Bickford’s Australia Pty Ltd v Tata Sons Limited [2013] ATMO 100


This decision concerned two applications heard concurrently, the first being an action under section 52 (for opposition to the registration of a mark) and section 92 (for removal of a mark for non-use) of the Trade Marks Act 1995. The s 52 proceedings were related to the trade mark application over the mark TATA WATER PLUS, in respect of classes 16 and 32 goods, being broadly mineral water and other non-alcoholic beverages.

The section 92 proceedings related to the marks WATER PLUS and WATER+. These marks were registered in respect of class 32 water, mineral water and similar beverage products.

In essence, the Opponent opposed a trade mark application, and concurrently the trade mark Applicant sought to remove the Opponent’s mark for the register (that registration being the basis of the opposition proceedings).

In respect of the Opposition matter, the Delegate noted that the proposed mark was identical to the Opponent’s mark with an additional word element (TATA). However, the delegate noted that “a mark wholly contained within another will not necessarily lead to a conclusion of deceptive similarity”. In this respect the Delegate stated that words that are non-distinctive might be “discounted to a certain extent because they serve only a descriptive function”. The word TATA is not one such word, it was argued, as it did not have a meaning and was likely to be taken as an invented word or a name. However, ultimately the Delegate disagreed and found that on the whole they would likely be deceptive similarity between the marks.

The aim of the removal proceedings was obviously to remove the mark that was to be cited against the application in the Opposition matter. However the Delegate noted the authorities on opposition proceedings which state that the relevant date to be considered in the opposition is the date of the filing of the application, and the state of the Register as at that date. This meant that of course no matter the outcome of the removal application, the Opponents mark could still be used to prevent this application.

Insofar as the removal application concerned non-use of the registered mark, the Opponent was able to establish in evidence sales of its product to the supermarket retailer IGA. However the Applicant led evidence of a private investigator who was not able to locate any such products of the Opponent for sale. The Delegate weighed up the evidence to consider whether this case involved an instance of a single sale that was not significant enough to meet the evidentiary threshold to show a good faith use, and rebut the removal application. The delegates found that:

  • she could not infer (against the opponent) the sales were not for a genuine commercial purpose and not in good faith, and
  • the sale was sufficient to constitute use within the relevant period.

As such the removal application was refused and the opposition was successful.

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