and unrelated device and word elements. I note that the opponent’s trade mark registration no. 413098 contains the device of the very famous building known as the Taj Mahal. It is likely that consumers seeing the opponent’s TAJ trade mark in conjunction with the Taj Mahal device will understand that TAJ is a reference to the Taj Mahal since the graphic device emphasizes that connection. It is also likely that a consumer with this impression and understanding of the opponent’s TAJ trade mark would be far less likely to make that same association of the Taj Mahal with the applicant’s SARTAJ trade mark. I also note that SARTAJ has its own meaning being husband or crown, the second meaning of which is further emphasized by the applicant’s inclusion of a crown device in its trade mark representation. This further differentiates the applicant’s trade mark from the opponent’s trade marks, especially in the market in which both sets of goods are sold.

20.  I am not satisfied there is a real tangible danger of the respective trade marks being confused in the marketplace when applied to the applicant’s rice and the opponent’s rice.

21. Therefore, the opponent has not established the ground of opposition under section 44.

Section 60 - Reputation in Australia

22. 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.

23. To establish the ground of opposition under section 60, the opponent must demonstrate:

ØThat, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and

ØThat because of the reputation of the second trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

24. Unlike section 44 of the Act, section 60 does not require that the trade marks be substantially identical or deceptively similar. It is now for me to determine whether the opponent has acquired a reputation in Australia for its TAJ trade marks which is such that use of the opposed trade mark would be likely to deceive or cause confusion. These TAJ trade marks include the aforementioned trade mark registrations along with the “TAj” trade mark that appears in exhibit GV5, GV6, GV7 and GV8 accompanying the statutory declaration of Mr Gautaam Varma (‘the Varma declaration’).

25.  In relation to reputation Kenny J states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

[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.

At 129 Kenny J continues:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product:…

26.  The Varma declaration states that the opponent commenced business in 1984 and that since that time he estimates that the opponent has spent some hundreds of thousands of dollars on the marketing and advertising of its TAJ branded goods in Australia with a small amount of that expenditure occurring in the 2009 financial year. The opponent has used both print (exhibit GV7) and online media (exhibit GV8) to advertise it goods across a range of ethnic centric publications including Star Galaxy, Indian Downunder and India Link. However, these publications do not appear to have a large readership base which suggests that the opponent has a relatively restricted reputation for its goods.

27.  The Varma declaration also goes on to state that the annual turnover for the opponent’s goods has been quite considerable since at least 2005. However, there is no break down in figures and it is impossible to determine how much of this turnover may be attributed to the opponent’s TAJ branded goods. Mr Varma also explains that a total of approximately 1150 wholesale outlets, retail outlets, ethnic distribution shops, and restaurants outside of major supermarket chains sell or provide the opponent’s TAJ branded rice to their customers. This is a considerable number of venues through which the opponent’s TAJ branded goods are distributed. It is clear from the evidence that the opponent has also engaged in a reasonable level of advertising which has resulted in growing sales as the years have progressed. The opponent has also been using its TAJ trade marks for a period of time which predates the opposed trade mark’s priority date.

28.  I am satisfied that the opponent has a reasonable reputation in its goods bearing one or other of its TAJ trade marks before the priority date of the opposed trade mark. However, I need to determine if, given this reputation in Australia, use of the opposed trade mark would be likely to deceive or cause confusion. In my consideration of the likelihood of confusion or deception, I am not to be influenced by the evidence of how the applicant uses its trade mark. I am to consider any of the modes of business that would be within the scope of the registration, should it be granted in the terms presently sought.

29.  Both parties have demonstrated use of their trade marks within the same market in Australia. However, I am not satisfied that it is likely the average consumer would become confused and be caused to wonder whether there was a connection between the opponent’s goods and those goods of the applicant bearing the SARTAJ trade mark particularly since the opponent’s trade marks convey a different meaning to consumers and incorporate a number of visual differences to the applicant’s trade mark.

30. Given the reasons already outlined in my discussion of section 44 regarding the lack of similarity between the trade marks I do not believe that use of the SARTAJ mark would be likely to deceive or cause confusion in the marketplace. The trade marks are simply too different and the reputation of the opponent’s trade marks is not sufficient to overcome the differences in the trade marks and cause deception or confusion in the marketplace.

31. Additionally, there is no evidence before me of actual confusion in the marketplace in relation to the origin of the applicant’s and opponent’s respective goods provided under the respective trade marks. I am not satisfied that applicant’s use of its SARTAJ trade mark will result in any significant degree of deception. The opponent has not established the section 60 ground of opposition.

Decision

32. Subsection 55(1) of the Act provides:

Decision

55 (1). Unless the proceedings are discontinued or dismissed, 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:  For limitations see section 6.

33.  The opponent has not established any of the grounds of opposition. The trade mark application 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

34.  Both parties made a claim for costs and there have been considerable submissions made as to why the opponent should have costs awarded against them in the event of not establishing a ground of opposition. However, there is nothing before me suggesting that costs should not follow the general rule, I award costs against the opponent in accord with Schedule 8 of the Trade Mark Regulations 1995.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
30 October 2012