Section 52 opposition: amendment to Notice of Opposition considered and allowed - ss 58, 44 and 60 considered – Applicant’s claim to ownership not displaced – Trade Mark not deceptively similar to Opponent’s trade mark - reputation of Opponent’s trade mark not shown – opposition not established. Costs awarded against the Opponent. = The Applicant has “[s]ince around March 2007...been a rice importer and trader in Australia”. He says that he “created” the Trade Mark in around February 2008 and that in around May that year he “began using [it] in partnership with Liberty Impex [Pty Ltd]”, a company that he and a Mr Mohammed Moten had incorporated on 20 May 2008, “in connection with rice and the supply of rice in Australia”. He says he had a verbal agreement with Mr Moten at the time to license the company to use the Trade Mark and that, “It was always understood by [the company and Mr Moten] that I was the sole owner of the Trade Mark and that neither [the company nor Mr Moten] had any rights in [it] other than those under licence from me”. - Section 60 of the Act is reproduced below: Trade mark similar to trade mark that has acquired a reputation in Australia 60. 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.

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 1313229 (30, 35) - GRAND TIGER Label - in the name of Gerson Rangel

DELEGATE:	Michael Kirov
REPRESENTATION:	Opponent: Carmen Champion of Counsel, instructed by Matthews Folbigg Lawyers Applicant: Matthew Hall, Legal Practitioner, of Swaab Attorneys, assisted by Kelly Marshall
DECISION:	2012 ATMO 84 Section 52 opposition: amendment to Notice of Opposition considered and allowed - ss 58, 44 and 60 considered – Applicant’s claim to ownership not displaced – Trade Mark not deceptively similar to Opponent’s trade mark - reputation of Opponent’s trade mark not shown – opposition not established. Costs awarded against the Opponent.

Background

1. This is an opposition brought by Taj Food Sales Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Gerson Rangel (“the Applicant”) for the goods it covers in Class 30:

Application Number: 1313229
Priority Date: 18 August 2009 (“the Priority Date”)
Goods: Class 30: Rice
Services: Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means)

Trade Mark: (“the Trade Mark”)

2. The Applicant has “[s]ince around March 2007...been a rice importer and trader in Australia”. He says that he “created” the Trade Mark in around February 2008 and that in around May that year he “began using [it] in partnership with Liberty Impex [Pty Ltd]”, a company that he and a Mr Mohammed Moten had incorporated on 20 May 2008, “in connection with rice and the supply of rice in Australia”. He says he had a verbal agreement with Mr Moten at the time to license the company to use the Trade Mark and that, “It was always understood by [the company and Mr Moten] that I was the sole owner of the Trade Mark and that neither [the company nor Mr Moten] had any rights in [it] other than those under licence from me”.
3. The Applicant resigned as a Director of the company, sold his shareholding to Mr Moten and “terminated the licence to [the company] to use the Trade Mark” in August 2009, some six days after filing application 1313229. He says that the company has not used the Trade Mark since then but that he himself has continued to use it on rice products and in connection with the supply of rice through another company he incorporated on 16 September 2009, granting the new company a licence for this purpose.
4. The Opponent was incorporated on 20 February 1990 and claims it “is presently one of the largest importers into Australia of premium grade basmati rice” from India and Pakistan, which it sells “to the food service, wholesale, retail and supermarket trade”. Its “number one seller” is WHITE TIGER branded basmati rice from Pakistan, which it apparently commenced importing to Australia (through, as I understand it, a predecessor in business) “in 1988-89”. Its application to register the trade mark for “Rice” on 28 December 1990 was accepted without objection in June 1992, but was allowed to lapse 12 months later following non-payment of the required registration fee. The Opponent subsequently registered the trade mark detailed below, which it relies on to found its s 44 ground of opposition:

Registration Number: 721917
Priority Date: 18 November 1996
Goods: Class 30: Rice
Trade Mark: (“the Opponent’s Mark”)

5. The Opponent has filed (or attempted to file) the three Notices of Oppositions described below, all of which are somewhat problematic from the Opponent’s point of view:
   • The first is dated 30 November 2009 (“the first Notice”) and was filed prematurely with IP Australia on or about that day. In this regard IP Australia’s decision to accept application 1313229 for possible registration was made on 18 September 2009 but this was not advertised in the Australian Official Journal of Trade Marks for possible opposition until 17 December 2009. IP Australia wrote to the Opponent’s attorneys on 11 December 2009 returning the first Notice and advising it was deemed not to have been filed;
   • The second is dated 13 January 2010 (“the second Notice”) and was filed on 15 January 2010. Apart from its date the second Notice is otherwise identical to the first Notice, each nominating grounds corresponding to ss 41, 42(b), 43, 44, 58A, 59, 60 and 62(b) of the Act. Relevantly to what follows, neither Notice included a ground corresponding to s 58 of the Act;
   • The third (“the third Notice”), which is unsigned, bears the identical date as the first Notice, namely 30 November 2009, this being an obvious error on the face of it[1]. That said, it is headed “AMENDEDNOTICE OF OPPOSITION” and differs from the earlier two Notices in that one additional ground has been added, namely that “The Applicant is not the owner of the Trade Mark: s 58”. The third Notice constituted an attachment to a declaration[2] made on 20 June 2012 by Stephen Patrick Jenkins of the Opponent’s attorneys (“the Jenkins Declaration”) which aims to explain why the earlier Notice(s) had not included a s 58 ground. The declaration was emailed to IP Australia (and copied to the Applicant’s attorneys) at around 5.50 pm on 20 June, this being the eve of the hearing scheduled for 10.00 am the next morning. I mention that this was some four hours after the Applicant’s attorneys had emailed the Opponent’s attorneys and me brief “supplementary” written submissions (discussed further below) which specifically highlighted that no s 58 ground was included in the second Notice. As also discussed below, the parties’ representatives made submissions at the hearing itself as to whether or not the Opponent’s request to amend its Notice of Opposition to include the s 58 ground should be allowed.
6. The parties served Evidence in Support and Evidence in Answer as follows:

Evidence in Support
▪ Statutory Declaration by Gautam Varma made 14 July 2010, with Exhibits
GV1 to GV18
Evidence in Answer
▪ Statutory Declaration by David Matthew Hall[3] made on 13 April 2011, with Annexures A to F
▪ Statutory Declaration by Gerson Rangel made 16 May 2011, with Annexures A to G

7. Despite obtaining a three month extension to serve Evidence in Reply, the Opponent eventually elected not to do so.
8. I heard the matter as delegate of the Registrar of Trade Marks on 21 June 2012 in Sydney. Carmen Champion of Counsel, instructed by Matthews Folbigg Lawyers, appeared for the Opponent. Ms Champion’s oral submissions were supplemented by written submissions dated 14 June 2012, which were emailed to me on 15 June and, I understand, copied to the Applicant’s attorneys by regular mail. These written submissions confirmed for the first time that the Opponent was only objecting to the Class 30 specification of application 1313229 and that the grounds it was seeking to press at the hearing were those corresponding to ss 44(1), 58 and 60 of the Act.
9. Matthew Hall of Swaab Attorneys, assisted by Kelly Marshall of the same firm, appeared for the Applicant[4]. His oral submissions were supplemented by written submissions dated 19 June 2012 which were emailed to the Opponent’s attorneys and to me that day and which address the ss 44(1), 58 and 60 grounds as outlined in Ms Champion’s written submissions of 14 June. In these written submissions Mr Hall does not mention the fact that no s 58 ground is nominated in the second Notice.
10. Mr Hall presumably became aware of the deficiency in the second Notice shortly afterwards because he emailed the Opponent’s attorneys and me brief “supplementary” submissions at around 2.00 pm on 20 June stating, inter alia, that:

At no time until receipt of [Ms Champion’s 14 June 2012] submissions from the Opponent has the Opponent made any claim that the Applicant is not the owner of the Trade Mark.
It is now simply too late for the Opponent to make a claim of lack of ownership, pursuant to s 58.
The claims for lack of ownership are not able to be considered by the Hearing Officer and must be rejected.

11. As mentioned, following receipt of Mr Hall’s supplementary submissions the Opponent’s attorneys prepared the third Notice in apparent haste and emailed it attached to the Jenkins Declaration at around 5.50 pm on the eve of the hearing to Mr Hall and to me. Mr Jenkins describes himself as “Agent for the Opponent” and begins his declaration by incorrectly referring to the (first) Notice dated “30 November 2009”. He continues:

2. The [first Notice] did not include specifically as a ground Section 58 of the [Act]. Upon receiving the Applicant’s Supplementary Submissions dated 20 June 2012 I immediately checked the [first Notice], against the firm’s pro forma Notice of Opposition. It became immediately apparent that Section 58 was not specifically included in the redraft of the Notice of Opposition as filed. This oversight was wholly on my part when preparing the [first Notice] and in light of this oversight I seek leave to file an Amended Notice of Opposition.
3. The failure to include this ground has not effected (sic) the evidence as filed by the Opponent or the Applicant in the opposition proceedings and the Applicant has suffered no prejudice as a result of the clerical oversight. In all the circumstances, and with a view to the Registrar dealing with all the relevant grounds of opposition, it is fair and reasonable for the Opponent to be permitted to rely upon [the third Notice].
4. Attached and marked “A” is [the third Notice]. The Opponent will seek leave to rely upon [the third Notice] at the Hearing [tomorrow morning].
5. This Declaration together with the attached [third Notice] have (sic) been served upon the solicitor for the Applicant.

12. Mr Hall responded some 40 minutes later by email sent to the Opponent’s attorneys and me, stating:

Receipt of the correspondence and statutory (sic) declaration is acknowledged. Any application for an extension of time within which to file an amended notice of opposition that will be made at the hearing tomorrow will be opposed.

Preliminary Discussion re Inclusion of the s 58 Ground

13. At the hearing itself (and before moving to the substance of the opposition) Ms Champion and Mr Hall firstly made their submissions on whether the Opponent should be allowed to rely on the third Notice and press its s 58 ground.
14. Ms Champion said the request was based on s 66(a) of the Act. Section 66 provides:

The Registrar may, at the request[5] of the person who has filed an application (other than an application for the registration of a trade mark), a notice or other document for the purposes of this Act or at the request of the person's agent, amend the application, notice or document:

(a) to correct a clerical error or an obvious mistake; or

(b) if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.

15. Referring to Kiwi Munchies Pty Ltd v Kraft Foods Holdings Inc (2005) 66 IPR 620 (“Kiwi Munchies”) and Parkside Towbars Pty Ltd v Tow-Safe Pty Ltd (2011) 91 IPR 416 (“Parkside Towbars”), Ms Champion noted that Mr Jenkins essentially claims in his declaration that there was an “oversight” on his part in copying and pasting the various available opposition grounds from his firm’s “pro forma Notice of Opposition” to the first Notice. Although not specifically addressed by Ms Champion, it goes without saying that this oversight was obviously not picked up when the second Notice was (one imagines) cloned from the first. Ms Champion submitted Mr Jenkins was correct in his assessment that, “The failure to include [the s 58] ground has not effected (sic) the evidence as filed by the Opponent or the Applicant in the opposition proceedings and the Applicant has suffered no prejudice as a result of the clerical oversight”. In this regard she pointed out that Mr Hall had already addressed the s 58 ground in his (original) written submissions of 19 June 2012 (in answer to her submissions of 14 June which canvassed the ground in question) suggesting he, too, was then unaware that the ground was not actually included in the second Notice.
16. It is convenient here to note that there is nothing in the Opponent’s evidence relevant to the issue of ownership of the Trade Mark, nor indeed did Ms Champion submit otherwise. She nevertheless argued that there were “clear signs” in the Applicant’s declaration that, as she put it, “there was another party with common law rights in the Trade Mark” and she referred in particular to the statement in the Applicant’s declaration that, “In around May 2008, I began using the Trade Mark in partnership with Liberty Impex [Pty Limited] in connection with rice and the supply of rice in Australia”.
17. Mr Hall, for his part, doubted Mr Jenkins’ claim that the s 58 ground was omitted inadvertently and he pointed to the fact that there was nothing in the Opponent’s Evidence in Support which suggested it intended to pursue this ground. Moreover, the Opponent had only sought formally to add s 58 after Mr Hall himself had pointed out its absence from the second Notice. Contrary to Mr Jenkins’ claim, Mr Hall submitted that widening the grounds of opposition some two and a half years after the second Notice was filed was unfair to the Applicant. He noted that when preparing his Evidence in Answer the Applicant had not specifically addressed the issue of ownership, being concerned only with answering the Notice of Opposition and Evidence in Support which had been served on him. Notwithstanding this, Mr Hall noted Ms Champion was now foreshadowing that the Opponent’s entire case with respect to s 58 was predicated upon adverse inferences regarding ownership of the Trade Mark being drawn from the Applicant’s evidence. (I again mention in this context that after being served with the Applicant’s Evidence in Answer and after having six months to consider it the Opponent elected not to serve any Evidence in Reply.) Thus, he submitted, inclusion of the s 58 ground at this late stage clearly risked prejudicing the Applicant.
18. In the Parkside Towbars decision referred to by Ms Champion the Registrar’s delegate allowed amendment to a Notice of Opposition pursuant to s 66 to include a s 44 ground nominating a trade mark registration owned by the opponent. This was in circumstances where the opponent had previously sent the applicant a letter of demand referring to the trade mark in question (so the applicant might reasonably have anticipated the s 44 ground), where the opponent’s evidence referred to the registration in question and where, in any event, the applicant had been given the opportunity to put on further evidence addressing the s 44 issue if it so wished. Mr Hall submitted the facts in the present opposition were in no way analogous to those in Parkside Towbars and that an adjournment might be necessary to allow the Applicant to serve further evidence if the s 58 ground were to be included.
19. I mention that while the delegate in Parkside Towbars accepted that there had most likely been “a clerical error or obvious mistake” by the opponent and thus that s 66(a) might reasonably be invoked, he also considered it “fair and reasonable in all the circumstances of the case to do so” in terms of s 66(b) of the Act, reasoning that:

[7] The relevant principles in exercising the discretion under s 66(b) include the inconvenience to the relevant parties and the desirability of operating the trade mark system efficiently and without unreasonable delay.[6]It is in the public interest and the interest of the involved parties to address pertinent grounds at the opposition stage. Those interests can be balanced with the relative inconvenience to the parties and ensuring that the applicant has had the opportunity to address the additional ground. In this matter, the opponent did not need to serve further evidence to support the new ground and the applicant was given an opportunity to provide further evidence to address s 44. In the end, the hearing of the substantive matters under s 52 of the Act was not delayed as a result of the opponent’s requested amendment.
[8] To refuse this amendment to the notice of opposition would likely result in an appeal de novo to the Federal Court where the s 44 ground may be argued by the opponent. Such an approach on behalf of the registrar would not be conducting a hearing “... with as little formality and technicality, and with as much expedition, as the requirements of the Act and these regulations and a proper consideration of the matters before the Registrar, allow”.[7] Considering the above factors, I am satisfied that it is appropriate in the circumstances to allow the opponent to amend its notice of opposition as requested under s 66(b) of the Act.

20. In Kiwi Munchies, with both parties initially relying on written submissions only, a delegate of the Registrar had dismissed an opposition, including dismissal of a ground based on s 59 of the Act addressed in the opponent’s solicitor’s submissions, noting the s 59 ground had neither been included in the Notice nor was it indicated or supported in the opponent’s evidence. The opponent sought a review of the decision under the Administrative Decisions (Judicial Review) Act 1977 (Cth) (“the AD(JR) matter”) on the grounds of denial of natural justice, this being settled when the applicant consented to the opponent’s making a formal application to IP Australia under s 66 of the Act to have the s 59 ground included and, potentially, considered. Both parties made written submissions on the s 66 application and, following IP Australia’s provisional refusal to include the ground, the opponent sought a hearing on the issue. In his decision following this hearing the Registrar’s delegate concluded at [24] to [29] (with footnotes omitted):

[24] Ms Paras [the opponent’s solicitor] has argued that s 66(b) is applicable but has not at any stage explained why the s 59 ground was not specified in the notice of opposition as filed. There is no reason to conclude that this was accidental, and hence arguably within the scope of s 66(a), because there is nothing in the evidence relied on by Kiwi [the opponent] up until the time of the AD(JR) matter to show that it had pursued the topic at all. Therefore, I can only conclude that the decision not to originally nominate the ground was deliberate. Ms Paras noted that the opponent became aware of the implications of the lack of the relevant ground only after considering the evidence in answer and the submissions made by Kraft [the applicant] when Ms Dunn [the original Registrar’s delegate] made her decision. However, since Kiwi filed no evidence in reply, I must presume that this consideration took place after Ms Dunn issued her decision, and not before it.
[25] I will not repeat Ms Paras’s submissions about the broad discretion under s 66(b). I agree with her entirely. Again, I accept her point that there is no evidence that the trade mark applicant will be disadvantaged by the delay in the way these matters have been raised by Kiwi. However, I think I would be wrong to ignore the probability that delay in registration will disadvantage an applicant more than an opponent. That is a circumstance that affects the balance of convenience as between the parties.
[26] As to this, Ms Paras asserted that “Kraft will have ample time to respond to the [o]pponent’s evidence in relation to the amendments” and that there would be no prejudice to Kraft. I do not agree. Kraft should not be put to the trouble of further considering Kiwi’s evidence on such a tangential issue. Ms Paras apprehends that a serious issue may evolve from the unsupported assertions made [in the opponent’s attorney’s written submissions]. Though Kraft is the cause of the uncertainty, this does not entitle Kiwi to now raise these side-issues “just in case”, thereby obliging Kraft, in turn, to respond.
[27] Also with that issue in focus, Ms Paras asserts that Kraft, having taken a “passive” attitude and not expended funds on appearing at a hearing, would not see any time and effort thrown away. However, Kraft’s written submissions to Ms Dunn suggest that it has taken this line because it sees little merit in the opposition. I would not want to establish a system that leaves any party making this appraisal made vulnerable to late amendments of a notice of opposition where these amendments are not clearly justified.
[28] Ms Paras made submissions about the desirability of having all the issues traversed. This, she argued, was in the public interest and she referred to a number of TMO decisions where the importance of the pubic interest was stressed. However, I think that very often the public interest in having an accurate register, while doubtless still a factor, can be subordinated to the interests of those with a private commercial interest in the matter. I note that French J, in Registrar of Trade Marks v Woolworths Ltd, came to a similar conclusion regarding the balance between “the identification and protection of commercial products” versus “the protection of consumers”. Likewise, in McCormick & Co Inc v McCormick Kenny J, in considering the proper application of s 44(3), noted that “the likelihood of confusion is a relevant but not determinative factor”. In my experience, on the other hand, claims about a public interest are usually made most loudly by those who have not been diligent in protecting their own interests in prosecuting a matter.
[29] It appears that there is nothing more behind the present amendment request than a belated desire to pursue a side-issue started by an unsupported assertion, itself of insignificant weight, in Kraft’s evidence. The issue is not what Ungoed-Thomas J, in Re Bali Trade Mark, referred to as “substantial”. Given the lateness with which the issue was raised, and because of my assessment of the lack of merit in the aspects that Ms Paras has identified, I refuse to allow a ground under s 59 to be brought into issue at this, the penultimate stage of proceedings.

21. While there are on the face of it several parallels between the facts in Kiwi Munchies and the present opposition, in the matter before me the Opponent’s application is, as mentioned, made under s 66(a) rather than s 66(b). In this regard I have no evidence before me indicating Mr Jenkins was being anything other than truthful in stating that omission of a s 58 ground from the first (and second) Notice was wholly due to an “oversight” on his part. On the other hand I am by no means satisfied the Opponent specifically intended to argue s 58 when it prepared the first two Notices. Rather, I think it likely the Opponent’s attorneys merely wanted to include all possible grounds with a view to later selecting which specific grounds to press should the matter proceed. Indeed, I think it unlikely the Opponent decided it might argue the s 58 ground until Ms Champion was briefed to appear shortly before the hearing and certainly not before it had seen the Applicant’s Evidence in Answer. Moreover, I believe there is merit in Mr Hall’s submission that, at the very least, the Applicant should be permitted to serve and file further evidence if the Opponent were otherwise to be allowed to argue a ground based entirely on adverse inferences being drawn from evidence prepared by the Applicant in ignorance that the ground was even in issue.
22. With both parties’ representatives’ consent, I thus proposed at the hearing that I reserve my decision on inclusion of the s 58 ground and, to avoid possibly unnecessary further delay and expense, I proceed to hear the parties’ substantive submissions on this and the other two grounds (based on s 44 and s 60) the Opponent wished to press. Having heard those submissions, I have concluded that it would not prejudice the Applicant, indeed would arguably be in its interest, to allow the amendment under s 66(a) sought by the Opponent. This is because, as discussed below, on the evidence before me the Opponent has not satisfied me that its s 58 ground is established in any event. For essentially the same reasons put by the Registrar’s delegate in connection with s 66(b) of the Act in the passages from Parkside Towbars quoted in paragraph 19 above, then, I do allow the Opponent to amend its Notice of Opposition to include a ground based on s 58.

Grounds of Opposition, Onus and Standard of Proof

23. As indicated above, the Opponent pressed grounds based on ss 44, 58 and 60 of the Act, although only in relation to the goods (“Rice”) covered by application 1313229. I treat the remaining grounds listed in the Notice(s) as abandoned.
24. To succeed, the Opponent bears the onus of establishing at least one of the three grounds pressed at the hearing. I confirm I am proceeding on the basis that the relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities [8].
25. As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 595, the relevant date at which the rights of the parties are to be determined is the Priority Date.

Discussion

26. It is convenient to discuss the Opponent’s grounds in the order they were dealt with by Ms Champion, commencing with the s 58 ground.

Section58

27. As mentioned, the ground based on s 58 is indicated in the third Notice as follows:

The Applicant is not the owner of the Trade Mark: s 58

28. Section 58 itself is reproduced below:

Applicant not owner of trade mark
58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.

29. In her submissions on the s 58 ground Ms Champion also relied on s 27(1) of the Act:

Application—how made
27.(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:
(a) the person claims to be the owner of the trade mark; and
(b) one of the following applies:
(i) the person is using or intends to use the trade mark in relation to the goods and/or services;
(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.
Note: For use see section 7.

30. The word “owner”[9] is not defined in the Act, although there are numerous decisions where courts have considered its meaning at common law. It is well established that in the absence of fraud the owner of a trade mark in Australia for particular goods or services is taken to be the first person[10] to use it in the course of trade in Australia in relation to those goods or services[11] (or in relation to goods or services considered to be “the same kind of thing”).[12]
31. As Ms Champion noted, more often than not in cases of disputed ownership it is an opponent claiming it first used the trade mark in suit (or a substantially identical trade mark) for the same, or essentially the same, goods or services. In the present opposition, however, the Opponent does not claim that it has ever used the Trade Mark (or a substantially identical trade mark) for any goods or services. Rather, the Opponent’s claim is that either the Applicant’s former business associate Mr Moten, or the company Liberty Impex Pty Ltd which the Applicant and Mr Moten incorporated in May 2008 (hereafter “the Company”), must according to the Applicant’s evidence have had some shared proprietorial interest in the Trade Mark. Accordingly, Ms Champion submits, the Applicant could not lawfully claim to have been the owner of the Trade Mark in his own right as at the Priority Date, (as specified in s 27(1)(a) of the Act), and the Opponent’s s 58 ground must be upheld.
32. There is no evidence before me from Mr Moten or on behalf of the Company per se. Nor, as discussed, has the Opponent served any evidence relevant to first use or ownership of the Trade Mark or, indeed, otherwise contradicting any aspect of the Applicant’s Evidence in Answer. Ms Champion nevertheless invited me to draw a number of adverse inferences from statements made by the Applicant himself concerning the circumstances in which the Trade Mark was first used.
33. In particular, Ms Champion submitted that, taken collectively, the following statements by the Applicant in his declaration establish on the balance of probabilities that the first (and only) user of the Trade Mark before the Applicant applied to register it was either the “partnership” of Mr Moten and the Applicant, or the Company, rather than the Applicant personally:
    1. “Between around March 2007 to May 2008, I was a rice importer and trader in association with Mohammed Moten and Liberty Enterprise Co.”[13]
    2. “In around February 2008, I created the [Trade Mark].”
    3. “On 20 May 2008, Mohammed Moten and I incorporated [the Company].”
    4. “In around May 2008 I began using the Trade Mark in partnership with [the Company] in connection with rice and the supply of rice in Australia.”
    5. “While I was associated with [the Company], I licensed [the Company] to use the Trade Mark in connection with the sale and supply of rice in Australia. That licence was not in writing. It was a verbal agreement between Mr Moten and me, made in around May 2008. It was always understood by [the Company] and Mohammed Moten that I was the sole owner of the Trade Mark and that neither Moten nor [the Company] had any rights in the Trade Mark other than those under the licence from me.”
    6. “On 18 August 2009 I lodged [the application to register the Trade Mark].”
34. As to the Applicant’s claim to have created the Trade Mark in around February 2008, Ms Champion noted this was three months before the Company was incorporated and at a time when the Applicant says he was “a rice importer and trader in association with Mohammed Moten and [our business] Liberty Enterprise Co”. Thus, reasoned Ms Champion, “[t]here is a clear implication that the [Trade Mark] was created for the purposes of that partnership and may therefore have become partnership property.”
35. Moreover, she said, it was significant the Applicant had provided “no documentary evidence of [having created the Trade Mark].” As she put it:

The factual matrix surrounding the creation of the [Trade Mark] is within the knowledge of the Applicant. His failure to put the relevant facts before the delegate leaves the statements made by him to be judged on the principle of Blatch v Archer [1774] EngR 2; (1774) 98 ER 969 (applied in Vetter v Lake Macquarie Council [2001] HCA 12; (2001) 202 CLR 439 at [36]) where Lord Mansfield said that “all evidence is to be weighed according to the proof which it was in the power of one side to have produced”. The only inference that can be drawn from the Applicant’s failure is that to have put the relevant facts before the delegate would not have assisted him. That inference is strengthened by the failure of the opponent to adduce relevant evidence from Mr Moten: Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298; [1959] ALR 367; BC5900240.

36. Ms Champion also considered it significant that, “Again there is no documentary evidence supporting the existence of the alleged partnership” (between the Applicant and the Company). She submitted that:

Considering the significant legal consequences flowing from conducting a partnership business one would expect that the Applicant would, at the minimum, have produced tax returns for the partnership. The alleged use by the partnership raises the issue as to whether such use resulted in the opposed mark becoming partnership property.

37. I pause at this point to indicate I reject Ms Champion’s above submissions. The Applicant has nothing to prove in these proceedings and the onus of establishing its s 58 ground rests squarely with the Opponent throughout. Even had the second Notice or the Evidence in Support contained the slightest suggestion that the Applicant’s claim to ownership of the Trade Mark was challenged, which they do not, the onus would still remain upon the Opponent to establish on the balance of probabilities that a party other than the Applicant had a better claim to ownership based on first use. That is to say, in the case of s 58 there is no “shift in onus” from an opponent to an applicant in circumstances where, like here, an opponent merely alludes to a possibility that a party other than the applicant might have a better claim to ownership.
38. The Full Federal Court (Keane CJ, Stone and Jagot JJ) explored this issue in Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437 (“Food Channel”), where it was considering whether the trial judge “had erred in proceeding on the footing that [the trade mark applicant] was obliged to satisfy an evidentiary onus to negative the grounds of opposition under ss 58 and 59 of the Act”[14]. The court firstly considered the opponent’s argument that the “presumption of registrability” implied by s 33 of the Act only applied at examination and did not “carry through” to opposition proceedings, saying at [26] to [28]:

[26] This argument conflates the presumption of registrability which arises by virtue of s 33 of the Act at the acceptance stage by the registrar and the incidence of the onus of proof in opposition proceedings. Each of ss 58 and 59 of the Act creates a ground of opposition in terms apt to engage the usual rule as to onus of proof that “the party who asserts must prove”: see Unity Insurance Brokers Pty Ltd v Rocco Pezzano Pty Ltd[1998] HCA 38; (1998) 192 CLR 603 ; 154 ALR 361 at [99].
[27] In Joseph Constantine Steamship Line Ltd v Imperial Smelting Corp Ltd [1942] AC 154 at 174 ; [1941] 2 All ER 165 at 197, Viscount Maugham LC said:
In general the rule which applies is “Ei qui affirmat non ei qui reget incumbit probatio” (Proof lies upon him who asserts not on him who denies). It is an ancient rule founded on considerations of good sense and should not be departed from without strong reasons.
[28] Even if it be accepted that the presumption in favour of registration created by s 33 of the Act applies only in relation to the first examination by the registrar and does not “carry through” to opposition proceedings, the non-application of the presumption does not assist in resolving the incidence of the burden of proof in those proceedings. When one looks at the statutory language which frames the grounds on which opposition to registration may be advanced one does not see “strong reasons” to depart from the general rule referred to by Viscount Maugham. Rather, one sees confirmation that the general rule does apply. In particular, s 55 of the Act expressly contemplates that registration may be refused at the opposition stage only “to the extent (if any) to which” a relevant ground of opposition “has been established”.

39. While noting that there was some authority for there being a shift in onus in certain circumstances in the case of s 59, the Full Court was clear that such was not the case for s 58, stating at [37] to [39]:

[37] We turn to consider [the opponent’s] alternative argument in relation to the shifting onus of proof in relation to the grounds of opposition in ss 58 and 59 of the Act. The judge below recognised that there are no cases concerning s 58 in which the onus has been held to shift, in any way, to the applicants: Her Honour said (at [34]):
[34] The principle that the evidentiary onus in relation to ownership shifts in the circumstances submitted by the applicant has previously been promulgated in the context of opposition to a trade mark on the basis of s 59 (Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478 ; [2008] FCA 100 at [163]) but not, so far as I am aware, s 58.
[38] The concerns specific to opposition under s 59 of the Act do not readily translate to s 58 of the Act. In Health World, a case concerned with opposition under s 59 of the Act, Jacobson J said at [2008] FCA 100;(2008) 75 IPR 478 at [161]–[163]:
[161] The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition, or an application for rectification, to succeed on this ground: see Shanahan at [2.120], [11.110]; A Dufty and J Lahore, Lahore, Patents Trade Marks and Related Rights, LexisNexis Butterworths, Sydney, 2006 at [55,580].
[162] However, there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made: Philip Morris Products SA v Sean Ngu [2002] ATMO 96; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Shanahan at [11.110].
[163] The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.
[39] The difficulties of showing intention to use do not attend an attempt by an opponent to establish ownership through prior user; the opponent either has a case or it does not. Thus, there is no evident reason why a shift in the onus could arise in proceedings involving a ground of objection under s 58 of the Act.

40. In Food Channel the opponent had based its s 58 ground of opposition on statements in the applicant’s evidence by a Mr Lawrence, managing director of the company “Network” (which was the applicant for the trade mark) and controller of another company, “Channel”, which may also have been an early user of the trade mark in suit. As the Full Court put it, the opponent argued:

that the evidence as to ownership of the mark at the time of registration was so confused that no finding could reasonably be made as to who was the real owner with the consequence that Network had failed to discharge the evidentiary onus which had shifted to it.

41. The Full Court was however very critical of the trial judge for having accepted the opponent’s argument regarding a shift of onus on the s 58 issue, stating at [48]:

[48] If the evidence was not sufficiently clear to enable a finding of fact to be made about ownership of the mark at the time of registration then [the opponent] had to fail on that issue: it bore the onus of proof. The primary judge reached the opposite conclusion. Her Honour reached that conclusion, in part at least, because of the unnecessary distraction of [the opponent’s] argument about shifting onus. There are a number of other reasons why we consider that her Honour erred in reaching that conclusion.

42. In particular, the Full Court noted that:
    • s 27(1)(a) merely requires that an applicant “claims to be the owner of the mark” and the trial judge had (as has Ms Champion in the present opposition) “interpreted the requirement in s 27(1)(a) as being equivalent to proven, rather than claimed, ‘ownership’” (at [49]);
    • “The first user is the person entitled to claim to be the owner and if the applicant is shown not to be the first user, the ground of opposition will be established.” (at [55]);
    • “Each of Mr Lawrence, Network, and Channel could have satisfied the basic requirement in s 27(1)(a) in the sense that, from the admittedly imprecise affidavit of Mr Lawrence, it could be inferred that each could “claim” to be owner of the mark.” (at [54]);
    • “The courts should be cautious to allow the legal fiction of the corporate veil to defeat registration in a case where one of a group of companies, all controlled by the same directing mind and will, used the mark prior to the other.” (at [61]);
    • “In any event, a finding that there was considerable confusion over who owned the mark means that this ground of opposition must fail given the onus on [the opponent] to establish any ground of opposition.” (at [66]); and
    • “In conclusion in relation to the ground of opposition under s 58 of the Act, we consider that on the very limited evidence before the court as to the way in which the mark was used before the date of registration, it well may be said that both Network and Channel used the mark, but it cannot be said that Network rather than Channel was the first party to use the mark as a trade mark in relation to goods in class 16 or at all. And it cannot be said that Channel was not the first party use the mark in such a way. In this state of confusion, the incidence of the onus of proof means that the lack of clear evidence as to prior use is a fatal deficit in the opponent’s case, not in the applicant’s.” (at [71]).
43. That said, in the matter before me I do not consider inferences adverse to the Applicant’s claim to be owner of the Trade Mark can properly be drawn from the evidence before me in any event. As Mr Hall emphasised, the uncontradicted evidence of the Applicant is, as indicated in paragraph 33 above, that after he had created it he “licensed [the Company] to use the Trade Mark in connection with the sale and supply of rice in Australia” and that, “It was always understood by [the Company] and Mohammed Moten that I was the sole owner of the Trade Mark and that neither Moten nor [the Company] had any rights in the Trade Mark other than those under the licence from me.” If the Opponent considered this statement was untrue then it was incumbent upon the Opponent to produce evidence, such as evidence from Mr Moten, demonstrating this.
44. Ms Champion’s further submission, that “the correct approach to the resolution of [the ownership] issue is to consider the issue of use in the same manner as it would be dealt with in a non-use application”, is likewise misconceived on the face of it. Unlike the case with ss 27(1) or 58, s 100 of the Act explicitly places the onus on the owner of a registered trade mark to rebut non-use allegations made pursuant to s 92 of the Act. Contrary to Ms Champion’s submission, accordingly, there is no obligation on the Applicant in this opposition to produce evidence “that would support a finding that he exercised either the quality control or financial control required by section 8 of the Act or the control contemplated by Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56; (1977) 137 CLR 670 at [68]”.
45. I would only add that in my view it is plainly wrong in the circumstances of this case for the Opponent to argue, as was done at the hearing, that the onus it bears to establish its s 58 ground could be discharged by reliance upon any relevant “rule” to be found in Blatch v Archer [1774] EngR 2; (1774) 98 ER 969 or Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298; [1959] ALR 367. Indeed, if one considered the testimony of Mr Moten with respect to first use of the Trade Mark was relevant to the current opposition one might just as easily question the “unexplained failure” of the Opponent, rather than of the Applicant, to present such evidence. As discussed by the Full Federal Court (Jacobson, Yates and Katzmann JJ) recently in Paul’s Retail Pty Ltd v Sporte Leisure Pty Ltd [2012] FCAFC 51; (2012) 95 IPR 151 at [86]and [88]:

[86] The principle in Blatch v Archer is that “all the evidence is to be weighed according to the proof which it was in the power of one side to have produced, and in the power of the other to have contradicted”. The relevant aspect of the rule in Jones v Dunkel ... is that the unexplained failure of a party to call a witness may in appropriate circumstances lead to an inference that the witness would not have assisted the party’s case.

...

[88] ... As the Full Court observed in Sagacious Legal Pty Ltd v Wesfarmers General Insurance Ltd [2011] FCAFC 53 at [78]–[79], “the rule in Jones v Dunkel is one of the most invoked but least understood rules in litigation”. The rule merely reflects commonsense. The inference is not mandatory and, “generally speaking, these inferences only become material where the balance of the evidentiary record is equivocal”.

46. As discussed, there was never any evidential onus on the Applicant in the present opposition to justify his claim to be owner of the Trade Mark. Even if there were, the Applicant has done so by his clear and uncontradicted statements concerning his creation and licensing of the Trade Mark. In the absence of evidence to the contrary there is no reason not to take the Applicant’s evidence at face value or otherwise to draw any of the adverse inferences suggested by Ms Champion. I agree with the following assessment by Mr Hall in his written submissions:

The Opponent has not discharged its evidential burden [of establishing a party other than the Applicant first used the Trade Mark], but now asks the Registrar to draw adverse inferences because the Applicant has not filed particular evidence of first use, even though the Opponent has not discharged its evidentiary burden. In those circumstances, it is not appropriate for any adverse inferences to be drawn, and to do so incorrectly applies the required onus of proof, and effectively requires the Applicant to disprove the Opponent’s case, even when no compelling evidence to support that case is led, in order to avoid adverse inferences being made.

47. The Opponent has accordingly not established its s 58 ground of opposition.

Section 44

48. The ground based on s 44 is indicated in the Notice(s) as follows:

The Trade Mark is substantially identical or deceptively similar to a trade mark which is registered, being trade mark No 721917, in respect of similar goods or closely related services. The [Priority Date] is not earlier than the priority date of the other trade mark: Section 44(1), Regulation 4.15A(1)

49. Only s 44(1) of the Act is relevant in this case and this is reproduced below:

Identical etc. trade marks
44.(1) Subject to subsections (3) and (4), an 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) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; 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.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.

50. Details of (the Opponent’s) registration 721917 were set out in paragraph 4. Its priority date pre-dates that of the Trade Mark by some 13 years and it covers the identical goods. In her written submissions Ms Champion “conceded that [the Opponent’s Mark] and [the Trade Mark] are not substantially identical”. Accordingly, the sole question for determination is whether the parties’ trade marks are “deceptively similar”. In this regard s 10 of the Act says that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”.
51. Ms Champion began by setting out some general principles distilled from several well known authorities[15] concerning assessment of deceptive similarity generally (with which Mr Hall did not take issue). These included the fact that the parties’ marks should not be compared side by side, but rather are to be considered according to the impression that persons of ordinary intelligence would have based on recollection of the Opponent’s Mark (with due allowance for imperfect recollection) and the impression such persons would get from the Trade Mark. Ms Champion recognized that the marks must be considered as wholes, that “similarities of sound may be important” and that “any verbalization of a mark must be regarded, so that aural as well as visual impressions may be important”.
52. Bearing these factors in mind, Ms Champion’s submissions were that:

The [Opponent’s] Mark consists of two common English words “White” and “Tiger” used in combination. The impression created by the words “White Tiger” is re-enforced by the depiction of a tiger below the word combination. It is that depiction that is likely to act as a means of re-enforcing the consumer’s recollection of the “Tiger” component rather than the actual word combination “White[16] Tiger”.
The [Trade Mark] consists of two distinguishing features: the word combination “Grand Tiger” and a depiction of a tiger.
Both marks convey essentially the same idea, that is of a tiger. Relevantly, the presence in both marks of a common idea is more likely to be recalled than the precise details of the [Opponent’s Mark]: Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115 at 121-122; Johnson & Johnson v Kalnin [1993] FCA 210; (1992-93) 26 IPR 435 at 439.
In light of the matters raised above, when the consumer with his/her recollection of the [Opponent’s Mark] comes upon the rice bearing the [Trade Mark], his/her attention is likely to be drawn and focussed on the two elements which convey the same idea as the [Opponent’s Mark], that is the word “Tiger” and the depiction of a tiger.

53. Ms Champion reasoned that the position was similar to that in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227; 26 IPR 246 (“Polo Textile”) where, in finding the mark POLO CLUB deceptively similar to POLO solus, “Burchett J concluded that it was of importance that the distinctive impact of the word ‘Polo’ was likely to affect the mind while the presence or absence of the blander word ‘Club’ may escape notice.”
54. Ms Champion also referred generally to De Cordova v Vick Chemical Co (1951) 68 RPC 103, where I note Lord Radcliffe said at 106 with respect to “imperfect recollection”:

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

55. Finally, Ms Champion submitted that “confusion would also be facilitated by the fact that rice is a product usually displayed on the supermarket shelf, and is not a product that is purchased after careful inspection.” The common (she said) practice of traders who sold their goods in supermarkets “adopting a word as a base trade mark and using it to construct other trade marks by adding additional elements to it...allows for ‘contextual confusion’ to occur”, particularly here where “both marks incorporate the same dominant or essential feature”. In the alternative, as it were, she submitted that:

Where the rice is ordered over the counter, imperfect recollection may result in a consumer asking for the Opponent’s White Tiger rice simply by reference to “the Tiger rice” which may lead the salesperson to inadvertently reach for the Grand Tiger rice rather than the White Tiger rice.

56. On behalf of the Applicant Mr Hall firstly submitted that:

The test as to whether one trade mark so resembles another trade mark so as to be likely to deceive is ultimately a two stage test. First, do the marks look alike or sound alike? Second, if they do, is the resemblance likely to deceive? It is not sufficient that the two marks convey the same idea. Cf Cooper Engineering Pty Limited v Sigmund Pumps Limited [1952] HCA 15; (1952) 86 CLR 536 at 539.

57. Applying these principles in this case was, he said, “a straightforward exercise”:

The only elements that are common to each of the marks is the use of an image of a tiger, and the word “TIGER”. The images of the tiger in each mark is (sic) very different, with the Opponent’s mark showing a walking tiger in profile with the tail in a resting position, and the Trade Mark showing a walking tiger from the front, with the tail in an extended position. Despite these significant differences, the Opponent asserts that the marks are deceptively similar, and seems to be seeking a monopoly right in any images of a tiger when used in connection with rice.

58. Mr Hall highlighted the Applicant’s unchallenged evidence that “use of a tiger image is synonymous with goods and services originating from the sub-continent”, that the tiger image in the Trade Mark was that of a Bengal tiger, “a native to much of eastern and southern Asia including India and Pakistan” and that the particular rice of interest to him was Basmati rice, “a variety of long grain rice grown in India and Pakistan”.
59. Mr Hall further noted the Applicant’s unchallenged evidence that, “As a result of this strong connection between Basmati rice and Bengal tigers, there are a number of rice brands from India and Pakistan that make use of an image of a tiger, including a Bengal tiger”. Mr Hall referred in this context to his own declaration, which annexes the results of searches he conducted in March 2011 for registered marks in Class 30 which incorporate the word “tiger” or the image of a tiger, noting that at the time there were 16 such registrations “eleven of which did not belong to the Opponent or Applicant”. I mention that my own check of the register indicates that as at the Priority Date there were thirteen such registrations in total, all in separate ownership, with six of these (including the Opponent’s registration 721917) covering rice per se:

237644
352111	TIGER’S MILK
721917
850749
1273673	Bengal Tiger
1297826

60. Moreover, as at the Priority Date there were a number of further third party registrations for marks featuring the word “tiger” and/or the image of a tiger which cover Class 30 goods similar to rice or made from rice. It is perhaps also germane to point out in terms of the current state of the register that since the Priority Date the Applicant himself has registered the mark shown below for “Rice” in Class 30:

61. Nor, pointed out Mr Hall, was coexistence of marks of this kind merely confined to the register. In this regard he again referred to his own declaration, (albeit made some 19 months after the Priority Date), which includes in its Annexure F “true copies of images of packaging for rice, available on the Australian market, that incorporate an image of a tiger or the word tiger”. In addition to packaging bearing the parties’ marks, also shown in Annexure F is packaging bearing the trade marks FLYING TIGER & Tiger Device, BENGAL TIGER & Tiger Device and INDIAN TIGER & Tiger Device. Additionally, the declaration made in July 2010 by Mr Varma, a Director of the Opponent, refers to what Mr Varma describes as “inferior quality Pakistani rice” then on the market bearing the trade mark TIGER KING.
62. Mr Hall’s conclusion was that “the word ‘tiger’ or an image of a tiger is not something that particularly distinguishes rice goods (sourced from that part of the world where Bengal tigers are found) and is not what any consumer is likely to recall or focus on”. He did not agree that the words “grand” or “white” were bland in the context of the parties’ marks as wholes and indeed pointed out that a “white tiger” was a known, albeit rare, species of tiger in its own right[17] and conjured up a quite different image from what might be described as a “standard” tiger. That difference was, he submitted, reinforced by the quite different representations of tigers appearing in the parties’ marks.
63. He submitted that the Polo Textile decision relied upon by Ms Champion “can clearly be distinguished” because in that case “the comparison was between the mark POLO (registered in simple typescript, with no other elements) and the mark POLO CLUB”, whereas here complex composite marks were involved and here the evidence indicated the common idea of a tiger was not distinctive of the parties’ goods of interest in its own right. In this regard Mr Hall referred to the High Court’s decision in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd,[18] noting that to the extent that the Trade Mark did convey a similar idea to that of the Opponent’s Mark in the context of “rice”, this would not of itself dictate a finding of deceptive similarity in any event. In that case the court found the trade mark “Rainmaster” was not deceptively similar to the registered mark “Rain King”, (where both marks were used or proposed for use in connection with water sprinklers), stating that any similarity in the idea conveyed was something that might be taken into account when the marks being compared otherwise “really looked alike or sounded alike”. In the present case, Mr Hall submitted, the parties’ marks as wholes are readily distinguishable both visually and aurally.
64. While he disputed Ms Champion’s submission that the parties’ marks “incorporate the same dominant or essential feature”, Mr Hall emphasised that there was in any event no evidence before me of “brand extension” on the part of the Opponent of the kind suggested by Ms Champion and that Ms Champion’s submissions with respect to the likelihood of “contextual confusion” were accordingly without basis. More significant, he reasoned, was that there was no evidence of any actual confusion “despite the Trade Mark being in the market for a significant period of time”. In this regard he pointed to the evidence of the Trade Mark having been in use since May 2008, having enjoyed modest (although not insubstantial) sales in Australia according to the figures provided by the Applicant. Mr Hall noted that the absence of evidence of confusion was all the more significant in this case given the parties’ rice was sold in the very same outlets, as acknowledged by Mr Varma, who states in his declaration that, “In 2009 we were informed that the [Applicant] had commenced marketing the sale of Basmati rice in 5KG bags to the same specialty outlets at which we stock and sell White Tiger Brand”.
65. For my part, were this a case where the word “tiger” common to the parties’ trade marks was an invented word, or it appeared from the evidence that the “idea” of a tiger was rare or unusual in connection with rice or was uniquely associated with the Opponent, then I might have found Ms Champion’s submissions regarding deceptive similarity more compelling. However such is not the case on the evidence before me. As Ms Champion herself noted, quoting the High Court in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 410, deceptive similarity must be considered against the “background of the usages of the particular trade”. Here the state of the Register and the evidence before me that the third party trade marks TIGER KING, FLYING TIGER & Tiger Device, BENGAL TIGER & Tiger Device and INDIAN TIGER & Tiger Device have been in use for rice alongside both the Opponent’s Mark and the Trade Mark clearly suggest on the face of it that no one trader is in a position to assert a monopoly in rice marks containing a reference to a tiger.
66. I am compelled to conclude that reference to a tiger is effectively common to the trade in relation to rice in Class 30 because it alludes to rice grown in that part of the world where tigers are found. In this regard the following words of Burchett J from Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864; (1998) 41 IPR 505 (at 511-512), where his Honour was assessing the deceptive similarity of the (word) trade marks VOGUE and EUROVOGUE in relation to clothing, appear apt:

At the same time, it should be borne in mind that ‘VOGUE’ is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant’s registration, but the Court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.

67. To put it another way, where an element shared by trade marks under comparison is also common to the trade generally its presence in both marks must be discounted somewhat in assessing deceptive similarity. Given the relatively low inherent distinctiveness of the reference to a tiger in relation to rice, the various differences between the parties’ marks when considered as wholes highlighted by Mr Hall are accordingly likely to assume greater significance amongst the relevant public.
68. To the extent that Ms Champion’s submissions were based on a consumer’s “imperfect recollection” of the Opponent’s Mark it is I think useful to bear in mind that on appeal to the House of Lords Lord Greene MR said in Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65 at 105:

The doctrine of imperfect recollection must not be carried too far. In considering its application not only must the class of person likely to be affected be considered, but no more than ordinary possibilities of bad elocution, careless hearing or defective memory ought to be assumed.

69. As mentioned, there is evidence before me that at least six different trade marks which feature the word “tiger” and/or a Tiger Device (including the Trade Mark and the Opponent’s Mark) have been in use for rice in recent times. While not of itself fatal to the Opponent’s case, it does strike me as significant in this case that there is no evidence from the Opponent indicating that there have been any instances of deception or confusion between any of the marks in question. Nor, indeed, is the apparent absence of deception or confusion necessarily surprising. I agree with Mr Hall that consumers are likely to refer to the parties’ rice principally by the words which feature so prominently in their respective marks, that is as “White Tiger” rice and “Grand Tiger” rice respectively. These word combinations neither look alike nor sound alike when considered as wholes despite the common element they share. Moreover, as is often noted, “the first syllable of a word [or, as here, the first word itself] is, as a rule, far the most important for the purpose of distinction”.[19]
70. In the case of the already coexisting registrations discussed in paragraphs 59 and 60 above the Registrar has already determined in each case that there was insufficient likelihood of deception or confusion as to deny acceptance for registration. In this case, I do not believe that the Trade Mark is any more similar to the Opponent’s Mark than are these other currently registered trade marks covering rice and featuring the word “tiger” and/or a Tiger Device. A consistent approach would accordingly be to allow the Trade Mark also to coexist on the Register and in the market place. As Hearing Officer Williams observed in Re Unilever plc’s application to register the trade mark PHOENIX [2001] ATMO 39:

It is the responsibility of an administrator to take reasonable steps to understand, consider and assess the pattern of his/her own agency in dealing with past matters, where these are directly relevant. It is only if the decision-maker is satisfied that a current matter can be distinguished from past decisions, for whatever reason, that an established pattern can be varied in good conscience.

71. When all the foregoing matters are weighed up and I attempt to assess the marks’ likely effect or impression in the minds of relevant consumers, I find I am not satisfied deception or confusion amongst a significant number of such consumers was likely as at the Priority Date. I do not on balance believe there was a real tangible danger of a number of such persons being left in doubt or caused to wonder whether the rice dealt with under the parties’ respective trade marks came from the same source.
72. The s 44 opposition ground is accordingly not established.

Section 60

73. The ground based on s 60 is indicated in the Notice as follows:

Another trade mark had, before the priority date for the registration of the Trade Mark, acquired a reputation in Australia and because of the reputation of that other trade mark, the use of the Trade Mark would be likely to deceive or cause confusion: Section 60.

74. Section 60 of the Act is reproduced below:

Trade mark similar to trade mark that has acquired a reputation in Australia
60. 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.
Note: For priority date see section 12.

75. Ms Champion submitted that the Varma declaration established, “The Opponent had acquired a significant reputation in the mark ‘White Tiger’ in Australia” with “The manner of use [as] depicted in Exhibits GV11 and 12”, namely:

 
(hereafter collectively “the s 60 Marks”)

76. As regards assessment of reputation, Ms Champion referred, inter alia, to the often quoted words of Hearing Officer Thompson in Hugo Boss AG v Jackson International Trading Company Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 at 436:

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the 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 owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ``contra deals'’ and so forth.

77. Ms Champion also referred to the judgment of Kenny J in McCormick & Co Inc v McCormick [2000] FCA 1335; (2002) 51 IPR 102, where I note her Honour said at [86]:

[86] 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: see, eg, Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer Plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, among other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618; (2001) 51 IPR 1, Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (Nettlefold), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

78. That said, in the present matter there is no evidence before me of consumer appreciation of the s 60 Marks, nor of any “esteem” component that might attach to them. Nor is it possible to say from the Opponent’s evidence what the quantity or value of sales of rice bearing the s 60 Marks may have been before the Priority Date. Those sales figures and supporting invoices which the Opponent’s Managing Director Mr Varma does provide all post-date the filing of the Trade Mark.
79. Mr Varma’s evidence is similarly vague regarding advertising and promotion of rice bearing the s 60 Marks in Australia. After stating that the Opponent markets rice under the brand names Taj Special, Taj Classic, Taj Premium and Taj King in addition to rice bearing the s 60 Marks, Mr Varma then simply goes on to briefly indicate how the Opponent “markets and advertises the brands” generally. He only provides a single specific (and very modest) figure for expenditure “since 1984” in relation to “the Taj brand” and “the Taj related brands of the business” collectively. Advertising and promotion of rice bearing the s 60 Marks is only again mentioned incidentally in the context of the Opponent’s plans:

to significantly increase the monies allocated to the advertising, promotion & marketing budget for the Taj Brand products including White Tiger, for the 2011 financial year. The Opponent has budgeted to spend in excess of $100,000.00. The increased expenditure will include television advertising through specialist ethnic media such as Vision India & advertising on Channel 9 TV Connect package for Small Businesses.

80. In summary, I have little hesitation in accepting the unflattering assessment of Mr Varma’s evidence made by Mr Hall in his submissions and his conclusion that “Nothing in this evidence demonstrates any reputation as at the Priority Date.” I am simply unable to say whether the s 60 Marks enjoyed the kind of reputation contemplated by s 60 as at the relevant date (or at all). Nor am I able to speculate on the issue. As was noted by the Registrar’s delegate in Sara Lee Corporation v Bali Blue Pty Ltd[20]:

The reputation in Australia cannot be assumed — it must still be established as a question of fact — per Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302 ; 106 ALR 465; 23 IPR 193.

81. The Opponent has accordingly not established its ground of opposition under s 60.

Decision

82. Section 55(1) of the Act provides:

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.

83. I have found the Opponent has not established any of the grounds it raised pursuant to ss 44, 58 or 60 of the Act. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

84. Both parties requested an award of costs in their favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

Michael Kirov
Hearing Officer
Trade Marks Hearings
27 September 2012

---

[1] The third Notice also incorrectly indicates the Applicant’s address for service.
[2] Being a declaration made “under the Trade Marks Act 1995 and Regulation 21.6 of the Trade Marks Regulations”.
[3] I mention that the deponent David Matthew Hall is apparently known less formally as Matthew Hall and is the Applicant’s legal representative in these proceedings.
[4] The Applicant himself, although arriving late, was also present for most of the proceedings.
[5] I mention that, with the stated objective of reducing formality in procedure under the Act, s 66 was amended as from 27 March 2007 by Item 78 of Part 2 of Schedule 1 to the Trade Marks Amendment Act 2006to remove the requirement that a request under the section be in writing.
[6] Citing Margaret Kerr, Kent Sasse, Henry Arthur Sasse and Toddler Kindy Gymbaroo Pty Ltd v Invecon Australia Pty Ltd (2008) 80 IPR 600 ; [2008] ATMO 102 (24 December 2008) at [11].
[7] Citing regulation 21.15(7) of the Trade Mark Regulations 1995.
[8] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13per Sundberg J at [22] to [27], Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32], Allergan Inc v Di Giacomo [2011] FCA 1540; (2011) 94 IPR 541 per Stone J at [11] to [12], Nexans S.A. v. Nex 1 Technologies Co. Ltd [2012] FCA 180 (2 March 2011) per Murphy J at [9], Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].
[9] Prior to commencement of the Act on 1 January 1996 the words “proprietor” and “proprietorship” were used in legislation and relevant case law rather than the currently used words “owner” and “ownership”, but with no difference in meaning. In this decision I use the corresponding words interchangeably as the context demands.
[10] Which s 6 of the Act indicates “includes a body of persons, whether incorporated or not”.
[11] Seven Up Co v OT Ltd [1947] HCA 59; (1947) 75 CLR 203.
[12] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636.
[13] I understand “Liberty Enterprise Co” was the trading name used by the Applicant and Mr Moten before Liberty Impex Pty Ltd was incorporated.
[14] Food Channel at [11].
[15] Including, principally, Australian Woollen Mills Ltd v F.S. Walton & Co [1937] HCA 51; (1937) 58 CLR 641 (at 658), Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 410, Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 at 362, SAP (Australia) Pty Ltd v Sapient (Australia) Pty Ltd [1999] FCA 1821; (1999) 169 ALR 1, Anheuser Busch Inc v Budejovicky Budvar [2002] FCA 390; (2002) 56 IPR 182 at 216, Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901; (2003) 132 FCR 326 and Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.
[16]I mention that I have substituted the word “White” here for the word “Grand” which actually appears, presumably in error, in Ms Champion’s written submissions.
[17] According to Wikipedia®, a white tiger is a “sub-species” of Bengal tiger.
[18] [1952] HCA 15; (1952) 86 CLR 536 (at 539)
[19] London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264, per Sargant LJ at 279.
[20] (2003) 59 IPR 619 (at 624)