Federal Court of Australia

Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited [2023] FCAFC 175

ORDERS

THE COURT ORDERS THAT:

1.    The appeal be dismissed.

2.    The appellant pay the respondents’ costs of the appeal.

3.    Each party has liberty to make an application for a variation of order 2 by giving notice in writing of a different costs order sought and the matters to be relied on in support of the application within 14 days.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THE COURT:

BACKGROUND

1    The appellant (“HCA”) appeals from a judgment of the primary judge dismissing its claim against the respondents for infringement of HCA’s registered trade mark (“the Trade Mark”) and partially allowing the respondents’ cross-claim by cancelling HCA’s trade mark registration.

2    Although the respondents admitted that their marks were substantially identical to the Trade Mark, his Honour found that none of the respondents used their marks as a trade mark within the meaning of s 120 of the Trade Marks Act 1995 (Cth) (“the Act”) and that, even if they had, they were entitled to the benefit of the defence under s 122(1)(b)(i) of the Act on the basis that the marks were used in good faith to indicate that the respondents’ products had a particular quality or characteristic, namely, that they were “Halal” meaning that they had been prepared, processed and managed in conformity with Islamic rites.

3    His Honour concluded that the use of the Trade Mark was likely to deceive or cause confusion and that HCA’s registration should be cancelled pursuant to s 88(1) and (2)(c) of the Act. His Honour also concluded that the Trade Mark was not capable of distinguishing the applicant’s services from the services of other persons contrary to s 41(2) of the TM Act (as it stood at the date of registration) and that HCA’s registration should be cancelled pursuant to s 88(1) and (2)(a) of the Act. His Honour decided not to exercise his discretion under s 88(1) and s 89 of the Act not to rectify the register.

4    The Trade Mark (number 1005647) is in the following form:

The Trade Mark is described in the Certificate of Registration as “figurative”. Marks of this kind are often called composite marks in that they consist of a combination of one or more words and a device.

5    The Trade Mark was registered to HCA with effect from 8 June 2004 in respect of the following services:

Class 42:    Scientific and technical services; issuing halal certification to businesses and individuals for goods and services if religious and technical requirements are met

Class 45:    Personal and social services rendered by others to meet the needs of individuals

The certificate of registration also includes the following endorsement:

The applicant has advised that the Arabic characters appearing in the trade marks may be transliterated as HALAL and translated into English as ALLOWED OR PERMITTED IN ACCORDANCE WITH ISLAMIC RITES.

6    It was common ground at the trial that the Arabic characters at the centre of the annulus can be transliterated as “Halal”, which translated into English means “allowed or permitted in accordance with Islamic rights”.

7    HCA was registered as a company in February 1995 under the name Halal Certification Services Pty Ltd. HCA adopted its current name, Halal Certification Authority Pty Ltd, on 8 June 2004, the same date on which it applied to register the Trade Mark. His Honour found that HCA is a private company that provides halal certification to businesses and individuals who are engaged in the provision of halal goods as well as related services. In June 2004 HCA was one of approximately a dozen companies that were involved in halal certification in Australia. By October 2020, the number had risen to around 25.

8    The marks applied to the respondents’ products were essentially identical and admitted by the respondents to be substantially identical to the Trade Mark. The primary judge referred to the mark used by the respondents to signify that their goods were halal as the “Packaging Logo” and we will do the same.

9    The Packaging Logo is in the following form:

We have also reproduced in Annexure A to these reasons photographs of two examples of the respondents’ products on which the Packaging Logo appeared. The first is an example of what the primary judge referred to as the “Natvia Products” (Natvia 40 x 2g sachets 80g pack sweetener) and the other is an example of what the primary judge referred to as the “Raw Earth Products” (Raw Earth Stevia and Monk Fruit All Natural Sweetener 40 x 2g sachets 40g pack).

10    The first respondent is a company known as Flujo Sanguineo Holdings Pty Ltd (“Flujo”) and it is the parent company of the other three respondents (collectively, the “Flujo Group”), Stevia Sweetener Co Pty Ltd (“Stevia”), Raw Earth Sweetner Co Pty Ltd (“Raw Earth”), and Natvia IP Pty Ltd.

11    His Honour’s reasons refer to two other companies, neither of which was a party to the proceeding, called Techniques Incorporated Pty Ltd (“Techniques”) and Hellay Australia Pty Ltd (“Hellay”). His Honour found that from 2009 until July 2015 and from October 2018 until the date of judgment, Techniques produced Natvia Products on a toll manufacturing basis with Stevia (formerly known as Natvia) sourcing all ingredients and packaging used in their manufacture. Techniques blended the ingredients in accordance with Stevia’s formulation and packaged the product at its site. The finished product was then delivered to the Flujo Group’s warehouse for distribution. His Honour found that from around May 2015, after a dispute between Techniques and the Flujo Group, Hellay manufactured Natvia Products as a toll manufacturer, using the same formula, manufacturing process and packaging as Techniques. His Honour also found that from around March 2017 until at least November 2020, Hellay manufactured Raw Earth Products.

THE RELEVANT STATUTORY PROVISIONS

12    The statutory provisions relevant to the issues of infringement include ss 17, 120 and 122 of the Act.

13    Section 17 provides:

17    What is a trade mark?

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Note:    For sign see section 6.

14    Section 120 relevantly provides:

120    When is a registered trade mark infringed?

(1)    A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

Note 1:    For registered trade mark see section 6.

Note 2:    For deceptively similar see section 10.

Note 3:    In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

(2)    A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

(a)    goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or

(b)    services that are closely related to registered goods; or

(c)    services of the same description as that of services (registered services) in respect of which the trade mark is registered; or

(d)    goods that are closely related to registered services.

However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

Note 1:    For registered trade mark see section 6.

Note 2:    For deceptively similar see section 10.

Note 3:    In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

…

Section 7(5) provides that “use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services”.

15    Section 122 relevantly provides:

122    When is a trade mark not infringed?

(1)    In spite of section 120, a person does not infringe a registered trade mark when:

…

(b)    the person uses a sign in good faith to indicate:

(i)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

…

(2)    In spite of section 120, if a disclaimer has been registered in respect of a part of a registered trade mark, a person does not infringe the trade mark by using that part of the trade mark.

16    As to the respondents’ cross-claim, s 88(1) of the Act provides (inter alia) that the Court may on the application of an aggrieved person order that the Register be rectified by cancelling the registration of a trade mark. The grounds on which a trade mark may be cancelled are set out in s 88(2) and relevantly include in subparagraph (a) any of the grounds on which the registration of the trade mark could have been opposed under the Act. In this case, the respondents relied on s 41(2) of the Act as it stood at the date of application for the registration of the Trade Mark. At that time s 41 relevantly provided:

41    Trade mark not distinguishing applicant’s goods or services

…

(2)    An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:    For goods of a person and services of a person see section 6.

(3)    In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)    Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)    If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)    the Registrar is to consider whether, because of the combined effect of the following:

(i)    the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)    the use, or intended use, of the trade mark by the applicant;

(iii)    any other circumstances;

    the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)    if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

(c)    if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

Note 1:    For goods of a person and services of a person see section 6.

Note 2:    Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

(6)    If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)    if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)    in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1:    Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)    the time of production of goods or of the rendering of services.

Note 2:    Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

17    The respondents also relied on s 88(2)(c) which allows for the cancellation of a registered trade mark if “because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion.”

18    With regard to the discretion not to cancel a registered trade mark, s 89 of the Act relevantly provides:

89    Rectification may not be granted in certain cases if registered owner not at fault etc.

(1)    The court may decide not to grant an application for rectification made:

(a)    under section 87; or

(b)    on the ground that the trade mark is liable to deceive or confuse (a ground on which its registration could have been opposed, see paragraph 88(2)(a)); or

(c)    on the ground referred to in paragraph 88(2)(c);

if the registered owner of the trade mark satisfies the court that the ground relied on by the applicant has not arisen through any act or fault of the registered owner.

Note:    For registered owner see section 6.

(2)    In making a decision under subsection (1), the court:

(a)    must also take into account any matter that is prescribed; and

(b)    may take into account any other matter that the court considers relevant.

19    Regulation 8.2 of the Trade Marks Regulations 1995 (Cth) (“the Regulations”) provides:

8.2 Amendment or cancellation—matters for the court

For the purposes of paragraph 89(2)(a) of the Act (which deals with amendment or cancellation by a prescribed court), a prescribed court, in making a decision under subsection 89(1) of the Act on an application for rectification of the Register, must take into account the following matters, so far as they are relevant:

(a) the extent to which the public interest will be affected if registration of the trade mark is not cancelled;

(b) whether any circumstances that gave rise to the application have ceased to exist;

(c) the extent to which the trade mark distinguished the relevant goods and/or services before the circumstances giving rise to the application arose;

(d) whether there is any order or other remedy, other than an order for rectification, that would be adequate in the circumstances.

THE PRIMARY JUDGE’S REASONS

Certification Arrangements

20    The primary judge made a number of findings in relation to agreements made between Techniques and HCA. On 3 September 2003 HCA (then known as Halal Certification Services Pty Ltd) entered into the first of a number of agreements with Techniques by which HCA agreed to provide halal certification and to allow for the use of its logo (which at that stage had not yet been registered as a trade mark) to evidence that certification. On the same date HCA sent to Techniques a copy of the completed agreement and a certificate whereby HCA certified that Techniques was accredited to prepare halal goods identified in the certificate.

21    His Honour found that the terms of the HCA agreement dated 3 September 2003 required that Techniques agree only to market and sell as halal goods that were in fact halal. Techniques ageed to ensure that it prepared food with equipment that had been cleansed, keeping halal food separate from non-halal food, and obtaining ingredients for the preparation of halal food only from suppliers approved by HCA. The agreement provided for the payment of a licence fee by Techniques to HCA plus an inspection fee.

22    His Honour found that various other agreements were entered into between HCA and Techniques between January 2005 (shortly after the first agreement expired) and December 2016, all of which are in terms similar to the 2003 agreement. His Honour referred to evidence from the CEO of HCA, Ms El-Mouelhy, indicating that the various agreements were in standard form with the schedule completed for each client as appropriate to their circumstances.

23    His Honour found that in early to mid-2010, Mr Mark Hanna and Mr Samuel Tew, who had each been involved in establishing companies in the Flujo Group, decided it would be beneficial to have halal and kosher certifications for the Natvia products. This was because it would give some customers comfort that the products were made in a controlled environment, and would provide members of the relevant cultural and religious groups with a means to make food decisions. His Honour found that Mr Hanna and Mr Tew considered it was important that customers know who certified the product halal or kosher, and that the certification symbol should therefore be applied to the packaging.

24    In order to obtain certification, Techniques required evidence from the Flujo Group that the ingredients had been certified which his Honour inferred had been obtained and passed on to HCA by Techniques. In about mid-2010, Mr Hanna was notified by Techniques that the Natvia products had been certified halal and kosher. Natvia obtained reproductions in electronic form of both the HCA logo (which had by now been registered as a trade mark) and the Kosher logo (which also appears on the packaging of the relevant products) from Techniques for inclusion on the packaging. His Honour found that the two logos were first included on the Natvia products from about 2011.

25    On or about 10 July 2010, HCA issued a further certificate, in its standard form, signed by the Chairman of HCA, Mr El-Mouelhy, referring to Natvia goods. Further certificates were reissued to Techniques between January 2010 until December 2015. The certificate issued on about 10 December 2014, which purported to be valid until 31 December 2015, was signed by Ms El-Mouelhy (Mr El-Mouelhy’s daughter), as CEO and included the additional words, (emphasis in original) “This certificate is for the use and display by Techniques Incorporated Pty Ltd only, is valid until 31st December 2015 and remains the property of this Authority”.

26    His Honour found that in about May 2015, there was a dispute between the Flujo Group and Techniques which resulted in Techniques ceasing to manufacture the Natvia products until October 2018. As a result of this dispute, Mr Hanna contacted Mr Ashley Hawley at Hellay, who agreed to produce a run of Natvia products urgently. His Honour found that, as a result of communication between Techniques and HCA, Natvia was removed from HCA’s list of certified halal products on 22 July 2015.

27    On 1 April 2016 HCA issued a certificate to Hellay which certified that it was accredited to prepare various halal goods including “Natvia”. Another certificate to like effect was issued to Hellay on 31 December 2017. A further certificate was issued to Hellay on 20 December 2018 which referred to various Natvia products (including “Natvia Stevia”) and “Raw Earth Stevia and Monk Fruit 200g Canister”. Later on the same date, Ms El-Mouelhy re-issued the certificate after deleting references to Natvia and Raw Earth. However, the re-issued certificate still referred to (inter alia) “Stevia” and “Stevia with Vanilla” and “Stevia and Monk Fruit”.

28    The final certificate was issued in July 2019. His Honour referred to an email sent by HCA to Hellay on 25 July 2019 attaching the certificate which no longer made any reference to Stevia or any Stevia product. This was approximately 10 months after HCA commenced its proceeding against the respondents. The email stated that the certificate had been “updated” to exclude the Flujo products “due to a continuous breach of our agreement”. His Honour noted that the dates for all three certificates issued in 2018 and 2019 was the same, viz. 20 November 2018.

29    The primary judge also referred to email correspondence in 2009 between HCA and Techniques concerning the procedure for adding products to a certificate issued by HCA and which indicated that the manufacturer could have other products manufactured by Techniques for other companies added to the certificate. His Honour found that HCA would have appreciated that any use of the registered mark would be by both Techniques and by the retailer for whom it produced the relevant goods. His Honour rejected evidence from HCA’s witnesses suggesting that they did not know whether Techniques was itself a retailer of the relevant goods.

30    His Honour found at [61]-[63]:

[61]    I find that on the balance of probabilities, Mr El-Mouelhy and Ms El-Mouelhy, and through them HCA, knew that Techniques was not a retailer, and that HCA correspondingly knew that Hellay and Techniques filled the packaging of customers, and that any application of any version of the Trade Mark would be for the purposes of the packaging of the customers of Techniques. The evidence carries the clear implication that they must have been aware that any approval, express or implied, conveyed by HCA to any such contract manufacturer to use any version of the Trade Mark on packaging as a practical matter was likely to be treated as approval for such use by the contract manufacturer’s customers. This is particularly so in the present circumstances, where Techniques had indicated via email to HCA that they were seeking to incorporate a logo onto packaging, which HCA knew they did not design or produce, logically removing them from the purported category of toll manufacturer customer who only sought the certification to display on their own premises.

[62]    While there was no express provision permitting any sublicensing by Techniques of the use of the Trade Mark, there is a surreal quality to HCA relying upon the non-existence of such a provision in circumstances where Techniques was a contract manufacturer, so was not obtaining the certification or applying the Trade Mark for its own products. Certification without that taking place was practically useless and would probably have resulted in no revenue for HCA. HCA must have been aware of this, as is clear enough from email traffic in evidence. In context, the certificates and approval to apply the Trade Mark logo was hollow and of no practical use to Techniques unless it applied to use on the packaging of contract manufactured goods. This is reflected in HCA’s conduct in relation to the Natvia products, by which halal certificates in relation to Natvia were issued to Techniques by HCA on numerous occasions over a number of years.

[63]    Techniques did not seek any further certification or re-certification from HCA in relation to Natvia goods after the termination of the last certificate on 22 July 2015. Nor was any request received to apply the Trade Mark from that time onwards. It follows that if the presence of the Packaging Logo on either the Natvia or Raw Earth Products did constitute use of the Trade Mark, it almost certainly would have been an infringing use for the relatively limited period in which there was no certification in place, which was the only source of any right to use the Packaging Logo as a trade mark. The goods might well have been halal, but they would not have been certified halal. The key live issue is therefore the characterisation of that use.

31    These paragraphs appear to suggest that the primary judge was not persuaded that, if the respondents had used the Packaging Logo as trade marks on goods manufactured by Techniques, there was any infringing use before 22 July 2015, which was the date which Ms El-Mouelhy removed Natvia from HCA’s list of certified halal products. This is because up until that time, the use of the Trade Mark on the packaging of the Natvia products was authorised by HCA as signifying that the goods to which the Packaging Logo had been applied were certified by HCA as prepared, processed and managed in accordance with Islamic rites. However, that interpretation of his Honour’s reasons is at odds with his consideration of the issue of permission at [120]-[121] of his reasons where he concludes that the respondents’ use of the Packaging Logo on their products occurred without HCA’s permission. His Honour said at [121]:

As outlined above, the commercial arrangement was that HCA certified the toll manufacturers for Flujo Group, where they were likely aware that at least some of the products manufactured within the factory were not retailed by that manufacturer, and knowing at least that the manufacturer did not produce packaging for retail. This makes the proposition that no implied permission was given to the retailer to use the logo, purely because of an absence of a direct contractual relationship, difficult to accept, as it would certainly not be the toll manufacturer obtaining the benefit of having permission to use the logo. However, failure to take steps to prevent use, or giving samples of the logos to the toll manufacturer, or not actively disallowing use is not the same as giving permission. Equally, a mistaken assumption or perception as to permission is not a substitute for permission actually being given. It follows that I find that permission was not given. While the issue of permission is not determinative in and of itself, the existence of such a perception, fairly arrived at, is relevant to good faith.

32    The respondents’ notice of contention does not challenge his Honour’s finding as to lack of permission. Instead they relied in their submissions on the matters referred to in [121] in support of the good faith exception, which is precisely what his Honour did.

33    It is apparent that the primary judge found that Techniques was not certified by HCA to manufacture Natvia products from any time after 22 July 2015. In its submissions to this Court the appellant sought to emphasise that this finding related to Techniques’ manufacturing activities with respect to the Natvia products but that it did not relate to the respondents’ activities in respect of the production and supply of the Natvia products bearing the relevant mark. In essence, the appellant submitted that although Techniques had been certified by HCA to manufacture the Natvia products at all relevant times up to 22 July 2015, HCA never gave the respondents permission to use the Trade Mark on the packaging of the Natvia products. We will explain why we do not accept HCA’s submissions on this topic later in these reasons.

34    With regard to manufacturing by Hellay, his Honour found that Hellay manufactured Natvia Products as a toll manufacturer, using the same formula, manufacturing process and packaging as Techniques from around mid-2015. Hellay commenced manufacturing Raw Earth Products in about May 2017.

35    To summarise his Honour’s findings in relation to HCA’s approval of Hellay’s manufacturing operations, there was no certification in force in relation to the Natvia Products from June 2015 to 1 April 2016 and from July 2019, or, in the case of the Raw Earth Products, from July 2019. The respondents’ notice of contention does not challenge those findings.

Trade Mark Use

36    Having referred to the relevant statutory provisions and a number of well-known authorities concerned with the issue of trade mark use, the primary judge observed at [93]:

A practical and realistic approach permeates many of the authorities as to the inquiry required to be undertaken to assess whether infringement has occurred, as considered in some detail by Sackville J in Pepsico. It is an objective inquiry of substance, rather than mere form, although form in the sense of appearance is doubtless also a feature of substance. The assessment is to be made from the perspective of a person looking at the impugned mark and what such a person would take from it as to the purpose and nature of its use: Anheuser-Busch at 186, citing Shell Co at 425; and Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH [2001] FCA 1874; 190 ALR 185 (Full Court) at [22]-[24] and [76].

His Honour noted that HCA bore the onus of establishing trade mark infringement including that the relevant use was trade mark use.

37    His Honour found that the words “Halal Certification Authority Australia” were “purely descriptive”. His Honour said at [97]:

… This is so despite those words constituting the bulk of HCA’s company name. In the absence of the full company name on either the Packaging Logo or the Trade Mark, HCA has an immediate problem in relying upon the words “Halal Certification Authority Australia”, or even the subset words “Halal Certification Authority” as themselves indicating to a consumer the trade origin of the services it supplied. Even this much assumes that it is realistic to conclude that a consumer would even trouble to read those words, which is doubtful given the greater importance of the Arabic lettering signifying halal, and the small size of the logo on the packaging.

38    His Honour continued at [98]-[102]:

[98]    The live question then is whether a member of the general public, or an ordinary and reasonable reader, would consider that there is any practical difference in using the Packaging Logo as part of a registered trade mark to signify that the products were halal. A recurring example throughout this proceeding was the comparison with the Kosher Logo which also appeared on the relevant Natvia Products and Raw Earth Products. The oral evidence as to the similarities and differences between kosher and halal food indicated that the only substantial difference is that the Islamic faith generally permits rabbits, camels, horses and shellfish to be eaten, while the Jewish faith (and thus kosher) does not. That is certainly not an exhaustive account of the differences, but it does indicate a reasonably high degree of commonality and that much of the food that is kosher is very likely also to be halal. Core limitations of both concern not using porcine products with the addition of limitations on the method of slaughter of other animals.

[99]    The small display size and relatively obscure placement on the packaging for both the Packaging Logo and the Kosher Logo starkly contrast with the large and dominant size of the “Natvia” and “Raw Earth” trade marks. These trade marks were registered to Flujo Sanguineo, and were the names by which the two types of products in issue were overtly sold. The English words on the Packaging Logo and the Kosher Logo are difficult to read. While it is true the words “Halal Certification Authority Australia” are clearer than the equivalent words on the Kosher Logo, they are both more troublesome to read than just the more immediate “K” symbol and the Arabic lettering indicating halal.

[100]    Most consumers or other casual readers would probably not even notice that the logo was there, even when they are on the shelf at home, given that the logos are situated on the side of the packaging, usually underneath or near the nutritional information. Annexures MOC-1, 3, 4, 6, 7, 12 and 13 to Mr O’Connor’s affidavit demonstrate this. Annexure MOC-10 to the same affidavit also provides a useful view of what a shopper would see when viewing the Raw Earth and Natvia Products at the supermarket: nearly all of the products are displayed such that the Packaging Logo is not visible. Even when one of the Natvia Products is turned on its side (specifically, either the Natvia 40 x 2g sachets 80g pack sweetener, or the Natvia 80 x 2g sachets 160g pack sweetener) the Packaging Logo is not discernible at any level of clarity, let alone sufficient to see the printing of the words “Halal Certification Authority Australia” while browsing. Finally, in Annexure MOC-8, there is a closer-up picture of some of the Natvia Products, where they appear to have been turned such that the Packaging Logo is clear to the camera. Even in this close-up view, where the products have been positioned for better clarity, it is impossible to make out the words which are on the Packaging Logo or the Kosher Logo from that distance. A shopper would most likely go no further than the immediate “K” symbol and the Arabic lettering indicating halal, which are still somewhat clearer at that distance.

[101]    In the absence of any direct evidence from any consumer or any independent experts as to how packaging of this kind either was, or was likely to be, read by a consumer, the Court is left to make inferences and draw other conclusions on the face of the packaging. The respondents addressed this briefly; HCA barely at all. The above consideration is more detailed than any submission made.

[102]    HCA also sought to make use of the evidence of Mr Hanna in cross-examination, and the pleading in relation to the good faith defence in s 122(1)(b)(i) of the Trade Marks Act at [17(d)] of the defence, both of which went to the subjective purpose of using the Packaging Logo. However, it is difficult to see how that subjective purpose will ordinarily serve any useful purpose in relation to the objective assessment of whether there has been use as trade mark, unless, perhaps, it has some direct bearing on the objective assessment required to be carried out. I found that evidence, pleading point, and argument, of no assistance at all in that objective assessment.

39    His Honour referred at [104] to evidence given by Mr Hanna who, referring to the respondents’ use of the Packaging Logo on their products, said “… in essence, it was for us to be able to simply clearly [sic] demonstrate to consumers that it was Halal”. However, his Honour went on to reiterate at [105] that he did not consider the subjective intention of officers of the Flujo Group to be of any assistance in determining whether or not there had been trade mark use but that Mr Hanna’s evidence (which we have just quoted) “correctly reflects what ultimately did occur”.

40    His Honour said that he was not satisfied that the whole of the device used by the respondents conveys more than the sum of its parts. By this we understand his Honour to mean that the annulus was not itself distinctive and that the mark as a whole was purely descriptive. His Honour observed at [106]:

The use of the word “kettle” in Pepsico, and the use of the words “luscious Lips” in Nature’s Blend were essentially descriptive, while the use of the phrase “Tub Happy” in the Tub Happy case was not. Unless the situation fits into the latter scenario, so as to be useful beyond being descriptive (here as to the goods being halal, or even perhaps certified as halal) there would be no infringement. That is a substantial hurdle for HCA in this case. The Arabic characters in the Trade Mark are starkly of that descriptive character, conveying in context that the goods are halal. The rest of the Trade Mark is otherwise substantially made up of words that have been refused registration as a trade mark because they are “entirely” of that descriptive character. These are the two main elements of the Trade Mark, plus the annulus. It is difficult in this case to see how these two descriptive elements could be more than descriptive when paired together, short of a level of market recognition which would create recognition of the Trade Mark beyond description. I am not satisfied that, in this case, the whole of the device conveys more than the sum of its parts.

41    His Honour referred at [107] to the size of the Arabic lettering and the need for a person to read and comprehend the phrase “Halal Certification Authority Australia” and to perceive that it is that entity that is the source of the certification for the product. His Honour said “that is quite a lot to predict and infer that a person shopping at a supermarket is likely to bother to do”. It is apparent that his Honour regarded the message conveyed by the use of the Arabic lettering and the word halal as allowed or permitted in accordance with Islamic rights and that this was the dominant message conveyed by the respondents’ use of the Packaging Logo. In this regard, his Honour drew assistance from two well-known High Court authorities concerned with misleading conduct in advertising (Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2013) 250 CLR 640) and branding and get-up (Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45).

42    In addition, his Honour had regard to the class of consumer to whom the products were directed (which his Honour said was “not entirely homogenous”) and the nature of the products themselves (products not likely to be perceived as being at high risk of not being halal). His Honour concluded at [114]:

There is nothing that I discern about the use of the Packaging Logo, having regard to its size and location, that meets the threshold of it being used as a trade mark for services. It simply would not be likely to be regarded by any reasonable consumer as any kind of indication of trade origin of any certification service. I am therefore not satisfied that applying the Packaging Logo to the Natvia or Raw Earth products entailed use as a trade mark for a service for the purposes of s 120(1) of the Trade Marks Act. This reasoning applies with equal force and effect to the halal certification services which HCA provided, and in relation to the Natvia Products and Raw Earth Products which were closely related to those services for the purposes of s 120(2)(c) or (d). This is because the threshold of use as a trade mark at all, in the chapeau to s 120(2), is not overcome, for the same reasons: see Lion Nathan at [71].

43    The primary judge went on to consider submissions made by the parties concerning the application of s 120(2) of the Act. His Honour concluded at [115]-[116] that the requirements of s 120(2) were not satisfied. We will return to that topic when considering the respondents’ notice of contention.

The Good Faith Exception

44    Having found that none of the respondents used the Packaging Logo as a trade mark, the primary judge proceeded to consider whether the good faith exception in s 122(1)(b)(i) of the Act would apply in the event that he was wrong about trade mark use.

45    His Honour found at [67]-[71]:

[67]    After the dispute between Techniques and Flujo Group in 2015, Hellay continued to manufacture Natvia products as a toll manufacturer, using the same formula, manufacturing process and packaging as Techniques. It became clear later that halal certification was not obtained by Hellay. The evidence of Mr Hanna, and the case for the respondents, is that this was an oversight, which was sought to be rectified once discovered. The case for HCA was that this was not merely an oversight, but rather a reflection of the respondents’ callous attitude to the use of the Packaging Logo, which reflected no concern that this had taken place. This characterisation is relied upon to demonstrate a lack of good faith for the purposes of the defence in s 122(1)(b)(i) relied upon by the respondents. I ultimately conclude later in these reasons that the evidence establishes that the failure to get Hellay to obtain halal certification was no more than an oversight and falls short of indicating a lack of good faith or worse. In drawing that conclusion, I had regard to the detailed discussion on this topic by Beach J in Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; 118 IPR 239, especially at [108]-[111].

[68]    In early 2016, Mr Hawley from Hellay told Flujo Group that he had contacted HCA regarding certification. Soon after that, in about March 2016, Mr Hawley was asked by Ms Azrina Iqbal of Flujo Group to obtain halal certification. Mr Hanna was told by Mr Hawley that an application form was completed with HCA and that the Natvia product was certified on 1 April 2016. Mr Hanna was not very familiar with the process because it was the manufacturer who looked after certifications.

[69]    As noted above and again below, Flujo Group resumed manufacturing arrangements with Techniques in about October 2018, while continuing also to use Hellay. There was no change in the formulation or production and Mr Hanna understood that Techniques maintained the relationship with HCA, including implicitly halal certification for their manufactured products. It is likely that Mr Hanna relied upon knowledge that Techniques was certified by HCA up until 2018, which was the case based on Ms El-Mouelhy’s evidence. It is relevant that no representative of Flujo Group was copied to the email from Techniques to HCA of 22 July 2015 terminating the certificate, apparently solely in respect of the Natvia products. There is otherwise no indication that Techniques, or HCA for that matter, notified Flujo Group that the halal certification had been terminated in respect of either Natvia or equivalent generic ingredients.

[70]    In about March 2017, Hellay commenced manufacturing a natural sweetener, Raw Earth Sweetener. The sweetener was made from monk fruit, stevia and erythritol, for Raw Earth as a toll manufacturer. When Flujo Group received a letter of demand from HCA on 3 August 2018, and checked with Hellay, the oversight in not obtaining halal certification was discovered. Mr Hanna asked Mr Hawley shortly after that to immediately rectify this and obtain certification for the Raw Earth product. HCA commenced this proceeding on 5 September 2018.

[71]    Mr Hanna kept in contact with Mr Hawley on the certification issues, and was told in September-October 2018 that certification of Raw Earth was being approved by HCA, but that the new certificate was being withheld due to the court case. I infer from this that there was no issue as to the product in fact being halal, or any factual impediment to certification as such, other than HCA’s interests arising out of this litigation.

46    His Honour later found that the respondents used, and intended to use, the Packaging Logo to indicate that their products had the quality and characteristic of being halal and certified as such by HCA. His Honour said at [122]:

I am satisfied that the respondents genuinely used, and intended to use, the Packaging Logo to indicate that the Natvia Products and Raw Earth Products had the quality and characteristic of being halal and certified as such by HCA, notwithstanding my conclusion that this goes much further than a reasonable consumer or other reader would conclude. There was no issue of the respondents engaging in any clandestine use, or that HCA had not been on notice of this use, both past and potential. That much is to be gleaned from the reasoning leading to the conclusion as to use. However, discharging the burden of good faith was a more exacting task.

47    In considering the legal test to be applied for the purpose of a good faith defence, his Honour said at [123] “… the essential concern going to good faith is that the infringing use be honest”. His Honour also observed that other matters relevant to good faith are the absence of any conscious and deliberate act to undermine the registered owner or the integrity of the registered mark, and the absence of any “ulterior motive” citing Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 166 FCR 312 (“Mayne Industries”) at [105] and Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 354-5 (“Johnson & Johnson”).

48    His Honour considered that the respondents’ approach to ensuring the certification had been obtained was lax. His Honour said at [124]:

On the evidence, I accept that the approach to ensuring that certification had been obtained was lax. While there was no apparent issue as to the goods in fact being halal, the issue of certification was addressed in an ad hoc and incomplete way. For some time, there was no halal certification in place at all: Mr Hanna’s evidence was that it may have been seven months for Hellay after they were first engaged Flujo Group. HCA submitted that this period was not an oversight. It further submitted that the “trigger” for Flujo Group’s compliance was the point at which they wished to retail in the United Arab Emirates. While I do accept it was the trigger for discovering the oversight, I do not accept that the seven month lapse in certification was intended.

49    In his reasons the primary judge refers to a letter of demand that was in evidence sent on 3 August 2018 by HCA’s solicitor to the Flujo Group. It is not necessary to refer to the content of the letter of demand in detail, but it alleged that the Flujo Group had engaged in trade mark infringement and made various demands including for payment of an amount of $500,000 as damages for trade mark infringement. As his Honour found at [135], the demand for payment was made without any indication of how that sum was calculated. In a finding that was not challenged by HCA, his Honour also found at [135] that, as a practical matter, the demands made in the letter of demand were nearly impossible for Flujo Group to comply with within the five business days allowed before HCA proposed to commence legal proceedings.

50    Having referred to evidence from Mr Hanna as to the reasons for the Flujo Group not ensuring that the respondents’ products were halal certified, his Honour found at [125] that Mr Hanna, and through him, Natvia and the other relevant members of the Flujo Group, at all times believed that their products were halal certified. His Honour found that when it was brought to Flujo Group’s attention by a retailer in the United Arab Emirates that there was no certification, the situation was rectified.

51    However, the position in relation to the certification of Raw Earth products manufactured by Hellay was more complicated. As to this, his Honour said at [126]-[127]:

[126]    As to the later certification issue concerning Raw Earth, Mr Hanna’s evidence was that the absence of certification by Hellay was ascertained upon HCA issuing the letter of demand on 3 August 2018, and shortly after Mr Hanna asked for certification to be obtained by the manufacturer Hellay. HCA then commenced these proceedings in September 2018. Mr Hanna was informed by Hellay in September-October 2018 that the new certificate was being withheld because of these proceedings. As detailed above, it was only in July 2019 that HCA retroactively amended the last certificate issued to Hellay, removing products which encompassed the Raw Earth and Natvia Products, because of asserted “continuing non-compliance”. In this circumstance, it is again clear that Flujo Group quickly took, or attempted to take, necessary steps to seek certification where it became clear that it was not in place. It was only HCA itself which seemingly prevented this.

[127]    It is significant that whenever a lack of certification has been brought to their attention (up to the point of the commencement of this proceeding, which I will address below) the respondents have attempted to rectify it by seeking certification of the relevant product in the manner which would be most appropriate to do so in the context of the operation of their business – that is, via the toll manufacturer, who holds the certification relationship with HCA. I do not accept HCA’s submission that Flujo Group did not seek to make amends in respect of the Natvia Product certification issue in 2015-16. Subsequently requesting that the contracted manufacturer seek certification of the products, which they did, seems to be the most complete way of making those amends. No doubt HCA’s preferred means of amends would have been the payment of $500,000 in damages that it initially requested in its 3 August 2018 letter of demand, an issue to which I will return.

52    These findings are of relevance to the respondents’ good faith defence because, as his Honour plainly recognised, they provide context to any use of the Trade Mark by the respondents both prior to and after receipt of the letter of demand. We will return to this topic later in these reasons but leaving aside those periods in respect of which there was no certification in place, there does not appear to have been any reason why HCA would not have approved the respondents’ use of the Packaging Logo except for what his Honour described as an “opportunistic” demand for $500,000 by way of damages. In that regard, there was no evidence to suggest that any of the respondents’ products were not halal. While much was made in HCA’s submissions about the possibility that packaging or products might not be halal (eg. because of the use of forbidden images), there was no suggestion by counsel for HCA in his submissions, much less any evidence, that any of the respondents’ packaging was non-halal.

Use of mark likely to deceive or cause confusion (ss 88(1) and 88(2)(c))

53    His Honour also found that the use of the word “Authority” in the Trade Mark was likely to deceive or cause confusion because it would be likely to be understood as referring to a body having some “official role” or “official authority” of some kind. His Honour considered that the word implied that the Trade Mark was used by a body that has some status of an official or formal kind that necessarily involves more than expertise. In that regard, his Honour rejected HCA’s submission that the word was merely being used to denote the company name or to indicate that HCA was an authority on what is or is not halal.

54    His Honour said at [157]-[162]:

[157]    In relation to the use of the word “Authority”, both the cross-claimants and HCA rely upon dictionary definitions as to its meaning to demonstrate the nature of its use. The cross-claimants rely upon the part of the Lexico.com dictionary definition that refers to a “person or organization having political or administrative power and control”; and the part of the Collins Online Dictionary definition that refers to “an official organization or government department that has the power to make decisions”. They submit that HCA does not have any such power or control, and is not an official organisation or government department with power to make decisions. They point to the evidence of Mr El-Mouelhy where he described himself as a “knowledge authority”, and submit that the Trade Mark is likely to confuse or deceive because it conveys a false impression. They submit that HCA is one of some 25 organisations recognised by the Commonwealth Department of Agriculture and Water Resources for the halal certification of meat. None of these, apart from HCA, describes themselves as an “Authority”. Accordingly, the cross-claimants submit that HCA is not the only organisation that provides such services and cannot be an authority for that purpose.

[158]    HCA asserts that the use of the word “Authority” in the Trade Mark, which encompasses its use on at least some of the accreditation certificates that it issued, does not suggest it has any official status. It submits that it rather expresses a status as to knowledge, having the quality that other people take notice of what is said on a topic. It submits that it falls within the broader dictionary definition of having “a quality which makes other people take notice of what they say” and also refers to “Someone who is an authority on a particular subject [being someone who] knows a lot about it”. HCA submits that the word “Authority” is being used only in a denotive way to say expressly who it is. That is, in context, it refers to no more than part of its corporate name and the expertise it asserts to hold by that name. It submits that it is not used in a connotative way to imply status, let alone any kind of official status. I am unable to accept that reasoning and find that the arguments advanced by the cross-claimants are more compelling, when coupled with the reasoning below.

[159]    The various iterations of the accreditation certificates reproduced earlier in these reasons bear the Trade Mark to give them an authoritative look. They do not refer to HCA by its full corporate name. The Trade Mark is used on the later-in-time certificates as an anti-forgery tool, similar to the way some Australian driver licenses bear a holographic state seal, or other holographic official marking, to prevent counterfeiting. The Trade Mark does not refer to “Halal Certification Authority Pty Ltd”, which would have served to limit to some extent the impact of the use of the word “Authority” by making it clear that this was only part of a private company name, although this is offset to some extent by the use of the company seal on a number of certificates in evidence. The accreditation certificates also refer to “this Authority”. None of this sits well with the suggestion that the word “Authority” in the Trade Mark alone was being used, or intended to be used, merely to denote the company name. Rather, the usage on the face of the accreditation certificate, and on the face of the Trade Mark considered on its own, accords with the usage of that Trade Mark in a connotative way to imply and convey not just some measure of expertise, but also authoritative status.

[160]    The usage of “Authority” as it appears on the Trade Mark indicates a body that has a particular status of an official or formal kind, necessarily involving, but going beyond, expertise. That is, akin to the dictionary definitions relied upon by the respondents, strongly suggesting an “organization having political or administrative power and control” approaching or amounting to “an official organization or government department that has power to make decisions”. It may readily be inferred that HCA overtly sought to convey by the usage of the Trade Mark on its certificates not just that it was a body that possessed authoritative knowledge, but rather than it was a body having some official role; that it had the status of being an official authority of some kind. It was successful in that endeavour.

[161]    Does the Trade Mark on its own achieve anything materially less deceptive or confusing than its use on the certificate? While the Trade Mark on its own probably does achieve less, even on its own, it is deceptive and likely to confuse by reason of, inter alia, the use of the word “Authority”. If examined closely, it similarly tends to convey the same impression on its own as is conveyed by its use on the accreditation certificate. Unlike the Packaging Logo, this is not saved by very small presentation as the evidence does not suggest that the Trade Mark is only used in such a small size. To the contrary, it was used on at least some certificates. HCA also stipulated a minimum size of 10mm on packaging, albeit that such additional packaging was not in evidence. I conclude that the Trade Mark was used in various sizes that included the size at which it is registered, as well as the size at which it is deployed on the certificates in evidence. I accept that it was not necessarily used in any larger size than 10mm on food packaging.

[162]    In the findings on use, I did not consider that the Packaging Logo was capable of conveying a descriptive quality such that it would convey that it was HCA specifically who provided halal certification services. This may seem inconsistent with the finding here that it is likely that the Trade Mark would be capable of creating a deceptive and confusing impression as to the word “Authority”, but the two findings can go together. The Trade Mark and Packaging Logo are such that they are likely to convey a more general impression: if a person actually reads the words “Halal Certification Authority Australia”, presented in the form of an official stamp or seal, they would most likely be left with the impression that there was some official, authoritative body that was saying that the goods were in fact halal, as opposed to the specific certification of a private company, Halal Certification Authority Pty Ltd. This is simply not true. That is therefore deceptive and likely to confuse in the manner in which it was deployed by HCA.

[163]     I consider that the cross-claimants have made good their application for rectification of the register by the removal of the Trade Mark upon the basis of the use of the word “Authority” that is liable to deceive or confuse, especially when used in a larger size, such as on certificates.

55    It is apparent from what his Honour said at [163] that he considered that the likelihood of deception or confusion was especially strong when the Trade Mark was used in its larger size on, for example, certificates issued by HCA to manufacturers such as Techniques and Hellay. In expressing that conclusion it is apparent that his Honour was mindful of the small size in which the Trade Mark appears on packaged products which may make it difficult for some consumers to read.

Lack of Distinctiveness (ss 41(2), 88(1) and 88(2)(a))

56    The primary judge was required to apply s 41 of the Act as it stood at the date HCA applied to register its trade mark (8 June 2004) in deciding whether the registered mark should be cancelled on the ground that it was not, at the date of application for registration, capable of distinguishing HCA’s goods or services in respect of which the Trade Mark was sought to be registered from the goods or services of other persons. In the heading to this section of his Honour’s reasons, his Honour referred to s 41(2) of the Act and the phrase “not inherently capable of distinguishing”. HCA made the point in their submissions on appeal that s 41(2) uses the expression “not capable of distinguishing” and that it was only in other subsections that the expression “inherently adapted to distinguish” is used. Having set out s 41 as it stood at the relevant time, his Honour referred at [173] to the respondents’ submission that “… the Trade Mark was not to any extent inherently adapted to distinguish HCA’s services from like services provided by anyone else”.

57    His Honour referred to various well-known authorities concerned with the concept of distinctiveness and, in particular, the phrase “adapted to distinguish” including Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (“Clark Equipment”), Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337 (“Cantarella Bros”), and the summary of the relevant principles in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 124 IPR 264 (“Accor”). His Honour noted, at [177], that this case is not concerned merely with a word mark, but a logo constituting a device mark made up of a number of elements comprising the Arabic letters, the words Halal Certification Authority, and the annulus. His Honour also noted at [178] that the relevant enquiry was whether the Trade Mark as a whole, being the combination of elements in the manner in which they are arranged, is capable of distinguishing the relevant goods or services.

58    His Honour said at [182]:

The substantive difference between the competing arguments boils down to whether the combined effect of the Trade Mark viewed as a whole, comprising the combined effect of the words “Halal Certification Authority Australia”, the annulus, and the Arabic lettering which conveys halal, meets the description of being adapted to distinguish the service provided by HCA from a like service provided by anyone else. This is also bearing in mind that, at the time of registration in 2004, there were approximately a dozen companies who provided this service.

59    His Honour at [183]-[184] recorded the parties’ submissions including, in particular, HCA’s submission that the three key words from its corporate name were a direct reference to an entity (ie. itself) as a provider of the relevant service. His Honour also noted HCA’s submission that if someone else, actuated by proper motives, legitimately wanted to use a word or phrase for the purpose of indicating the quality of their services, they could not legitimately wish to use all of the elements of the Trade Mark in that specific format and arrangement.

60    His Honour expressed his conclusion in relation to the capacity of the mark to distinguish HCA’s goods or services as follows at [185]-[186]:

[185]    The conclusion I have reached is that HCA has not met or answered the arguments advanced by the cross-claimants. The combination of the components of the Trade Mark, being the words “Halal Certification Authority Australia”, the annulus, and the Arabic lettering meaning halal, is not capable of distinguishing the service provided by HCA from a like service provided by anyone else. As to the words “Halal Certification Authority Australia”, while it is not determinative that a word trade mark over those words was rejected, there was no evidence, let alone overwhelming evidence, that the ordinary meaning of those words had been overshadowed in the marketplace by their significance as that aspect of the device Trade Mark. They remain words at best implying some significance, but without sufficient evidence, even by inference, to support that implication in any meaningful way. Further, there is no marked, if even measurable, improvement on that impression by combining the three components of the Trade Mark. By “its own nature”, the Trade Mark viewed as a whole does nothing to distinguish the services HCA provides from those capable of being provided by any other person providing a like service.

[186]    It is in every sense a mark that would convey to the eye of a purchaser in a descriptive or laudatory sense that goods were halal, and possibly that somebody was certifying them to be so … Nothing about that combination is any more capable of distinguishing the service provided by HCA from a like service provided by anyone else than are the individual constituent parts. There was never a proper basis for giving such a logo a statutory monopoly by registration.

(citation omitted)

Discretion

61    The primary judge then turned to consider the question of whether to exercise the discretion not to rectify the register by cancelling the mark.

62    His Honour referred to a number of factors relied on by HCA in support of its contention that the mark should not be cancelled. These included the public interest and the length of time over which HCA had used its trade mark. As to the public interest, his Honour said at [194]-[195]:

[194]    As to public interest, reliance is placed upon the recognition of HCA by the Australian government and by governments and other entities overseas, said to be in connection with the trade mark. It is asserted that the Trade Mark is an important part of international mutual recognition, and that the form of identification required by slaughtermen to satisfy AUS-MEAT standards includes the Trade Mark. It is pointed out that red meat is economically important to Australia, and that HCA is required to maintain the integrity of the Trade Mark to meet international standards requirements.

[195]    More generally, HCA asserts that the Trade Mark performs an important role in indicating to the public a connection between it and particular goods and services, referring again to its recognition by government and other organisations both in Australia and overseas. This is said to be particularly significant by reason of the religious and technical requirements attached to the Trade Mark when approved for use. It is asserted that there is a public interest in facilitating consumers to identify halal products, and that if the Trade Mark is removed from the register, HCA will have no power to prevent it from being applied to products which have never been tested or certified, which may result in the public losing faith in halal certification marks or in the Trade Mark. I note that HCA, in other arguments advanced, relied upon the Trade Mark not being a certification trade mark and not having to be so in support of its validity.

63    His Honour considered that none of the factors relied on by HCA necessarily depend on the continuation of the registration but that, to the extent they do, they do not provide a sufficient public interest basis for not ordering cancellation of the mark. His Honour said at [197]:

I am of the view that none of these considerations necessarily depend upon continuation of registration of the Trade Mark. But to the extent that they do, they do not provide a sufficient public interest basis for refraining from ordering that the register be rectified by cancellation of the Trade Mark. These considerations are overblown by conflating HCA’s assessment and certification activities with the collateral and secondary use of the Trade Mark. There may be cost and inconvenience to HCA in, for example, seeking to register a proper trade mark to fulfil those objectives, but that is the product of its own conduct. Nor do any of the arguments advanced address any of the bases upon which rectification was sought. I am of the view that the seriousness of the successful grounds for rectification comfortably outweighs HCA’s arguments against it.

64    When his Honour refers to a “proper trade mark” it is clear that he is referring to a mark the use of which is not likely to deceive or cause confusion.

THE APPEAL

65    It is convenient to deal with each of HCA’s grounds of appeal in turn and to consider the parties’ submissions with respect to each ground.

Ground 1 – Trade Mark Use and infringement

66    Ground 1 was directed to the primary judge’s findings in relation to infringement and whether the respondents’ application of the Packaging Logo on their products was use as a trade mark within the meaning of s 120(1) and (2) of the Act. HCA sought to attribute a number of errors to the primary judge under the rubric of ground 1. First, HCA submitted that the primary judge failed to consider the respondents’ subjective intention. Second, HCA submitted that the primary judge erred in his consideration of the context in which the Packaging Logo was used on the respondents’ products. Third, HCA submitted that the primary judge failed to have regard to the Trade Mark as a whole. Fourth, HCA submitted that the primary judge did not give sufficient weight to the fact that the Packaging Logo was used on a food product for human consumption. Fifth, HCA submitted that the primary judge gave excessive weight to the size of the Packaging Logo. Sixth, HCA submitted that the primary judge gave undue weight to the appearance of the Natvia and Raw Earth brands on the packaging of the respondents’ products. In the result, HCA submitted that the primary judge erred in concluding that the use of the Packaging Logo on the respondents’ products was not use “as a trade mark” within the meaning of s 120 of the Act.

67    Like the notice of appeal, HCA’s submissions focused on the primary judge’s finding at [122] (set out above). HCA relied on the following statement of Katzmann J in In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd (2020) 150 IPR 73 (“In-N-Out Burgers”) at [120]:

… although the owner of a registered trade mark is not obliged to prove intention in order to establish a case of infringement, the alleged infringer’s intentions are not irrelevant. An inference may be drawn from evidence disclosing an intention to deceive or confuse, that deception or confusion is likely to occur …

68    It was in that context her Honour referred to the well-known judgment of Dixon and McTiernan JJ in Australian Woollen Mills Limited v FS Walton & Co Ltd (1937) 58 CLR 641 (“Australian Woollen Mills”) at 657 who said:

The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive.

69    There are several points to make about HCA’s first submission.

70    The question in In-N-Out Burgers to which Katzmann J’s observations were directed concerned the issue of deceptive similarity. There was no issue in that case that the mark found to infringe had been used by the respondent as a trade mark. Similarly, the observations of Dixon and McTiernan JJ in Australian Woollen Mills were directed to the likelihood of deception or confusion arising from the defendant’s use of its mark as a trade mark.

71    HCA submitted that the principle considered in Australian Woollen Mills is not confined to an intention to deceive and may be invoked more generally including in a case in which it is found that a defendant had an intention to use a trade mark for an identified purpose. It submitted that the identified purpose in this case was “to indicate that the … products had the quality and characteristic of being halal and certified as such by HCA”.

72    Whether or not a mark has been used as a trade mark for the purpose of (inter alia) s 120 of the Act requires a consideration of the way in which the mark has been used. The question is to be determined objectively without reference to the subjective intentions of the user and from the perspective of a person looking at the relevant packaging: E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 (“E & J Gallo”) at [33] per French CJ, Gummow, Crennan and Bell JJ citing (inter alia) Shell Co Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 (“Allergan”) at [24] citing E & J Gallo at [33], Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182 (“Anheuser-Busch”) at [186] per Allsop J.

73    The High Court (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) said in Allergan at [24]:

[24]    Whether a sign has been “use[d] as a trade mark” is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not “as a trade mark” was in Irving’s Yeast-Vite Ltd v Horsenail [(1934) 51 RPC 110], where the phrase “Yeast tablets a substitute for ‘Yeast-Vite’” was held to be merely descriptive and not a use of “Yeast-Vite” as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

(some citations omitted)

74    The primary judge gave no weight to the subjective intention of the respondents and their officers on the question of trade mark use. We do not consider that this involved any error by the primary judge.

75    HCA’s next submission was that the primary judge failed to have regard to the Packaging Logo as a whole.

76    His Honour had regard to each of the elements of the Packaging Logo – the Arabic lettering, the words Halal Certification Authority and the annulus – in the course of his analysis. That was a necessary part of understanding what function the Packaging Logo performed and, in particular, whether it would be likely to indicate to potential purchasers that the relevant goods were not just halal but had also been certified by the owner of the relevant mark as halal. His Honour’s findings that the Arabic characters in the Trade Mark are descriptive in that they convey that the goods are halal and that the words “Halal Certification Authority Australia” are also descriptive in that they convey that an authority has certified such goods as halal were findings directly relevant to the question of what impression the use of the Packaging Logo would have on potential purchasers. The same is also true of his Honour’s finding in relation to the annulus which he said at [110] “… may perform the additional function of conveying to the consumer that the representation is more than a bare assertion, even if the concept of certification may or may not be conveyed”. Ultimately, his Honour was not persuaded that the Packaging Logo, as used on the respondents’ products, conveyed more than the sum of its parts.

77    When deciding what effect the use of a sign is likely to have on the mind of consumers and whether it would be likely to function as a badge of origin, the sign as a whole must be considered in the context in which it has been used. It follows that it is wrong in principle to dismember the sign into its constitute elements disregarding the presence of some, and only having regard to others. But the constituent elements of a sign may make different contributions to the message conveyed by the sign as a whole and it is not only permissible, but necessary to consider what contribution is made to that message by the constituent elements. We will say more on this topic when considering the capacity of HCA’s Trade Mark to distinguish the registered services from services provided by other persons. However, we are not persuaded that the primary judge, in determining the question of trade mark use, failed to have regard to the Packaging Logo as a whole.

78    HCA also contended that the primary judge should have concluded that the Packaging Logo was being used to denote a trade source connection between HCA and the respondents’ products or that a service had been performed in respect of them, not merely that the goods were halal. HCA says that the primary judge gave insufficient weight to the context in the way the Packaging Logo was used including, in particular, the fact that it was used on a food product, the size of the Packaging Logo as used on the respondents’ products, and the presence of what we will refer to as the K logo appearing next to the Packaging Logo, which HCA says indicates certification by Kosher Australia Pty Ltd that the respondents’ products were kosher.

79    The primary judge attached some significance to the size of the Packaging Logo on the respondents’ goods which, we accept, might make it difficult for consumers to read and clearly discern its features including, in particular, the English text extending around the perimeter of the annulus. However, it does not follow from this that there has not been trade mark use. The Packaging Logo as used on the respondents’ products is small in appearance (relative to the Natvia brand) but its various features are all discernible by a consumer interested to know whether the goods are halal. We do not consider that there is anything about the size or location of the Packaging Logo on the respondents’ goods which suggests that it would not be perceived as a badge of origin in the relevant sense.

80    It is important to note that the use of a sign on product packaging may perform more than one function by conveying a descriptive message as well as a trade mark message: Anheuser-Busch at [189], [191], Allergan at [25]. In Johnson & Johnson Gummow J said at 347-348:

Where the trade mark allegedly used by the defendant comprises ordinary English words (such as “Page Three”, considered by Slade J in News Group Newspapers Ltd v The Rocket Record Co Ltd [1981] FSR 89 at 102) then, as this decision illustrates, that circumstance may be taken into account by the court in the process of reasoning by which it accepts or rejects a submission that the use in question is not a trade mark use but a description of the goods in question. To say that is not to gainsay the point made by Dixon CJ in Mark Foys Ltd v Davies Coop and Co Ltd (the Tub Happy case) (1956) 95 CLR 190 at 194-195 that language is not always used to convey a single, clear idea; a mark may have a descriptive element but still serve as a badge of trade origin. However, where the issue is one of infringing use by use of a word mark (as in the present case), the fundamental question remains, to paraphrase what was said by Williams J in the same case (supra) (at 205), whether those to whom the user is directed are being invited to purchase the goods (or services) of the defendants which are to be distinguished from the goods of other traders “partly because” (emphasis supplied) they are described by the words in question.

81    His Honour’s observations in that case were directed to the use of “ordinary English words” but they may also apply to figurative marks that are predominantly descriptive. A good example of such a mark appears next to the Packaging Logo on the respondents’ products which incorporates a map of Australia across which the words “100% Australian owned & made” appear. It is difficult to see how the use of that mark on the respondents’ packaging is conveying anything more than that the goods have been made in Australia by an Australian owned business. In that example, the map of Australia merely underscores the message conveyed by the words.

82    The primary judge referred to the summary of the relevant principles concerning use “as a trade mark” in Nature’s Blend Pty Ltd v Nestlé Australia Ltd (2010) 87 IPR 464 (Stone, Gordon and McKerracher JJ) which was a case in which the words “luscious Lips” were used on packaged confectionary which included lip shaped lollies. The Full Court summarised the relevant principles as follows at [19]:

1.    Use as a trade mark is use of the mark as a “badge of origin”, a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else: Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107; 47 IPR 481; [1999] FCA 1721 at [19] (Coca-Cola); E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 265 ALR 645; 86 IPR 224; [2010] HCA 15 at [43] (Lion Nathan).

2.    A mark may contain descriptive elements but still be a “badge of origin”: Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 347–8; 101 ALR 700 at 723; 21 IPR 1 at 24 (Johnson & Johnson); Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192; 33 IPR 161; Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2001) 190 ALR 185; 54 IPR 344; [2001] FCA 1874 at [60] (Aldi Stores).

3.    The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 422; [1963] ALR 634 at 636; 1B IPR 523 at 532 (Shell Co).

4.    The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use “as a trade mark”: Johnson & Johnson at FCR 347; ALR 723; IPR 24 per Gummow J; Shell Co at CLR 422; ALR 636; IPR 532.

5.    Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or “context”) of the impugned words: Johnson & Johnson at FCR 347; ALR 723; IPR 24; Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182; [2002] FCA 390 (Anheuser-Busch).

6.    In determining the nature and purpose of the impugned words, the court must ask what a person looking at the label would see and take from it: Anheuser-Busch at [186] and the authorities there cited.

83    The fact that a mark considered as a whole is largely or predominantly descriptive does not preclude a finding that it is also acting as a brand. Similarly, the fact that a product may bear more than one brand does not mean that only one of them is used as a trade mark. As the High Court said in Allergan at [25]:

…Where there are several words or signs used in combination, the existence of a clear dominant “brand” is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods [Anheuser-Busch (2002) 56 IPR 182 at 228 [191]].

84    In Anheuser-Busch, Allsop J observed at [191]:

It is not to the point, with respect, to say that because another part of the label … is the obvious and important “brand”, that another part of the label cannot act to distinguish the goods. The “branding function”, if that expression is merely used as a synonym for the contents of ss 7 and 17 of the TM Act, can be carried out in different places on packaging, with different degrees of strength and subtlety. Of course, the existence on a label of a clear dominant “brand” is of relevance to the assessment of what would be taken to be the effect of the balance of the label.

85    In the present case, the Packaging Logo is in our opinion performing a dual function, which includes, firstly, describing that the goods are halal and secondly, conveying a branding function. The Packaging Logo is performing a branding function as it is likely to signify to a significant number of consumers that the goods on which it appears were certified as halal by the entity that has applied, or authorised the application of, the Packaging Logo, who they would infer is the Halal Certification Authority Australia. In this way, the Packaging Logo indicates a connection between the goods that have been dealt with in the course of trade by a person (ie. by the certifier) from goods dealt with by another person (eg. whose goods have not been so certified). The presence of the Trade Mark on the goods signifies that they are halal and were certified as such by the owner of the mark. In this regard, the Packaging Logo was used by the respondents as a “badge of origin” in the sense that it indicated a connection in the course of trade between the respondents’ goods and the person who applied, or authorised the application of, the Packaging Logo to those goods: E&J Gallo at [41]-[42]. We accept HCA’s submission that the primary judge fell into error by overlooking the second purpose for which the Packaging Logo was used, which was to signify that the products were certified by Halal Certification Authority Australia.

86    We are therefore satisfied that the Packaging Logo has been used by the respondents as a trade mark to indicate a trade connection between the goods on which it appeared and the person who applied it or authorised its application to the relevant goods so as to distinguish such goods from the goods of other persons. In light of that conclusion, it is not necessary to consider the criticisms made of the primary judge’s reasons in the particulars to ground 1 of the notice of appeal.

Section 120(1) – use in relation to goods or services in respect of which the trade mark is registered

87    HCA’s notice of appeal does not deal specifically with all of the primary judge’s reasons for rejecting the infringement case under s 120(1) and (2) of the Act. This may be because his Honour concluded at [114] of his reasons that the Packaging Logo was not used “as a trade mark for a service for the purposes of s 120(1) of the Trade Marks Act”. Expressed in that way, his Honour’s singular conclusion deals with two discrete but related questions that arise under s 120(1), first, whether the Packaging Logo was used as a trade mark and, second, if it was so used, whether it was used in relation to the services in respect of which HCA’s trade mark is registered.

88    It will be recalled that the Trade Mark is registered only in respect of services including “issuing halal certification to businesses and individuals for goods and services”. The registration does not extend to goods of any kind.

89    HCA submitted that, given the respondents admitted in their defence that they used the Packaging Logo to indicate that their goods, the Natvia Products and the Raw Earth Products, had the quality of being certified as halal by HCA, any finding that the Packaging Logo had been used as a trade mark should lead to a finding that all elements of s 120(1) were satisfied. We do not accept that submission.

90    In our opinion, the Packaging Logo was used in relation to the goods to which it was applied rather than any services provided in connection with their preparation and packaging. It was used as a trade mark on the relevant goods to convey a message about those goods, namely, that the goods were halal and were certified as such by HCA.

91    At a general level, the words “in relation to” in s 120 are words of broad import. They refer to a connection or relationship between subjects. French CJ said of such “relational terms” in R v Khazaal (2012) 246 CLR 601 at [31]:

Relational terms such as “connected with” appear in a variety of statutory settings. Other examples are: “in relation to”; “in respect of”; “in connection with”; and “in”. They may refer to a relationship between two subjects which may be the same or different and may encompass activities, events, persons or things. They may denote relationships which are causal or temporal or relationships of similarity or difference. The task of construing such terms does not involve the resolution of ambiguity. They are ambulatory words and may be designed to cover a variety of subjects and a variety of relationships between those subjects. The nature and breadth of the relationships they cover will depend upon their statutory context and purpose. Generally speaking it is not desirable, in construing relational terms, to go further than is necessary to determine their application in a particular case or class of cases. A more comprehensive approach may be confounded by subsequent cases.

(citation omitted)

92    The nature and extent of the relationship captured by the words “in relation to” as those words are used in s 120(1) depend on their statutory context and purpose. This may include the legislative history and any relevant extrinsic materials: Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355 at [78] per McHugh, Gummow, Kirby and Hayne JJ; Federal Commissioner of Taxation v Consolidated Media Holdings Ltd (2012) 250 CLR 503 at [39]; SZTAL v Minister for Immigration and Border Protection (2017) 262 CLR 362 at [14] per Kiefel CJ, Nettle and Gordon JJ.

93    The Trade Marks Act 1905 (UK) defined the rights of the proprietor of a registered trade mark in s 39 as “the exclusive right to the use of such trade mark upon or in connection with the goods in respect of which it is registered”. There was a question as to whether those words extended to the use of a mark in advertisements. In accordance with a recommendation of the Report of the Departmental Committee on the Law and Practice Relating to Trade Marks (cmd. 4568 of 1934), the Trade Marks Act 1938 (UK) adopted the language of “in relation to” in s 4 in defining the rights of the proprietor of a registered mark. The same language was later used in s 62 of the Trade Marks Act 1955 (Cth) and s 6(2)(b) which provided that “… references to the use of a mark in relation to goods shall be construed as references to the use of the mark upon, or in physical or other relation to, goods”. The effect of those changes was said by Mr Shanahan in the first edition of his book to remove earlier doubts as to whether use of a trade mark in advertisements, invoices or other documents relating to goods can amount to trade mark use: Shanahan, Australian Trade Mark Law and Practice (Law Book Co, 1st ed, 1982) at pp 19-20.

94    In the present case, it was open to HCA to apply for registration of its Trade Mark in respect of both goods and services: see 19 of the Act. This is therefore not a case in which the Act does not provide the owner of the trade mark with relevant protection. Rather, it is a case in which the protection afforded is limited by the scope of the registration which the registered owner chose to obtain, which does not extend to the use of the Trade Mark in relation to goods.

Section 120(2)(c) – use in relation to services of the same description

95    Although the Act gives protection to the owner of a mark registered with respect to services when it is used in relation to goods, this protection is subject to the limitations and qualifications provided for in s 120(2) and (3). In this case, HCA relies on s 120(2)(c) and (d) of the Act.

96    We can deal with the argument based on s 120(2)(c) quite briefly. For the reasons we have stated, the use of the Packaging Logo on the respondents’ goods was not a use in relation to services. Accordingly, s 120(2)(c) cannot apply.

Section 120(2)(d) – use in relation to goods that are closely related to registered services

97    With regard to s 120(2)(d), HCA submitted that this Court should find that when a mark is registered in respect of a service of performing a particular operation on goods, then goods that are specifically identified as having had that service performed on them are closely related to the services in respect of which the mark is registered.

98    In support of its submission HCA relied on the judgment of Finkelstein J in Colorado Group Limited v Strandbags Group Pty Limited (No 2) (2006) 69 IPR 281. His Honour considered a number of issues in that case, including, relevantly, whether the owner of the mark COLORADO registered in respect of backpacks could establish infringement by the respondent under s 120(2)(c) or (d) in circumstances where the respondent was engaged in the retail sale of handbags, wallets and purses. His Honour said at [27]:

The final question is whether the service of bringing together handbags, wallets and purses for sale is a service “closely related” to backpacks or whether it is “of the same description” as the service of bringing together backpacks for sale. I think these claims are hopeless. I do not understand how it can be said that the service of bringing handbags, wallets and purses together is “closely related” to backpacks. There is no relationship between the two. In my opinion, speaking generally it is only when retailing services consist of supplying the very goods in respect of which it is said the services are related that the services and goods will be closely related: see Warnaco US Inc v Estee Lauder Cosmetics Ltd (2000) 50 IPR 143; K Mart Corporation v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149. Put another way, I cannot imagine that the public would expect the same business to supply handbags, wallets and purses as well as backpacks: Winglide Pty Ltd v Corporate Express Inc (1999) 46 IPR 627 at 630. For much the same reasons, I reject the submissions that the service of bringing together handbags, wallets and purses for the benefit of customers is a service “of the same description” as the service of bringing together backpacks for sale and that handbags, wallets and purses are goods “closely related” to that service.

99    None of this assists HCA except in so far as his Honour acknowledged that s 120(2)(d) may apply to services consisting of supplying the very goods which are said to be closely related to those services. For example, it may be that the service of supplying perfume products by retail is closely related to perfume products as a class of goods; that the service of re-treading aircraft tyres is closely related to aircraft tyres as a class of goods; and that television repair services are closely related to television sets as a class of goods: see Warnaco US Inc v Estee Lauder Cosmetics Ltd (2000) 50 IPR 143 at 154; Dunlop Aircraft Tyres Ltd v The Goodyear Tire and Rubber Company (2018) 262 FCR 76 at [304]-[305]; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365. In the latter case, French J said at [38]:

The range of relationships between goods and services which may support the designation “closely related” will be limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting trade marks which attach to them. The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. Similar examples were suggested in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; 48 ALR 511 by Lockhart J who saw service marks as potentially giving rise to problems of confusion with goods marks and other service marks “of greater difficulty and subtlety than has previously been experienced in the case of goods marks alone”. His Honour observed that (at 150; 522):

‘Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods.’

100    Other examples of closely related goods and services are referred to by Lockhart J in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511 at 522 (“Caterpillar”) which include ready-made clothes and tailoring services, educational materials and educational services (eg. language courses). In the Caterpillar case itself, earth moving machinery and the hiring of earth moving machinery were held to be closely related goods and services. However, the class of relevant goods must be capable of some reasonable definition since it is an element of the monopoly right conferred on the registered owner.

101    One of the difficulties with HCA’s case based on s 120(2)(d) is the class of goods to which s 120(1)(d) might be applied if HCA’s argument is correct cannot be confined to either halal or non-halal goods. This is because the very same goods may be halal or non-halal depending on whether they contain particular ingredients or how they have been prepared or processed.

102    Another of the difficulties that confronts HCA’s argument is the scope of its registration. In oral argument Senior Counsel for HCA accepted that, on HCA’s case, all food products that purport to be certified would be closely related to the registered services. However, the registered services are not confined to the issuing of halal certification in respect of the preparation or processing of food products. In any event, and that point aside, HCA’s argument, if accepted, would extend the operation of s 120(2)(d) to any goods to which the trade mark was applied on the basis that it would necessarily be closely related to the registered services.

103    Section 120(2)(d) requires that the registered services as specified in the Register of Trade Marks be compared to the goods in relation to which the relevant mark has been used for the purpose of determining whether such goods are closely related to the registered services. The limitations imposed by the words “closely related” is deprived of all effect if any goods to which the mark is applied are ipso facto considered to be closely related to the registered services.

104    In the present case, the Packaging Logo was applied to sweeteners. There is no evidence directed to the question of whether sweeteners as a class of goods are closely related to the registered services. There may well be particular goods that might be considered closely related to the registered services (eg. meat products) but, if there are, we are not persuaded that sweeteners are among them.

105    HCA relied on the decision of Perram J in Halal Certification Authority Pty Limited v Scadilone Pty Limited (2014) 107 IPR 23. That was another case in which HCA sought relief for (inter alia) infringement of its Trade Mark. The respondents displayed forged certificates bearing the Trade Mark at retail premises from which they supplied kebabs made from various meat products (including chicken, lamb and beef). In the case of one respondent (Quality Kebabs) it was found to have provided forged certificates to customers to whom it supplied kebabs. Perram J referred to s 120(2) of the Act at [47] and the scope of HCA’s registration at [48], and found at [49]:

There is no doubt that by using the applicant’s mark on the certificates given to its customers Quality Kebabs has used the mark in relation to kebabs. Kebabs are goods, in terms of the language of s 120(2)(d), which are closely related to the service of providing halal certification when they are, as they were in this case, accompanied by an halal certificate.

106    It does not appear from his Honour’s reasons whether or not there was any argument by Quality Kebabs that its kebabs were not goods closely related to the registered services. Nor is it apparent from his Honour’s reasons what it was about the relevant goods that led him to conclude that they were closely related to the registered services except that those goods were “accompanied by a halal certificate”. The decision may be supported on the basis that the products in that case (kebabs made from chicken, lamb or beef) were by their nature closely related to the registered services even though other types of food (eg. fresh fruit and vegetables) may not be. For example, we doubt that bottles of soft drink supplied from the same premises at which a forged certificate was on display could be considered to be goods that are closely related to the registered services.

107    We are not persuaded that the respondents’ products (ie. sweeteners) were closely related to the services in respect of which HCA’s Trade Mark was registered. The infringement case brought under s 120(2)(d) therefore fails.

The proviso to s 120(2)

108    The last point to be made concerning the application of s 120(2) concerns the relevant proviso which provides that a person is not taken to have infringed if they establish that using the sign as they did was not likely to deceive or cause confusion. The primary judge did not make any finding as to the application of the proviso. The respondents have raised it in their notice of contention as follows:

The primary judge ought to have also found that there was no infringement of section 120(2) of the Trade Marks Act 1995 (Cth) by the respondents on the basis that using the Packaging Logo as the respondents did, was not likely to deceive or cause confusion … particularly in light of His Honour’s finding at [149] of his Honour’s reasons that his Honour was “unable to accept that anyone was likely to be misled or confused in respect to HCA or its services by the proven use made of the Packaging Logo”.

109    The finding at [149] of his Honour’s reasons referred to in the notice of contention was made in the context of his Honour’s consideration of various claims made by HCA under the Australian Consumer Law and passing off in relation to which HCA had the onus of proof. It was for the respondents to establish that the use of the Packaging Logo by the respondents was not likely to deceive or cause confusion if they were to succeed in their defence of the case under s 120(2) by reason of the proviso. For reasons previously stated, we think a significant number of consumers would have understood that the respondents’ goods were not only halal, but had been certified as such by Halal Certification Authority Australia. In those circumstances we do not think the respondents can bring themselves within the scope of the proviso.

Ground 2 – Good Faith Exception

110    The following analysis proceeds on the basis, contrary to the conclusion expressed above, that the respondents’ use of the Packaging Logo otherwise amounted to an infringing use within s 120 of the Act.

111    Ground 2 was directed to the primary judge’s finding in relation to s 122(1)(b)(i) of the Act and what his Honour found was the respondents’ good faith use of the Trade Mark. HCA sought to attribute several errors to the primary judge under the rubric of ground 2. First, HCA contended that the primary judge failed to give sufficient weight to the evidence that the appellant never granted permission to Hellay or Techniques to apply the Trade Mark to the respondents’ packaging at any time and that the respondents’ packaging had not been certified as halal. Second, HCA contended that the primary judge failed to distinguish between the appellant’s processes of certifying premises through issuing certificates and approving the use of the Trade Mark on packaging. Third, HCA contended that the primary judge erred in concluding at [58] that “in the case of either a toll or contract manufacturer, any use of a version of the Trade Mark was necessarily used not just by the manufacturer, but by the customer for whom the products were being manufactured”. Fourth, HCA contended that the primary judge failed to give sufficient weight to the respondents’ ongoing use of the Packaging Logo after they had restructured and made representations that they were taking steps to remove the Packaging Logo from its packaging.

Section 122(1)(b)(i) – good faith use

112    The primary judge was satisfied that the respondents genuinely used, and intended to use, the Packaging Logo to indicate that the respondents’ products had the quality and characteristic of being halal and certified as such by HCA. In holding that the respondents were entitled to the benefit of the defence under s 122(1)(b)(i) of the Act, his Honour noted that “… the essential concern going to good faith is that the infringing use be honest”. Other matters relevant as noted by his Honour at [123], include the absence of any “conscious and deliberate acts to undermine the registered owner or the integrity of the trade mark” (Mayne Industries at [105]), the absence of any attempt to undermine the registered trade mark by the assiduous efforts of an infringer (Re Bali Brassiere Co Inc’s Registered Trade Mark and Berlei Ltd’s Application (1968) 118 CLR 128 at 133), and the absence of any “ulterior motive” (Johnson & Johnson at 353).

113    His Honour concluded that if the use made of the Packaging Logo by the respondents had been infringing use, it would nonetheless have been honest use without any conscious or deliberate act to undermine HCA as registered owner of the mark or the integrity of the trade mark itself. His Honour also found that the respondents, through Mr Hanna, genuinely and largely reasonably believed that they were doing nothing wrong because, at all relevant times, he believed that the respondents’ goods were halal.

114    HCA submission was, in effect, that the use of the Packaging Logo by the respondents was inconsistent with the good faith requirement of s 122(1)(b)(i). It submitted that good faith required that the relevant conduct be reasonable or, at least, not unreasonable. In this regard, HCA contended that while mere negligence might not preclude reliance on the good faith defence, a person who was found to have acted unreasonably in using a trade mark should not be afforded the benefit of the defence under s 122(1)(b)(i).

115    HCA did not challenge the primary judge’s finding that the respondents honestly and reasonably believed that their goods were halal. Rather, HCA sought to challenge his Honour’s finding that the respondents had made good the defence under s 122(1)(b)(i) on the grounds that HCA never granted permission to any company or individual to apply the Trade Marks to the packaging of the respondents’ products at any time and that this was a matter to which his Honour gave insufficient weight. HCA also submitted that his Honour failed to give sufficient weight to the evidence that the respondents did not have any contractual relationship with HCA at any time. Before considering these arguments, we should refer again to the history of the relevant dealings between the parties and the toll manufacturers.

116    In the period September 2003 to June 2015, the respondents’ Natvia Products were manufactured by Techniques. Throughout that period Techniques was accredited by HCA to prepare halal goods. The certificates issued to Techniques in the early years did not refer to specific goods. However, the Halal accreditation certificate issued to Techniques by HCA in 2015 expressly identified the relevant goods by the brand name Natvia. Techniques ceased manufacturing the Natvia Products in about June 2015 and Techniques’ accreditation in respect of the Natvia Products was terminated on 22 July 2015 at the request of Techniques.

117    With regard to the period prior to 22 July 2015, there is no evidence to indicate that any of the respondents were advised, directly or indirectly, that any additional accreditation or approval was required in order for the Packaging Logo to be used on the Natvia Products. We do not think there is any reason to doubt that any use of the Packaging Logo prior to 22 July 2015 was use that Mr Hanna honestly and reasonably believed had been approved by HCA by reason of it having approved Techniques’ operations as they pertained to Natvia Products. There is no indication in the evidence that Mr Hanna or any other person associated with the respondents was notified during this period that some additional authorisation from HCA was required before the Packaging Logo could be used on the Natvia products.

118    In May 2015 Hellay commenced manufacturing Natvia Products for the respondents. Hellay did not obtain Halal accreditation from HCA in respect of the Natvia Products until 1 April 2016 when Hellay entered into an agreement with HCA, and HCA issued to Hellay an accreditation certificate that referred to Natvia. Further certificates were issued to Hellay in December 2017 and November 2018, each of which also referred to Natvia. The certificate issued in November 2018 referred to Natvia and, for the first time, the Raw Earth Products which Hellay commenced manufacturing in May 2017.

119    Mr Hanna gave evidence that the failure to obtain certification from HCA for the Natvia products following the termination of the manufacturing arrangements with Techniques and the transition to Hellay was an oversight. The primary judge accepted this evidence, and it was not suggested by HCA that it was not open to his Honour to do so. His Honour also found that Mr Hanna believed that the Natvia Products were certified as halal until it was brought to Mr Hanna’s attention by a retailer in the United Arab Emirates that the Natvia products being manufactured by Hellay were not certified by HCA as halal. His Honour found that when this was brought to Mr Hanna’s attention, the situation was rectified, we infer, by the entry into the April 2016 agreement between Hellay and HCA.

120    So far as the Raw Earth Products are concerned, these were manufactured by Hellay for the respondents from May 2017. No accreditation certificate was issued by HCA in respect of the Raw Earth Products until 20 November 2018 which was after HCA’s solicitor sent the letter of demand dated 3 August 2018 to the respondents. As noted by his Honour, Ms El-Mouelhy gave evidence in which she claimed that the accreditation certificate issued by her on 20 November 2018 had been issued by mistake due to her suffering from “jet lag”. His Honour did not make any express finding in relation to that evidence though he accepted that the certificate issued by Ms El-Mouelhy was amended later the same day to delete any reference to Natvia and Raw Earth.

121    The letter of demand dated 3 August 2018 written by HCA’s solicitor (presumably on the instructions of Mr El-Mouelhy or Ms El-Mouelhy) makes allegations of trade mark infringement against the respondents on the basis that they have reproduced the trade mark on the packaging of their product. It includes various demands for delivery up for destruction of packaging coupled with a demand that they pay to HCA an amount of $500,000. The letter includes no indication as to how that amount was calculated. The respondents did not comply with that or any of HCA’s other demands and on 5 September 2018 HCA commenced the proceeding.

122    It is apparent from Mr Hanna’s evidence that he was not prepared to pay the large sum of money demanded by HCA in the letter of demand. Rather than seek to negotiate at that point, he was hopeful that the parties might resolve their differences at a mediation. That did not happen and steps were taken by the respondents from August 2019 to remove the Packaging Logo from the respondents’ packaging. The clear inference is that Mr Hanna knew from 3 August 2018 that the respondents did not have HCA’s permission to use the Packaging Logo on their products because HCA were refusing to certify that those products were halal.

123    His Honour referred to Mr Hanna’s evidence that it only became clear to the respondents what HCA’s position was on the question of permission to use the Packaging Logo in July 2019. His Honour appears to have inferred that it was around this time that Hellay became aware it was no longer authorised by HCA to prepare either Natvia or Raw Earth Products bearing the Packaging Logo. That appears to have occurred as a result of an email sent by HCA to Hellay on 25 July 2019 which attached a revised certificate and states “[p]lease find enclosed your updated certificate excluding the Flujo products due to a continuous breach of our agreement”. His Honour noted (at [51]) that “a new version of the certificate showed that the ingredients previously included on the certificates issued to Hellay were removed altogether, clearly supporting the inference that those products had not been excluded before them”.

124    The final matter to note is that in October 2018 Techniques recommenced production of the Natvia Products, but did so without any certificate covering those products. HCA conducted an audit of Techniques on 29 April 2019. During the course of the inspection of the Technique premises, Ms El-Mouelhy observed 1.2kg boxes of Natvia products in the storage area which, as depicted in photographs annexed to her affidavit, prominently displayed the Packaging Logo. The size of the Packaging Logo as reproduced on those boxes is substantially larger than on the four individual containers packed in each box. Evidence given by Ms El-Mouelhy indicated that Mr Martin of Techniques understood that it was necessary for the respondents to obtain HCA’s permission to use the Packaging Logo on their products. Mr Hanna’s evidence indicated that he believed that Techniques had obtained the necessary accreditation but his evidence on that topic was rather vague.

125    As we have previously noted, HCA did not challenge the primary judge’s finding that the respondents honestly and reasonably believed that their products were halal. It follows that had they used the Packaging Logo merely to signify that the respondents’ products were halal then they would have been entitled to the benefit of the defence under s 122(1)(b). However, the use of the Packaging Logo was likely to signify to a significant number of consumers not merely that the respondents’ products were halal, but that they were certified as halal by Halal Certification Authority Australia.

126    We would accept that a representation conveyed by a trade mark that a product has been certified by a particular body or authority that goods are of a particular quality may itself be a representation as to a characteristic of the goods. Accordingly, the defence under s 122(1)(b)(i) could be open to a defendant who applies a trade mark to goods so as to indicate that the goods are of a particular quality and have been certified as having that quality by the owner of the mark. But the question that must still be addressed is whether use of the mark for that purpose was in good faith.

127    By the time the letter of demand was received by Mr Hanna on or about 3 August 2018, it seems to us that the respondents could not have had any good faith belief that HCA had certified the relevant goods as halal. While there seems to have been an obvious failure on the part of HCA to clearly and unambiguously communicate its position to the respondents that the goods could not be certified by HCA unless the packaging was approved by HCA, there was no evidence of the respondents having replied to the letter of demand or them having sought to ascertain directly through HCA, or indirectly through Hellay, what it was that led to the issue of the letter of demand. It can be inferred that had the respondents made such inquiries, they would have been informed that they did not have permission to use the Packaging Logo on packaging not approved by HCA and that no such approval had been granted.

128    Of course, the question whether the respondents used their Packaging Logo in good faith to indicate that their goods were of a particular kind or quality, or had a particular characteristic (ie. certified as halal by HCA), is not the same as having a good faith belief that HCA approved of the respondents’ use of the Packaging Logo. However, it is difficult to see how the respondents’ use of the Packaging Logo could be use in good faith in circumstances where HCA had made clear that it did not approve of the respondents’ use of the Packaging Logo on the respondents’ products.

129    In our opinion, the Packaging Logo was used by the respondents up to 3 August 2018 in good faith to indicate that their goods were halal and had been certified as halal by HCA. That changed when the letter of demand was received which at the very least should have indicated to the respondents that HCA did not accept that the respondents were entitled to use the mark for that purpose. We are satisfied that the respondents were entitled to the benefit of the defence under s 122(1)(b)(i) up to 3 August 2018 but not in respect of use occurring after that date. In light of that conclusion, it is not necessary for us to consider the matters raised in particular (d) of the grounds two of the notice of appeal.

Ground 3 and 4 – Cancellation of the trade mark pursuant to s 88(1) and (2)(c) of the Act

130    Grounds 3 and 4 were directed to the primary judge’s finding that the Trade Mark was likely to deceive or cause confusion within the meaning of s 88(2)(c) of the TM Act, by reason of the use of the word “Authority” and his Honour’s order to rectify the register by cancellation of the Trade Mark pursuant to s 88(1) and (2)(c) of the Act.

131    The respondents contended at trial that the use of the Trade Mark was likely to deceive or cause confusion and should be cancelled pursuant to s 88(1) and (2)(c) of the Act. The primary judge held at [162] that the Trade Mark should be cancelled pursuant to those provisions because:

…if a person actually reads the words “Halal Certification Authority Australia”, presented in the form of an official stamp or seal, they would most likely be left with the impression that there was some official, authoritative body that was saying that the goods were in fact halal, as opposed to the specific certification of a private company, [HCA].

132    HCA submitted that the finding made by his Honour at [162] was not open because it was a matter not pleaded, particularised or opened by the respondents. HCA says that his Honour’s finding had its genesis in several questions he asked Senior Counsel for HCA in closing submissions after the evidence was closed.

133    The relevant pleading is the respondents’ amended statement of cross-claim filed on 6 August 2020 approximately three months before the trial commenced. It asserts that the use of the Trade Mark by HCA is likely to deceive or cause confusion. The particulars provided are directed to the three specific matters that were referred to by the respondents in their opening submissions.

134    In its opening submissions to the primary judge the respondents alleged that: (1) the use of the word “Authority” falsely represents that HCA is the only person that provides halal certification services; (2) the use of the Trade Mark falsely represents that HCA is a religious non-for-profit authority; and (3) the use of the Trade Mark falsely represents that the Trade Mark was registered as a certification trade mark. None of these allegations were made good at trial and the respondents do not rely on any of them in the appeal.

135    There were several questions asked of Mr El-Mouelhy in cross-examination that were said by the respondents to be relevant to the point now under consideration. It is convenient to reproduce the part of the transcript in which counsel for the respondents put to Mr El-Mouelhy that there were other organisations with which HCA competed that also used the words “Halal Authority” in their names:

MR CASTELAN: And that’s another competing organisation to provide halal certified .....?---All these ones are competitors, yes.

And you agree that the applicant is a private organisation that works for profit?---100 per cent.

Okay. It’s not a religious organisation?---That’s debatable.

Okay. Now, in terms of the authority that – do you say it has government authority to make findings about whether or not a product is halal?---It’s not a government authority. It’s a knowledge authority.

And where does the authority come from?---From knowledge.

So it doesn’t come from any particular Islamic religious body?---I am the religious body.

Are you an expert, then, on what is halal?---The foremost expert on Halal, not only in this country.

Would you say the foremost expert on halal in the world?---Not in the world, but I’m one of the most knowledgeable people on halal.

Okay. And - - -?---Plus we employ religious people who make decisions.

The applicant employs religious people - - -?---Absolutely.

- - - to make decisions on what is and what is not halal?---Yes.

And that’s not you personally?---I look at – I looked in the past on the technical side.

Okay?---They look at the religious side.

And you’re not authorised by the Australian Government to determine what is halal?---I am authorised by the government to issue halal certificates.

For red meat?---Yes, sir, and it is listed on your list here.

But does that only refer to red meat?---This list is only for red meat.

So it’s not for vegetarian products?---No, but it doesn’t mean that I can’t certify a vegetarian product.

(emphasis added)

136    This passage of evidence traverses a number of topics. When Mr El-Mouelhy was asked whether HCA had government authority to make findings about whether or not a product is halal he said that HCA was “not a government authority” but a “knowledge authority”.

137    The primary judge was provided with an outline of the respondents’ written closing submissions shortly before counsel for the respondents commenced his oral address. Paragraphs 42-43 of that document state:

42.    Firstly, the Trade Mark represents that HCA is the only person that provides halal certification services – Halal Certification Authority. The use of the word “Authority” represents that it is the only body that provides the services. The definition of “Authority”:

(a)    in the online Oxford dictionary:

    A person or organization having political or administrative power and control;

(b)    in the online Collins dictionary:

    An authority is an official organization or government department that has the power to make decisions.

43.    HCA does not have political or administrative power or control over whether products or premises are halal certified. Nor is it the official organization or government department that has the power to make the decisions. Mr El-Mouelhy gave evidence that he was the “Knowledge Authority”. The Trade Mark is likely to confuse or deceive because it is false.

(footnotes omitted)

138    In the respondents’ oral closing submissions, counsel for the respondents made two points in support of the revocation case based on s 88(1) and (2)(c). He said:

MR CASTELAN: …And the first short point we make is that by calling themselves Halal Certification Authority Australia it’s a representation that it is the only authority … that provides these services. That’s misleading. I think it’s accepted that it would be misleading. The only question would be whether or not it could be characterised as making that representation, in my submission. Mr [El- Mouelhy] did emphatically state to the court that he is the knowledge authority, so perhaps he believes he – it is the authority. There are numerous authorities, numerous bodies, that provide these services.

139    The relevant exchange between Senior Counsel for HCA and the primary judge during the course of HCA’s closing submissions in reply was as follows:

MR HALL: Yes. You will see that here he’s supporting an argument that says that ..... there’s a representation involved that we are the sole authority, the sole source of our certification services, and he seeks to support that by use of quotations from definitions in two [dictionaries]. Both are introduced with the article “the”, “the definition”, and ... my learned friend has very carefully selected the words from those definitions that suit him. And it won’t surprise you that in both cases the dictionary defines the word in a number of different senses, separated by numbers. And in each of them there are meanings that are directly consonant with what Mr [El-Mouelhy] said in his evidence. So, for example, in the Collins Online example, the definition that is given is that authority means somebody has authority if:

They have a quality which makes other people take notice of what they say.

And a couple of lines later:

Someone who is an authority on a particular subject knows a lot about it.

HIS HONOUR: But that’s not the sense in which authority is being used in this name. It’s not that you are an authority; it’s that you are authority in the sense of being an organisation or body. It’s a funny – it’s a funny use of the term authority.

MR HALL: Yes.

HIS HONOUR: One would ordinarily read “authority” as reflecting perhaps a government organisation or something of that nature.

MR HALL: No your Honour, you would not…

HIS HONOUR: Well, that’s – my most – my most common encountering of the term authority, in ordinary parlance, and how I apprehend it, this is for arguments sake, how I apprehend how someone might read it, is that it’s talking about, you know, not quite National Crime Authority but that sort of thing. That it’s a body that has a particular status.

MR HALL: I will accept that much, your Honour, but the particular status can be one of several, as the dictionaries make very clear. It can be an official status, or it can be a status that is required by knowledge and by having the – the quality that other people take notice of what you say on the topic. But here, of course, in the trademark the primary use of clarity is denotative rather than connotative. It’s identifying a body with that name, but to the effect – extend that it has a connotative effect what we’re saying is we are people who are able who are able, and are recognised as being able, to say what is halal and what is not. And Mr [El- Mouelhy’s] evidence was entirely in line with that. And that is squarely within the central definition of the word authority and it is mischievous to suggest otherwise in the way that it has been suggested in paragraph 42.

HIS HONOUR: Well I will certainly go to look at the definitions and see which [sense is] most apposite.

MR HALL: And your Honour also noted, no doubt, that both of the kosher and of the halal marks that put forward by Mr – sorry, Mr Franklin in his evidence, a very large number make similar use of similar words, not always the same words, and again I respectfully submit that to the extent that that is connotative and not denotative, it is promoting the fact that they are persons or bodies recognised by the Islamic community or by Islamic custom as having this right. And accept, as we will, dealt now from the evidence in the very limited case of this ... there is no requirement and no expectation that somebody will have a government stamp to do this. What is required is that they have the necessary skills, knowledge and standing in the community to do it. And that is what authority is meaning in this sense.

140    The primary judge gave the parties leave to file additional written submissions including transcript references. The respondents filed a revised version of their written closing submissions that were not relevantly different from those provided to his Honour on the last day of the hearing. HCA filed a document entitled “Applicant’s note of evidence references”. HCA’s note includes the following entry:

As to the respondents’ argument that the HCA trade mark represents that HCA is the only person that provides halal certification services:

-The evidence does not support a finding that the word “Authority” within the HCA trade mark represents that HCA is the only body that provides halal certification services.

-The evidence does not support a finding that the word “Authority” within the HCA trade mark represents that HCA is a government body established to provide such services.

-There is no evidence of actual deception or confusion in relation to the use of the word “Authority” within the trade mark.

See DF-04 (CB996-998), DF-05 (CB999-1004), Ex 4R, MEM-7 (CB 214-217) all showing multiple organisations using ‘authority’ ‘council’ ‘accreditation’ and similar words or phrases. The Trade Marks Register discloses many similar examples of marks including ‘authority’ used in a similar way.

141    It is apparent that there was a shift in the way in which the respondents put their case under s 88(1) and (2)(c) based on the word “Authority” in the registered mark. As opened, the case was that the word implied that the HCA was the only person that provided halal certification services and that this was false because other organisations also provided such services. However, in support of that case, the argument advanced by the respondents took a slightly different turn, suggesting that the reason that the Trade Mark conveys that representation is because it signifies that HCA is the Authority with respect to halal certification in the sense that it is the official or governmental body providing those services. The question is whether it was open to the respondents to put their case in that way.

142    The respondents did not contend that the point decided in their favour was pleaded. Their answer to HCA’s challenge to his Honour’s decision on this point was that the parties acquiesced in a departure from the respondents’ pleaded case and that it was therefore open to the primary judge to decide the case based on s 88(2)(c) in the way his Honour did. They submitted that his Honour’s decision on the point was within the bounds of the litigated dispute and that the appellant should not be allowed to “hark back to the pleadings and treat them as governing the area of contest”. They referred in support of their submission to the well-known statement of Issacs and Rich JJ in Gould v Mount Oxide Mines Ltd (In Liq) (1916) 22 CLR 490 at 517:

Undoubtedly, as a general rule of fair play, and one resting on the fundamental principle that no man ought to be put to loss without having a proper opportunity of meeting the case against him, pleadings should state with sufficient clearness the case of the party whose averments they are. That is their function. Their function is discharged when the case is presented with reasonable clearness. Any want of clearness can be cured by amendment or particulars. But pleadings are only a means to an end, and if the parties in fighting their legal battles choose to restrict, them, or to enlarge them, or to disregard them and meet each other on issues fairly fought out, it is impossible for either of them to hark back to the pleadings and treat them as governing the area of contest.

143    In Vale v Sutherland (2009) 237 CLR 638 at [41] the High Court cited with approval the following statement by Dawson J in Banque Commerciale SA (in liq) v Akhil Holdings Ltd (1990) 169 CLR 279 at 296-297:

But modern pleadings have never imposed so rigid a framework that if evidence which raises fresh issues is admitted without objection at trial, the case is to be decided upon a basis which does not embrace the real controversy between the parties … cases are determined on the evidence, not the pleadings.

See also Betfair Pty Ltd v Racing New South Wales and Another (2010) 189 FCR 356 at [51] (per Keane CJ, Lander and Buchanan JJ).

144    The respondents’ submission to the primary judge that the Trade Mark suggests that HCA is a government body providing halal certification services was an elaboration of its case that HCA was the Authority that provides halal certification services. The submission that the registered mark implied that HCA was the government body responsible for halal certification was responded to by HCA in both its submissions in reply and its note. No objection to the submission made by the respondents was raised by HCA based on the pleading or particulars. Rather, HCA submitted that the evidence did not support a finding that the word “Authority” as used in the Trade Mark represented that HCA is a government body established to provide such services. It also made the point that there was no evidence of any relevant deception or confusion. In our opinion, HCA engaged fully with the respondents’ submission and the primary judge’s questions in the knowledge that his Honour would rule on the point. We regard this as a case in which the legal battle between the parties, although going beyond the relevant particulars in the respondents’ cross-claim and opening, was fairly contested.

145    HCA submitted that, even if it was open to the primary judge to cancel the mark under s 88(1) and (2)(c), his Honour’s decision to do so was affected by a number of errors.

146    It was submitted that the primary judge failed to have regard to the existence of a number of other organisations engaged in halal certification that use the word “Authority” in their name. HCA submitted that the statement by the primary judge in the penultimate sentence of [157] of his Honour’s reasons disclosed error because there were, in the list of 25 organisations recognised by the Commonwealth Department of Agriculture and Water Resources for the halal certification of meat (the list in evidence was current as at 21 February 2020), a number of such organisations that use the word “Authority” in their corporate or business name, namely, Australian Halal Authority and Advisers and Western Australia Halal Authority.

147    On one reading, the penultimate sentence of [157] of his Honour’s reasons merely records a submission made by the respondents. Certainly, it is an observation interposed between two sentences that are recording submissions made by the respondents. However, the respondents did not submit, in their submissions on the appeal, that they had made any such submission to the primary judge and the fact that no such submission was made by them to his Honour is confirmed by our own reading of the written submissions and transcript. Accordingly, it appears to us that the penultimate sentence of [157] may reflect a mistaken reading of the relevant document.

148    HCA submitted that the error in [157] went to the heart of his Honour’s consideration of whether or not the use of the Trade Mark was likely to deceive or cause confusion within the meaning of s 88(2)(c) of the Act. However, it is apparent from his Honour’s reasons at [158]-162] that he was most influenced by the way in which the Trade Mark had been used by HCA which, he found, suggested that HCA had sought to convey not merely that it was, in Mr El-Mouelhy’s words, a “knowledge authority” but that it was a body having an official status or role as a certifier of halal products.

149    His Honour had regard to the manner in which HCA used the Trade Mark on the various certificates it issued to Techniques and Hellay. Features of that use include those inherent in the Trade Mark itself such as the use of the words Halal Certification Authority Australia, which differ from HCA’s corporate name by the inclusion of the word “Australia” and the absence of any indication that Halal Certification Authority Australia is a private company. His Honour also had regard to the overall appearance of the Trade Mark which was in the form of an official stamp or seal. It was the combination of the intrinsic features of the Trade Mark and the manner in which it had been used by HCA, including on its certificates that led his Honour to conclude that the use of the Trade Mark was likely to deceive or cause confusion.

150    We do not accept that the error identified by HCA made any material contribution to his Honour’s conclusion. It is apparent from his Honour’s reasons on this topic when read as a whole that his view was informed by a consideration of the inherent features of the Trade Mark and the manner in which it had been used both on certificates and goods. The fact that a number of other organisations use the word Authority in their corporate or business name does not diminish the weight to be afforded to the primary judge’s evaluation of a matter that depended on an essentially impressionistic assessment of the likely impact that the Trade Mark would have on consumers.

151    We consider that it was open to the primary judge to find that the use of the Trade Mark was likely to convey the impression that the Trade Mark constituted the official seal or stamp of approval of some official or authoritative body certifying that the goods on which the Trade Mark appeared were halal. “Likely” in this context requires that there be a real and tangible danger of deception or confusion occurring: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595. We consider that his Honour’s finding was not merely open, but also correct.

152    HCA submitted that if the Trade Mark conveyed a representation that its owner was an official or authorised authority having some official status or role as a certifier of halal products then that representation was true. It submitted that in finding to the contrary, the primary judge failed to give sufficient weight to the evidence before his Honour that HCA is recognised by the Commonwealth of Australia and several overseas governments for halal certification.

153    HCA also submitted that his Honour failed to consider the statutory significance of the HCA’s status as the holder of an “Approved Arrangement” with the Commonwealth Department of Agriculture and Water Resources (“the Department”), including by reference to the Export Control Act 1982 (Cth), the Export Control (Orders) Regulations 1982 (Cth), the Export Control (Meat and Meat Products) Orders 2005 (Cth), the Export Control Act 2020 (Cth) and the Export Control (Meat and Meat Products) Rules 2021 (Cth).

154    HCA’s status as the holder of an “Approved Arrangement” for the certification of halal meat for export was said by HCA to be significant because only Australian Government approved Islamic organisations may (jointly with the Secretary of the Department) certify halal meat and meat products for export. HCA submitted that a detailed legislative and regulatory framework underpins the grant of “Approved Arrangement” status.

155    The relevant statutory provisions include ss 62 and 63 of the Export Control Act 2020 (Cth) and rules made pursuant to those provisions in the Export Control (Meat and Meat Products) Rules 2021 (Cth). Those rules provide for the issue of Halal certificates (see r 2-12) in relation to halal meat that is to be exported to certain countries. Halal certificates are issued jointly by the Secretary and a relevant Islamic organisation (see r 2.13(1)). Rules 2.11 – 2.13 provide:

2-11    When government certificate may be issued in relation to meat or meat products

For the purposes of subsections 62(1) and (2) of the Act, a government certificate may be issued in relation to meat or meat products that are to be, or that have been, exported.

2-12    Halal certificates

    For the purposes of subsections 62(1) and (2) of the Act, a Halal certificate may be issued in relation to Halal meat that is to be exported to a country if:

(a)    the relevant importing country authority requires a Halal certificate in relation to Halal meat that is to be imported into that country from Australian territory; or

(b)    the exporter of the Halal meat requires a Halal certificate for the Halal meat.

Note:    For Halal certificate, see section 1-5.

2-13    Issuing bodies for Halal certificates

(1)    For the purposes of section 63 of the Act, the following are jointly an issuing body for a Halal certificate:

(a)    a relevant Islamic organisation;

(b)    the Secretary.

(2)    For the purposes of subsection (1), an Islamic organisation is a relevant Islamic organisation if:

(a)    the organisation is the holder of an approved arrangement for Halal meat certification operations; and

(b)    an approved arrangement for operations to prepare Halal meat for export at a registered establishment provides that the organisation may issue a Halal certificate in relation to Halal meat prepared for export at the establishment.

Halal certificate is defined as follows:

Halal certificate means a government certificate that:

(a)    is jointly issued in relation to prescribed meat or meat products by an Islamic organisation and the Secretary; and

(b)    certifies that the meat or meat products:

(i)    are Halal meat; and

(ii)    have maintained their integrity as Halal meat.

Note 1:    For an Islamic organisation to issue Halal certificates jointly with the Secretary:

(a)    the organisation must be the holder of an approved arrangement for Halal meat certification operations; and

(b)    an approved arrangement for operations to prepare Halal meat for export at a registered establishment must provide that the organisation may issue a Halal certificate in relation to Halal meat prepared for export at the establishment (see section 2-13).

Note 2:    See also item 2 of the table in section 2-4, and section 2-12, in relation to Halal certificates.

156    The evidence shows that the Department maintains a publicly available list of Islamic organisations which it has approved for the certification of red meat products. HCA is included on that list. The entry for HCA also indicates that it satisfies the listing requirements of various countries including Malaysia, Saudi Arabia, United Arab Emirates, Qatar, Kingdom of Bahrain, Egypt and other markets that require a halal certificate for red meat. Other organisations in the list identified as approved certifiers include Australian Halal Authority and Advisers, Global Australian Halal Certification Pty Ltd and Western Australia Halal Authority.

157    There was other evidence which was relied on by HCA as showing that it had an official status or role in the certification of halal products. HCA is registered as a halal certifier by the Emirates Authority for Standardization & Metrology which is the authorised halal certification body of the United Arab Emirates. It is also a recognised foreign halal certification body and authority of the Department of Islamic Development Malaysia, and a member of the World Halal Council, a worldwide federation of halal certifying bodies.

158    What is clear from the relevant statutory provisions is that Halal certificates are issued pursuant to the statutory scheme in respect of red meat and red meat products jointly by a relevant Islamic organisation and the Secretary. While it may be correct to say that HCA has an official status or role in the certification of halal products, that official status or role is closely prescribed and applies only to red meat and meat products.

159    It is not necessary to decide whether the use of the Trade Mark by HCA in relation to red meat and meat products would be likely to deceive or cause confusion. The evidence established that HCA uses its Trade Mark in relation to a wide range of goods that are outside the statutory scheme governing the issue of Halal certificates for red meat and meat products. In our opinion, the use of the Trade Mark in relation to the halal certification by HCA of non-meat products is likely to deceive or cause confusion. At the very least, it will cause a significant number of consumers to wonder whether the Trade Mark is that of an official or authoritative body authorised by government (whether by statute, regulation or otherwise) to certify as halal non-meat products. The existence of the statutory scheme with respect to red meat and meat products does not negative or diminish the misleading impression likely to be conveyed by the Trade Mark when used in relation to the certification of other food products.

Ground 5 and 6 – Cancellation of the trade mark pursuant to s 88(1) and (2)(a) of the Act by reason of s 41(2) of the Act

160    Grounds 5 and 6 were directed to the primary judge’s finding that the Trade Mark was not capable of distinguishing the appellant’s services from the services of other persons within the meaning of s 41(2) of the Act and his Honour’s order to rectify the register by cancellation of the Trade Mark pursuant to s 88(1) and (2)(a) of the Act.

161    HCA sought to attribute several errors to the primary judge under the rubric of ground 5. First, it was contended that the primary judge erroneously conflated the terms “capable of distinguishing” as used in s 41(2) of the Act and “inherently adapted to distinguish” as used in s 41(3), (5) and (6) of the Act by using the expression “not inherently capable of distinguishing”. Second, HCA contended that the primary judge failed to consider whether other traders “actuated only by proper motives” would desire to use the Trade Mark or some other mark closely resembling it. The appellant argued that the primary judge erred by focusing on particular elements of the Trade Mark rather than the Trade Mark as a whole and by placing excessive reliance on an earlier decision of a Delegate of the Commissioner of Trade Marks who found that the words “Halal Certification Authority Australia” (without any device) were purely descriptive. Third, HCA contended that the primary judge erred in giving undue weight to the presence of the word “Authority” in the Trade Mark. Fourth, HCA contended that the primary judge failed to give due consideration to the “applicant’s goods or services in respect of which the trade mark is sought to be registered” in applying the statutory requirements of s 41(2) of the Act.

162    Given the conclusion we have reached with respect to the challenge to the primary judge’s finding under s 88(2)(c) of the Act, it is not necessary for us to consider the challenge to his Honour’s findings under s 41 of the Act to the effect that the Trade Mark is liable to be removed from the Register because it lacks distinctiveness as required by s 41 of the Act. However, for completeness we will deal with HCA’s submissions on this ground of appeal. The question is whether the Trade Mark was, at the date of application for registration, capable of distinguishing the Halal certification services provided by the owner of the Trade Mark from the services of other traders providing Halal certification services. His Honour concluded that it was not, and we are not persuaded that his Honour’s conclusion was wrong.

163    We do not accept HCA’s submission that the primary judge conflated the statutory language. His Honour’s conclusion at [185], reiterated at [186], indicates that the question addressed by his Honour was whether the Trade Mark was capable of distinguishing the service provided by HCA from a like service provided by anyone else. In arriving at that conclusion his Honour had regard, as required by s 41(3), to the extent to which the Trade Mark was inherently adapted to distinguish. His Honour’s reasons do not disclose any error in the application of the statutory language. Nor do we accept that the primary judge failed to have regard to the Trade Mark as a whole or that he placed excessive weight on any of its individual components including the word “Authority”. It is clear from his reasons that he had regard to the combination of elements that make up the Trade Mark as a whole and his conclusion on the issue of capacity to distinguish makes this clear.

164    Most cases in which the question of capacity to distinguish has been an issue involve word marks consisting of ordinary English words or phrases that are descriptive of the relevant goods or services. But the issue may also arise in cases involving figurative marks in which the relevant sign consists of, or includes, a device which may itself be descriptive of the relevant goods or services or otherwise incapable of distinguishing the goods or services of the owner of the mark from those of other traders.

165    A device may be refused registration on the ground that it lacks distinctiveness if it is descriptive of the goods or services in respect of which it is sought to be registered. A decision to refuse registration of a device consisting of representations of a chain and sprocket separated by a blank space in respect of chains and wheels was upheld by the English Court of Appeal in Renold Chains Limited’s Application [1966] RPC 487; see also the decision of Mr Tookey QC in Pantino Inc’s Application [1966] RPC 527 upholding the Registrar’s refusal to register a trade mark consisting of a sketch of a female figure in blouse and slacks in respect of clothing. Similarly, in Blount Inc v Registrar of Trade Marks [1998] FCA 440; 40 IPR 498 at 507 (Branson J) the use of upper-case letters and an oval device surrounding the word “Oregon” were not sufficient, by themselves, to give the word within the mark inherent adaptability to distinguish.

166    In Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2013] FSR 29, [2012] EWHC 3074 (Ch) Arnold J held that a figurative mark comprising the word “now” in lower case letters with six fine lines arranged in a star or sun shape emanating from the letter “o” was “devoid of distinctive character” and thus unregistrable as a community trade mark by virtue of Art 7(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (since repealed; see now Art 7(1)(b) Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark). His Lordship referred at [97] of his reasons to a number of other examples of figurative marks that had been held unregistrable under Art 7(1)(b) for lack of distinctiveness. Those decisions provide examples of trade marks that conveyed a descriptive message even though the descriptive words used had been combined with figurative elements, because those figurative elements did not make any significant contribution to the descriptive message conveyed by the word component of the sign, or to the distinctiveness of the sign as a whole. See also Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft (1965) 120 CLR 285 at 293 (Kitto J).

167    With regard to the Arabic lettering in the Trade Mark, the majority (French CJ, Hayne, Crennan and Kiefel JJ) observed in Cantarella Bros at [48]:

These authorities show that it is not the meaning of a foreign word as translated which is critical, although it might be relevant. What is critical is the meaning conveyed by a foreign word to those who will be concerned with the relevant goods.

Their Honours also said at [71]:

…[I]f the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it.

(footnote omitted)

168    In our view the Arabic lettering is likely to convey to many people within the target audience the meaning of Halal or, translated into English, allowed or permitted in accordance with Islamic rites.

169    Both the English and Arabic in the Trade Mark refer directly to a relevant characteristic of the goods to which the Trade Mark is applied and the certification services provided by the owner of the Trade Mark in respect of such goods and services. The other component of the Trade Mark, which his Honour correctly described as a non-distinctive annulus of a kind in common use, does not either alone or in combination with the other elements contribute significantly to the distinctiveness of the Trade Mark as a whole. It seems to us that other traders acting honestly and not actuated by any improper motive, may well desire to use both the English and Arabic words in the stylised form of an annulus of the Trade Mark to indicate that the goods had been certified as Halal by that person.

Ground 7 – Discretion not to rectify the Register

170    Ground 7 was directed to his Honour’s finding not to exercise his discretion not to grant the application for rectification of the Register by cancellation of the Trade Mark pursuant to s 88 or 89 of the Act. HCA contends that his Honour’s exercise of the discretion to cancel the Trade Mark was affected by a number of errors and that his Honour should have decided not to make any order for cancellation.

171    According to HCA’s notice of appeal, the first of the errors concerned the meaning that his Honour gave to the word “Authority” as used in the Trade Mark. This was a matter directly relevant to the question of whether the use of the Trade Mark was likely to deceive or cause confusion within the meaning of s 88(2)(c) of the Act. For reasons previously explained, we agree with his Honour’s finding on that matter. It is not necessary to revisit that issue in the context of his Honour’s exercise of discretion.

172    The other matters on which HCA relied in relation to his Honour’s exercise of discretion were concerned with what HCA alleged was his Honour’s failure to have proper regard to matters prescribed by reg 8.2 of the Regulations, which by reason of s 89(2) of the Act, are mandatory considerations under s 89(1) of the Act.

173    The particular matters that HCA relied on before the primary judge as relevant to the exercise of the discretion were said by HCA to be as follows:

(a)    The manner in which HCA has used the Registered Trade Mark in the past has been in the public interest both in relation to activities within Australia and in relation to the production of goods by third parties for export from Australia.

(b)    The Registered Trade Mark has a substantial reputation in Australia, having been used in relation to HCA’s business over an extended period with thousands of certificates bearing the Registered Trade Mark having been issued to HCA’s clients.

(c)    The interest of consumers favours the Registered Trade Mark remaining on the Register. There is a risk that, were the Registered Trade Mark to be removed from the register, unscrupulous traders might employ the mark in a manner giving rise to deception or confusion.

(d)    The interest of HCA, as the owner of the mark, favours the Registered Trade Mark remaining on the Register.

174    Although the primary judge does not refer in terms to reg 8.2 in his reasons, it appears to us that his Honour has given consideration to each of the matters relied on by HCA before his Honour in support of its contention that the Trade Mark should not be cancelled.

175    The matters relied upon by HCA were closely considered by the primary judge at [193]-[197] of his reasons. In particular, his Honour considered at [194] the public interest and what was said to be the recognition of HCA by the Australian Government and by governments and other overseas entities and what was said to be the important role of the Trade Mark in ensuring compliance with religious and technical requirements, enabling (inter alia) consumers to identify halal products.

176    His Honour noted the matters relevant to HCA’s reputation and goodwill at [196] where his Honour refers to (inter alia) the number of HCA’s clients in Australia and overseas and the number of applications received for halal certification each year. His Honour also noted at [197] that, in his view, none of the matters relied on by HCA necessarily depended on the continuation of registration of the Trade Mark but that, to the extent they did, they did not provide a sufficient public interest for not ordering the cancellation of the mark.

177    In this Court HCA submitted:

Contrary to his Honour’s findings, the removal of the Trade Mark from the register will directly undermine HCA’s ability to prevent unscrupulous traders from employing the mark in a manner giving rise to deception or confusion, by applying the mark to products that have not been tested or certified by HCA. This will necessarily adversely affect the interests of consumers and HCA. The primary judge erred in his findings to the contrary, and in failing to decide not to grant the application for rectification pursuant to s88 and 89 of the TM Act.

178    While it is clear that HCA will, if the Trade Mark is cancelled, not enjoy the statutory monopoly conferred by the Act, it is apparent that his Honour considered that it would still be open to HCA to obtain registration of a different trade mark, the use of which was not likely to deceive or cause confusion. To the extent that it was suggested in HCA’s submissions that it would not be open to HCA to use a different mark or to prevent unscrupulous traders from using the existing Trade Mark in a false or misleading way, we are not persuaded that either of those propositions is correct. It would remain open to HCA to take action against unscrupulous traders falsely representing that their goods or services had been certified as halal by HCA by taking action under the Australian Consumer Law. We also reject HCA’s submission that his Honour failed to take into account the public interest matters to which we have referred or the private interests of HCA, which were matters also directly addressed by his Honour at [196] of the reasons.

179    HCA also challenged the primary judge’s finding that HCA was guilty of blameworthy conduct that contributed to the likelihood that the use of the Trade Mark would give rise to deception or confusion. The particular matter relied on by the primary judge in support of that finding was the decision by HCA to use only part of its corporate name in the Trade Mark which his Honour found increased the risk of deception or confusion occurring. That conclusion was based on inferences that his Honour was in our view entitled to draw and which we would also draw. The failure to refer to HCA’s status as a proprietary company would encourage consumers to mistakenly believe that HCA was something other than a private company and that it enjoyed some official status with respect to all of the goods or services in respect of which the Trade Mark might be used.

180    The primary judge was not satisfied on the material before him that sufficient reasons appeared for not cancelling the Trade Mark: see Anchorage Capital Partners Pty Limited v ACPA Pty Ltd (2018) 259 FCR 514 (Nicholas, Yates and Beach JJ) at [146]-[148] and Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd (2018) 129 IPR 482 (Burley J) at [244]. We are not persuaded that his Honour’s exercise of discretion to cancel the Trade Mark was affected by any material error.

Ground 8 – Costs

181    Ground 8 of the notice of appeal is directed to the costs orders made by his Honour which are said to have been made in error. No particulars of the error are included in either HCA’s notice of appeal or its written submissions.

182    At the conclusion of the hearing of the appeal, Senior Counsel for HCA indicated that there may be matters relating to costs on which the parties would wish to be heard. He also stated that in the event that either party was only partially successful, then there were matters that the Court may wish to have drawn to its attention. What these matters might be was not disclosed.

183    In circumstances where HCA’s appeal is to be dismissed, we do not see any reason based on the outcome of the appeal which would warrant us disturbing the costs order made by the primary judge.

184    Although HCA has succeeded before us on two issues (ie. trade mark use and, to a limited extent, the s 122(1)(b)(i) defence), the respondents have been successful both in relation to HCA’s application alleging infringement of the Trade Mark and the respondents’ cross-claim seeking orders for cancellation of the Trade Mark. We do not think any more specific consideration of the parties’ success on individual issues is warranted.

185    In our view, given that the appeal is to be dismissed, the appropriate order for costs of the appeal is that they be paid by HCA. This reflects the usual approach in which costs follow the outcome of the appeal: see Firebird Global Master Fund II Ltd v Republic of Nauru (No 2) (2015) 90 ALJR 270 at [6]. However, against the possibility that there is some particular matter that a party wishes to bring to the Court’s attention on the question of costs (for example, a relevant offer of compromise) we will give each party liberty to apply for a variation of the costs order we propose to make. Any application to vary the costs order must be made within 14 days.

DISPOSITION

186    For the reasons set out above we have found:

(a)    That HCA has established error on the part of the primary judge in his conclusion that there was no trade mark use within s 120 of the Act, but failed to establish error in the primary judge’s conclusion that the trade mark use was not in respect of the services for which the Trade Mark was registered, or such goods or services closely related to such services as required by either s120(1) or s120(2), with the consequence that the respondents did not contravene s 120 (ground 1);

(b)    The primary judge did not err in finding that the good faith exception to infringement under s 122(1)(b)(i) of the Act would have applied for the period up until 3 August 2018 (if infringement had been established under s 120), although we respectfully disagree with his conclusion as to its potential applicability after that date (ground 2);

(c)    HCA failed to establish that the primary judge erred in finding that the Trade Mark was liable to be cancelled because it was likely to deceive or cause confusion within the meaning of s 88(2)(c) of the Act (grounds 3 and 4);

(d)    HCA failed to establish error on the part of the primary judge in the conclusion that the Trade Mark was liable to be cancelled under 88(2)(a) of the Act because it lacked distinctiveness in the sense required by s 41(2) of the Act (ground 5 and 6);

(e)    HCA failed to establish error on the part of the primary judge in the exercise of the discretion not to remove the Trade Mark from the register under s 88(1) and 89 of the Act (ground 7); and

(f)    HCA failed to establish error on the part of the primary judge on the question of costs (ground 8).

187    The orders of the Court will be as follows:

(1)    The appeal be dismissed.

(2)    HCA pay the respondents’ costs of the appeal.

(3)    Each party has liberty to make an application for a variation of order 2 by giving notice in writing of a different costs order sought and the matters to be relied on in support of the application within 14 days.

In the event any notice is given in accordance with order 3 then the Court will, if it considers it appropriate, make further directions for the filing of written submissions in relation to the application.

Associate:

Dated:    2 November 2023

Annexure A

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