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.