Vaishi Enterprises Pty Ltd v GSM Food and Spices Pty Ltd

[2018] ATMO 7

TRADE MARKS ACT 1995

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

Re:Opposition by Vaishi Enterprises Pty Ltd to application under section 92 of the Act by GSM Food and Spices Pty Ltd to remove trade mark number 1407003(29, 30) - MEHAK NATURAL YOGHURT and device - in the name of Vaishi Enterprises Pty Ltd

Delegate:	Adrian Richards
Representation:	Opponent: Davies Collison Cave Pty Ltd Applicant: Self represented
Decision:	2018 ATMO 7 Trade Marks Act 1995 (Cth) – opposed application under section 92(4)(a) seeking removal of all goods – ground for removal established for some goods in class 29 – discretion not to remove under section 101(3) exercised in relation to remainder of goods in class 29 – all other goods removed

Background

1. This decision on the written record concerns the registered trade mark below:

   Trade mark:   (‘the Trade Mark’)
   Specification of goods:        Class 29: Milk products
     Class 30: Curry spices; spices
   Registration number:         1407003
   Filing date:  3 February 2011

2. On 26 July 2012, GSM Food and Spices Pty Ltd (‘the Applicant’) made an application (‘the Application’) under the Trade Marks Act 1995 (Cth) (‘the Act’) to remove the Trade Mark from the Register of Trade Marks (‘the Register’), in respect of all goods for which it is registered.

3. The registered owner of the Trade Mark, Vaishi Enterprises Pty Ltd (‘the Opponent’) filed a Notice of Opposition to the Application on 9 November 2012. The Opponent then filed evidence in support of its opposition on 3 May 2013.

4. The Applicant was sent a letter by this office, dated 22 May 2013, stating that it had three months to file evidence in answer. No evidence in answer was filed. This office then sent letters dated 6 September 2013 to both parties notifying them that the opposition was ready to be heard, inviting them to request a hearing or file written submissions. Neither party responded. This office again sent letters to the parties on 16 October 2013, this time noting the lack of a request for a hearing and notifying them that the opposition was to be decided on the papers. Those letters also gave the parties one more month to file written submissions. To date, no written submissions have been received by this office from either party.

5. The opposition was recently given to me, a delegate of the Registrar of Trade Marks, to decide.

Evidence

1. The evidence filed during the prosecution of this opposition consists of a single Statutory Declaration made by Ignatious Joseph, a director of the Opponent, executed on 8 May 2013 with Exhibits 1 - 4.

2. The declaration asserts that the Trade Mark was first used by the Opponent on 14 August 2011 on its natural yoghurt products, and has been used continuously for that purpose since. The declaration attaches sales figures showing that, at the date of the declaration, the Opponent had made sales of yoghurt bearing the Trade Mark.

3. Mr Joseph has annexed to his declaration a copy of an invoice dated 10 August 2011 issued by Fantastick Label Company. It bills the Opponent for a substantial number of ‘Mehak 1kg Labels’ and ‘Mehak 2kg Labels’. A sample copy of the 2kg label (‘the Label’) has also been included in evidence, which is reproduced below.

1. The declaration attaches images of tubs of yoghurt bearing the Label, sitting amongst other yoghurt tubs and sundry refrigerated items, in several refrigerators of a retail store in Victoria. Tubs bearing the Label are also depicted in the back of a truck, which Mr Joseph says shows the tubs in preparation for their delivery to retail outlets.

Grounds and onus

1. The Application nominates one ground for removal under s 92(4)(a) of the Act. I have set out that paragraph below, within its relevant context:

   92 Application for removal of trade mark from Register etc.

   (4)    An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

   (a)    that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)    to use the trade mark in Australia; or

   (ii)  to authorise the use of the trade mark in Australia; or

   (iii) 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 to which the non‑use application relates and that the registered owner:

   (iv)  has not used the trade mark in Australia; or

   (v)  has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed

   …

   Note 1:For file and month see section 6.

   Note 2:If non-use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

2. To summarise the above, by nominating this ground for removal the Applicant makes two allegations. It asserts both that the Opponent had no intention to make appropriate use of the Trade Mark at the filing date, and that there had never been any use of the Trade Mark in good faith at any time prior to 26 June 2012. If either of those allegations is successfully rebutted, this ground for removal cannot be established. The onus falls on the Opponent to rebut the Applicant’s allegations.[1] If it was in any doubt, s 100(2)(a) spells out what the Opponent must prove in the present circumstances:

   100 Burden on opponent to establish use of trade mark etc.

   (2)    ...the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a)    the opponent has established that the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services before that period…

   Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

   Note 2:For registered owner see section 6.

   [1] Trade Marks Act 1995 (Cth) ss 100(1)(a)-(b).

Discussion of the ground of opposition

1. The Opponent’s evidence shows use of the Trade Mark on the Label with some additions and alterations. The immediate question is whether those additions or alterations substantially affect the identity of the Trade Mark.

2. Arguably, additions appear on a white background on either side of the yellow block. The information appearing there is standard fare for retail foodstuffs, such as origin labelling, nutrition information, ingredients and instructions for safe storage. I do not take these as additions to the Trade Mark itself, but even if I was wrong here, the nature and positioning of this information means that it could not affect its identity.

3. The Label adds to the right of the word ‘NATURAL’ the descriptor ‘SOUR’, and the tagline ‘A Taste of India’ at the bottom left. ‘NATURAL YOGHURT’ and ‘NATURAL SOUR YOGHURT’ mean the same thing, are both highly descriptive of the goods, and offer little in the way of distinctiveness. The addition of the word ‘SOUR’ does not alter the identity of the Trade Mark. Turning to the tagline, this is without doubt the most significant of the additions or alterations – the phrase would arguably be registrable in its own right. However, in combination particularly with those distinctive paired elements ‘MEHAK’ astride the bucolic photograph, the tagline’s positioning and relative size means it does not substantially affect the identity of the Trade Mark.

4. There are many alterations. Rather than list each of them, I just note that there were obviously many (mostly very slight) changes to fonts, colours and outlines made in between designing the Trade Mark and printing it onto the Labels. These alterations are immaterial to the identity of the Trade Mark. One alteration does not fall within the above grouping is the shift of ‘RENNET FREE’ from the left to the right of the Trade Mark, which in the process has relegated the ‘2kg’ to a product information panel. In my view, since these are again very descriptive elements, their movement has also not affected the identity of the Trade Mark.

5. The Opponent’s evidence shows use of the Trade Mark, as it appears on the Label, in relation to yoghurt, from before 26 June 2012.[2] I find that the ground for removal has been rebutted in respect of that aspect of the claim to milk products class 29. Other milk products in class 29 and all of the goods claimed in class 30 are another matter. Neither non-yoghurt milk products nor spices are so much as acknowledged in the Opponent’s evidence, nor has the Opponent elsewhere claimed it at any point used or intended to use the Trade Mark in respect of such goods. The ground for removal of the Trade Mark in respect of all goods other than yoghurt (‘the Other Goods’) has therefore been established.

   [2] Trade Marks Act 1995 (Cth) ss 9(1)(b)(i), (2).

Discretionary considerations

1. Section 101(3) of the Act makes plain that I may leave any or all of the Other Goods the Register, and s 101(4) offers some facts that I can take into account while considering this discretion:

   101 Determination of opposed application—general

   (3)    If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

   (4)    Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

   (a)    similar goods or closely related services; or

   (b)    similar services or closely related goods;

   to those to which the application relates.

   Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

   Note 2:For registered owner see section 6.

2. The Opponent bears the burden of persuasion[3] of showing that it is reasonable to leave the Trade Mark on the Register in respect of the Other Goods, despite the Opponent not having used it in relation to those goods, nor it would seem having an intention to.[4] Several factors relevant to the discretion have been posited in a variety of fact scenarios,[5] though no exhaustive list of considerations has been (or indeed should be) set out. A particularly weighty consideration is whether removal would itself cause confusion.[6]

   [3] Optical 88 Limited v Optical 88 Pty Limited (No. 2) (2010) 275 ALR 526, 580 [273].

   [4] Austin Nicholls & Co Inc v Lodestar Anstalt (No 1) (2012) 202 FCR 490, 496 [28].

   [5] See, eg, HERMES Trade Mark [1982] RPC 425, 433-5; E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69, 111-2 [202]; Austin Nicholls & Co Inc v Lodestar Anstalt (No 1) (2012) 202 FCR 490, 499 [41].

   [6] Austin Nicholls & Co Inc v Lodestar Anstalt (No 1) (2012) 202 FCR 490, 503 [66].

3. In spite of the lack of submissions from either party on this point, I have decided to exercise the discretion in favour of the Opponent in relation to the claim to milk products in class 29. The Opponent has shown use of the Trade Mark in relation to yoghurt, which is itself a milk product.[7] The Trade Mark itself prominently declares that whoever purchases the goods will get yoghurt, so applying it to different milk product (such as butter), would likely fall foul of food labelling legislation and/or the Australian Consumer Law. However, should a different trader in the wake of the removal of the Trade Mark from the Register begin to use it in respect of goods nearer to yoghurt (such as lassi or keffir), this is likely to bring about confusion, at least in relation to the trade source and perhaps even to the nature of the goods. I therefore see little problem with leaving the Trade Mark on the Register in respect of milk products, and a likelihood of confusion arising were the goods for which the Trade Mark is registered in class 29 limited to yoghurt.

   [7] Trade Marks Act 1995 (Cth) s 101(4)(a).

4. As for the class 30, the Opponent has shown no interest in spices, curry or otherwise. Spices are not near enough to milk products to warrant any detailed consideration of potential impacts that might stem from removal of class 30 goods. It has not discharged its burden of persuasion, and I decline to exercise the s 101(3) discretion in relation to those goods.

Decision

1. Section 101(1) of the Act states:

   101  Determination of opposed application—general

   (1)    Subject to subsection (3) and to section 102, if:

   (a)    the proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b)    the Registrar is satisfied that the grounds on which the application was made have been established;

   the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

2. The Opponent has rebutted the allegation in the Application in relation only to yoghurt. However, I consider it appropriate to exercise the discretion to leave the Trade Mark on the Register for milk products in class 29 but not in respect of class 30 goods. The Trade Mark will be removed from the Register in respect of the goods in class 30 for which it is registered one month from the date of this decision. If the Registrar of Trade Marks is served with a notice of appeal before that time, I direct that the removal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of the Application should be in accordance with the Court’s orders or directions.

Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
22 January 2018