Water, taken in moderation, cannot hurt anybody. (Mark Twain)
Bickford’s Australia Pty Ltd (‘Bickford’s’) – Opposition to Application No. 1358642 – classes 16, 32 – TATA WATER PLUS – in the name of Tata Sons Limited (‘Tata’). -and- Opposition by Bickford’s to removal application by Tata to series Registration No. 1033645 – class 32 – WATERPLUS; WATER+ As the proceedings involved the same parties and much of the same evidence – the matters were heard simultaneously.
Opposition to TATA WATER PLUS:
Tata argued that the word TATA brought a high level of acquired distinctiveness to the mark and cited Metro vs Woolworths Metro. The Examiner did not agree as there had been no use of the trade mark TATA WATER PLUS in Australia. Tata also argued that the expression WATER PLUS can be discounted as non-distinctive. However no evidence was filed showing the descriptiveness or commonness of the expression. The Delegate contended that the relevant question remained – whether TATA WATER PLUS is deceptively similar to WATERPLUS and/or WATER +. On the balance of probabilities - the Delegate decided in the affirmative.
Other circumstances argument:
The Delegate noted that during the prosecution of Tata’s application – two registered trade marks owned by Bickford’s were cited – Registration No. 870204 WATERPLUS ; WATER + (series) and Registration No. 1033646
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Tata filed removal applications and both were removed for non-use. Tata submitted that given the commercial reality which existed at the priority date and continuing: namely the lack of use of the Bickford Mark in Australia, and/or the removal application that Tata’s trade mark should be accepted under ‘other circumstances’. Tata cited Chia Khim Lee Food Industries Pte. Ltd v Red Bull GmbH wherein Dodds-Streeton J refused to strike out a ground of appeal - the consideration of which related to whether a removal action impacted upon an opposition. The Delegate was not satisfied that any of the circumstances submitted by Tata provided a suitable basis to apply the provisions of ‘other circumstances’. Furthermore, the Delegate could not draw an inference from the removal of Bickford’s other two registrations. In addition she did not consider that Tata’s capacity for trade (in that it is a large global company which can readily produce and distribute the specified goods) in the face of Bickford’s rights in its registered trade mark, is a factor upon which acceptance could be based. Tata’s application was refused.
Reason for non-use
The WATERPLUS brand was acquired from Sanitarium – however Bickford’s encountered quality issues with the product and production was temporarily ceased. Cessation was temporary and in 2011 Bickford’s made plans to re-introduce a product bearing the trade mark. New labels were developed and goods bearing Bickford’s trade mark were made available to one of its customers.
Cautionary note - Internet searches
Tata put in the findings of a private investigator as well as from Tata’s attorneys – neither of whom found use by the trade mark by Bickford’s in supermarkets, on Bickford’s website or upon third party websites. Enquiries were also made by Mr Rumore with members of Bickford’s staff who were either unaware of the trade mark, or were aware of it but believed it was no longer in use. The Delegate was not satisfied that lack of use on the Internet, or lack of awareness by the Bickford’s staff – which were customer service or administrative staff who would be unaware of the plans for re-launch – outweighed the clear evidence of sales. Tata argued that Bickford’s use was not in good faith and that use by Bickford’s only occurred after non-use applications were filed against Bickford’s two registrations.
Single Use sufficient
The Delegate could not draw an inference that the sales were not for genuine commercial purpose and therefore not in good faith. Although only two sales were in evidence, only a single instance is required. The trade mark remains on the Register.