The key facts as agreed or established by the evidence
23 On 8 June 2004, HCA:
(a) changed its name from Halal Certification Services Pty Ltd to Halal Certification Authority Pty Ltd;
(b) filed an application for registration of the Trade Mark; and
(c) applied for registration of the words "Halal Certification Authority Australia".
24 The application for registration of the Trade Mark was subsequently granted with effect from the filing date, by reference to classes 42 and 45 of the Trade Marks Regulations 1995 (Cth) sch 1 pt 2 - Classes of services, which refer to:
(a) class 42: "Scientific and technical services; issuing halal certification to businesses and individuals for goods and services if religious and technical requirements are met"; and
(b) class 45: "Personal and social services rendered by others to meet the needs of individuals".
25 The application for registration of the words "Halal Certification Authority Australia" was refused. The trade mark examiner's report in relation to that application included the following:
(a) in the section titled "My reasons for not accepting your application":
Your trade mark consists of the words HALAL CERTIFICATION AUTHORITY AUSTRALIA.
This indicates that you provide HALAL CERTIFICATION services within AUSTRALIA.
Other traders should be able to use HALAL CERTIFICATION AUTHORITY AUSTRALIA in connection with goods or services similar to yours.
(b) in the section titled "The action you can consider" (emphasis in original):
As the trade mark is completely descriptive you will need to provide overwhelming evidence for this trade mark to be considered for acceptance. The evidence will need to show that the ordinary meaning of the word/s has been overshadowed in the marketplace by its significance as your trade mark.
26 The application for registration of the words "Halal Certification Authority Australia" was apparently not taken any further, and automatically lapsed on 12 January 2006, being 15 months from the date of the examiner's adverse report.
27 HCA's clients from time to time included companies that manufacture products that are distributed and sold by other companies. That is the situation in this case. In her affidavit of 13 September 2019, Ms El-Mouelhy described such companies as contract manufacturers. She referred to Techniques Incorporated Pty Ltd and Hellay Australia Pty Ltd, who manufactured the products in issue in this proceeding, as examples of contract manufacturers.
28 While Ms El-Mouelhy did not specifically refer to either Techniques or Hellay as being toll manufacturers, the affidavit evidence of Mr Hanna further referred to Techniques and Hellay as being contract manufacturers who produced Natvia products on a toll manufacturing basis. For the purposes of this matter, nothing much turns on the distinction, albeit somewhat fluid, that can be drawn between contract manufacturers and toll manufacturers. Mr Hanna's evidence sets out that toll manufacturers do not ordinarily supply raw materials or even packaging when manufacturing products for a customer. As a matter of logic, therefore, under such arrangements toll manufacturers have less input into the appearance of the final product because, on the evidence, the packaging is provided by the customer rather than being provided by the manufacturer. That was the situation in this case. Importantly, toll or contract manufacturers are not retailers, and do not produce public-facing products of their own.
29 Techniques produced the Natvia Products on a toll manufacturing basis, with Stevia (formerly Natvia) sourcing all ingredients and packaging. Techniques blended the ingredients in accordance with the formulation and packaged the product into finished goods at their site. The finished product was delivered to Flujo Group's warehouse ready for distribution. The first retail sales of the Natvia Products were in October 2009.
30 In a closing note in the nature of a submission on the evidence, HCA presented an outline of the history of the application of the Packaging Logo to Natvia Products and Raw Earth Products revealed by the evidence and defence pleadings, as follows:
(a) from 2009 until July 2015 and from October 2018 until the present, Techniques has manufactured Natvia Products;
(b) from around May 2015 until at least November 2020, Hellay manufactured Natvia Products;
(c) from around March 2017 until at least November 2020, Hellay manufactured Raw Earth products;
(d) since at least 2010, Stevia has caused Natvia Products in Australia bearing the Packaging Logo to be advertised, promoted, exhibited, offered for sale, distributed and sold in Australia;
(e) since at least 1 August 2018, Raw Earth has caused Raw Earth Products in Australia bearing the Packaging Logo to be advertised, promoted, exhibited, offered for sale, distributed and sold in Australia;
(f) since at least August 2019, Natvia IP has caused Natvia Products in Australia bearing the Packaging Logo to be advertised, promoted, exhibited, offered for sale, distributed and sold in Australia;
(g) the name of Flujo Sanguineo has been printed on the packaging of the Natvia Products (as the trade mark holder), and at times was the only legal entity named on the packaging;
(h) the respondents undertook the design and prepared the content of product packaging save in relation to the technical information included within the "Nutrition Information" panel;
(i) the respondents undertook the printing and preparation of the product packaging which was then provided to the contract manufacturers.
31 While the above chronology is helpful, there are other relevant historical details as to the manufacturing process and how Flujo Group came to use the Packaging Logo. These are especially relevant to the good faith exception relied upon by the respondents in s 122(1)(b)(i) of the Trade Marks Act, but also to the question of rectification of the register by cancellation of the Trade Mark as raised by the cross-claim. The additional relevant history follows.
32 On 3 September 2003, HCA entered into the first of a number of agreements with Techniques whereby, under its former name Halal Certification Services Pty Ltd, it relevantly agreed to provide halal certification and to allow for the use of its logo to evidence that certification. On that date, being prior to the application for registration of the Trade Mark on 8 June 2004, HCA sent a letter to Techniques enclosing a copy of the completed agreement and a certificate for qualifying products. Thus the agreement for certification did not depend upon the logo having registered trade mark status.
33 The 3 September 2003 letter stated that a logo was available by email for inclusion on Techniques' "labels, documents, etc. on application". Although the company name was still Halal Certification Services Pty Ltd, it used a letterhead displaying the words "Halal Certification Authority Australia". The certificate was as follows (size reduced from an about A4 size original, and bearing an unclear but still just readable version of what later became the Trade Mark):
34 On this certificate, and on all subsequent certificates, it is difficult to regard the existence of the Trade Mark (or trade mark status for that logo) as having anything much to do with those agreements regarding certification, let alone any degree of importance to the issues in this proceeding. However, after registration it is at least a presentation of the Trade Mark to the person receiving the certificate.
35 By the terms of the agreement with HCA dated 3 September 2003, Techniques relevantly agreed only to market and sell as halal goods that were in fact halal, and paid fees in accordance with the agreement. Techniques agreed 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 duration of the agreement was 16 months (that is, from 1 September 2003 to 31 December 2004), with Techniques paying a licence fee of $1,760, plus an inspection fee to be paid on invoice.
36 The evidence of Ms El-Mouelhy, after "reviewing the records of HCA and having spoken with [her] father" was that these agreements did not provide "any consent or other approval to use the HCA Logo on packaging for any goods of any kind" and that Techniques had never sought such consent. Further, Ms El-Mouelhy stated that it was "not uncommon" for a contract/toll manufacturer to be approved for halal certification on the basis that they were permitted to display the certification certificate on their premises, and tell their clients that they were certified halal, but not to put the logo on finished goods.
37 Further agreements were entered into between HCA and Techniques over the 17 years between 1 January 2005 and 31 December 2016 in similar terms to the 2003 agreement. HCA did not produce a copy of the actual terms of the agreement between HCA and Techniques between 2005-2016. They did produce another agreement with Techniques from 2003-2004, relating to another product, as well as their standard terms. Ms El-Mouelhy stated that each agreement HCA made was in the standard form, with a schedule completed for each client as appropriate to their circumstances.
38 In early to mid-2010, Mr Hanna and a Mr Samuel Tew, who had also been involved in establishing companies in Flujo Group, decided it would be beneficial to have halal and kosher certification 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. They considered it was important that customers know who certified the product halal or kosher, and therefore to put the certification symbol with the certifying entity on the packaging. Mr Hanna spoke to Mr Matthew Martin at Techniques about wanting kosher and halal certification for Natvia Products. Mr Hanna understood that the costs of doing this would be built into the unit price charged by Techniques for manufacturing and would have little effect on prices as he also understood that the costs to Techniques of certification were marginal. As there was minimal cost involved, they considered certification was worthwhile, even though they did not see it as increasing marketability domestically.
39 In order to obtain halal certification, Techniques required evidence from Flujo Group that the ingredients had been certified, which I infer must have been passed on to HCA by Techniques. While Mr Hanna was not able to locate the certificates provided at the time of original certification, he was able to produce later certificates. No issue was taken with this having happened. A short time later, also in about mid-2010, Mr Hanna was notified by Techniques that the Natvia Products had been certified halal and kosher. Natvia obtained both the Packaging Logo and the Kosher Logo from Techniques for inclusion on its packaging. Those logos were first included on Natvia Products from about 2011.
40 On about 10 July 2010, HCA issued a further certificate, in very similar terms to the certificate reproduced above, but referring to "Natvia":
The above certificate does not at first blush appear to have the Trade Mark affixed, but it seems likely that the faint lines in the bottom right-hand corner of the certificate, adjacent to the conclusion of Mr El-Mouelhy's typed name, are the Trade Mark.
41 The above certificate was reissued to Techniques in the same terms, but with a clear Trade Mark affixed to each, as follows:
(a) on about 12 January 2010, valid until 31 December 2011
(b) on about 13 December 2011, valid until 31 December 2012;
(c) on 3 April 2014, valid until 31 December 2013, signed by Ms El-Mouelhy as Chief Executive Officer;
(d) on 8 November 2013, valid until 31 December 2014, signed by Ms El-Mouelhy as Chief Executive Officer;
(e) on about 10 December 2014, valid until 31 December 2015, signed by Ms El-Mouelhy as Chief Executive Officer but with 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".
42 The certificate issued to Techniques in 2015 relating to Natvia appeared as follows:
43 As can be observed, over time, the appearance of the certificates issued by HCA changed. The certificates were manually produced until an online system was introduced sometime in about March 2017. From 31 March 2017, HCA required information about products and ingredients to be submitted electronically through an online portal.
44 In about May 2015, there was a dispute between Flujo Group and Techniques which resulted in Techniques ceasing manufacturing of the Natvia Products for over three years until October 2018. As this happened on short notice, Mr Hanna contacted Mr Ashley Hawley, whom he knew at Hellay in Victoria, to produce a run of Natvia Products urgently. That took place upon agreement as to price, in about June 2015. Ms Haley Cornish of Techniques accordingly contacted HCA directly via email to remove Natvia from their list of certified halal products on 22 July 2015, and Ms El-Mouelhy responded on the same day to say the certificate had been terminated.
45 In 2016, HCA issued the following certificate to Hellay (although undated, in her affidavit Ms El-Mouelhy states that this certificate was issued on 1 April 2016):
46 By the end of 2017, the form of the certificate had changed, as shown by the following certificate issued to Hellay on 31 December 2017:
47 The above certificate has affixed both a faint copy of HCA's company seal, and a clear rendering of the Trade Mark. The currency of this certificate using the Trade Mark straddles both the filing of the original notice of cross-claim on 14 December 2018, and the filing of the original statement of cross-claim on 4 April 2019. This is relevant to the ground for rectification by cancellation in s 88(2)(c) sought by the notice of cross-claim in general terms and by the statement of cross-claim in specific terms.
48 The first version of the last-in-time certificate in evidence overtly referring to certain Natvia and Raw Earth products was issued on 20 November 2018. This was shortly before the filing of the original notice of cross-claim on 14 December 2018, and not long before the filing of the original statement of cross-claim on 4 April 2019. It did not appear to have the Trade Mark affixed to it, only an indistinct rendering of the company seal:
49 In her evidence, when asked whether the 20 November 2018 certificate had the Trade Mark on it, Ms El-Mouelhy stated that she hated "to be the bearer of bad news" but the Trade Mark was actually contained within the above certificate, displayed on a water mark in the background of the certificate. She stated that this watermark is only visible on the original certificate, and not any copies, as part of an anti-forgery measure. This watermark is very faintly visible on the certificate displayed at [46] above.
50 According to Ms El-Mouelhy, the references in the above certificate to Natvia and Raw Earth were included in error because she was tired from jetlag, and she reissued the certificate the same day without those brand references. That replacement certificate still provided a revision date of 31 December 2019 and an expiry date of 31 December 2019. Thus those products were in fact certified halal, remembering that HCA certified products, not premises. There is no suggestion that the products or ingredients were not in fact halal, nor that the certificate referred to different ingredients to those used by Hellay. That is, the change was apparently as to branding only and the same products were still manufactured by Hellay. That certificate, being the second version of the last-in-time certificate, is as follows:
51 The final version of the last-in-time certificate was issued in July 2019. An email HCA sent to Hellay on 25 July 2019, annexing that certificate, states "Please find enclosed your updated certificate excluding the Flujo products due to a continuous breach of our agreement". A new version of the certificate showed that the ingredients previously included on certificates issued to Hellay were removed altogether, clearly supporting the inference that those products had not been excluded before then. The dates of certification remained identical to the first and second versions of the certificate. The final certificate issued is as follows:
52 Mr Hanna stated that it only became clear to Flujo Group what HCA's position was on the question of permission to use the Packaging Logo in mid-July 2019. This could reasonably be presumed to be either at the time of, or perhaps shortly before, the email dated 25 July 2019 was sent, attaching the above certificate, retrospectively removing the generic products which encompassed the Raw Earth and Natvia Products from the certificate. While it is apparent Hellay communicated the change to Flujo Group, there is no evidence that HCA communicated this change directly to Flujo Group. This is a point of some importance when it comes to the question of continued use of the Packaging Logo, an admitted facsimile of the Trade Mark, in good faith.
53 As set out above, it was Natvia (and then Stevia) that designed and provided the labelling to Techniques, who blended and produced the actual products. In order to facilitate this, Techniques provided Natvia with a certificate of analysis which showed the product ingredients and nutritional information. Natvia retained a graphic design company to develop the packaging. Natvia also obtained regulatory advice from an external food technology consultant, Mr Tony Zipper.
54 There is still further relevant background information to consider. Between 20 and 22 July 2009 - approximately ten years prior to the asserted breach of agreement which led to the removal of certification - there was the following exchange of emails between Mr El-Mouelhy and Ms Cornish of Techniques (salutations and signatures omitted, errors in original):
From: Hayley Cornish [hcornish@techniques.net.au]
Sent: Monday, 20 July 2009 11:55
To: info@halalauthority.org
Subject: Halal Certification
I am enquiring as to the process involved to have formulations certified Halal.
Currently we have 5 formulations which we believe to be Halal suitable.
[What] is the time frame to have formulations certified?
[What] are the costs involved to have formulations certified?
In addition once certified are we able to use the Halal Certification Authority Australia logo on our packaging? Are there any costs involved?
Please feel free to contact me if you have any questions.
From: Halal Authority [mailto:info@halalauthority.org]
Sent: Monday, 20 July 2009 12:09 PM
To: 'Hayley Cornish'
Subject: RE: Halal Certification
There is no cost involved in adding further products to the certificate. If you send the formulations this afternoon you will get your certificate updated before the close of business.
Attached please find our logo in a variety of files. It should be no less then 10mm in diameter and can be any colour. Approval of the label is required.
From: Hayley Cornish [mailto:hcornish@techniques.net.au]
Sent: Tuesday, 21 July 2009 02:40
To: 'Halal Authority'
Subject: RE: Halal Certification
I have attached a document with some formulations for you to approve (if applicable).
I am still finalising two more formulations which I will send to you once completed for approval.
I don't think we will be able to approve the pancake mix.
Please feel free to contact me if you have any questions or require any more information.
From: Halal Authority [info@halalauthority.org]
Sent: Wednesday, 22 July 2009 06:57 AM
To: 'Hayley Cornish'
Subject: RE: Halal Certification
Please send me more information regarding:
CMC 7HF and Methocel A4M by IMCD
FCMP by Total Foodtec
I+G by Food Traders
WPC 80% by WCB
Also please supply Halal certificate for
Cheese Powder T1 and Cheddar Cheese Plus by Ballantyne
Buttermilk Powder by Murray Goulburn
Saromex Onion by IFF
[Cheese] Buds by IMCD
[unclear] Cheddar Flavour by Michelona
55 The above email exchange makes it clear that the certificate HCA gave to Techniques could have products added to it, and, in context, this applied to products manufactured for other companies.
56 The email exchange also at least implies that the Trade Mark may be added to packaging for such products, subject to the label being approved. Further, Mr El-Mouelhy providing the logo to Techniques in a variety of file formats, as well as instructions for use, effectively handing the tools for using the Packaging Logo over to Techniques (and accordingly, their clients) makes the "required" approval of the label by HCA seem in practice perfunctory at best, so long as the halal approval requirements were met. Further, the evidence indicates that there was nothing much left to be approved in any event. The halal certification was done by reference to the ingredients and a check of the manufacturing premises.
57 Moreover, there is no suggestion in the evidence of any material difference in appearance between the Packaging Logo and the Trade Mark. For a sugar substitute product, not much was involved in certifying the product as halal. There is nothing to suggest that much work on the part of HCA was involved. It seems that what was being provided was knowledge as to the requirements to be halal, and a check on the manufacturing processes. Those requirements would probably be easily met for a product which would be unlikely to involve any meat products (let alone meat that had come from an animal not slaughtered in a halal manner) and most unlikely to involve any alcohol products.
58 More importantly, there was no evidence that Techniques manufactured its own products, or that HCA had any reason to think that it did, having referred to Techniques as a contract manufacturer, if not a toll manufacturer. The unchallenged evidence of Mr El-Mouelhy was that he audited Techniques' premises each year as part of the halal certification process, at which time he saw packaged goods. The auditors needed to know the manufacturing process in order to certify that the products made there were halal. It seems likely that such an audit would have covered the manufacturing for all the products made there, because the processes for each would either be halal, or not. Therefore, 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. Any other conclusion simply does not make any commercial sense. The alternative is that Techniques and Hellay would have been paying for certification that was of no apparent practical use to them or their customers, which must be rejected.
59 Mr El-Mouelhy initially said in cross-examination that he had been to Techniques' premises and that they "fill packaging with ingredients". The next question from counsel after that statement was "They don't retail the -" at which point Mr El-Mouelhy interrupted counsel and spontaneously answered "No, they don't retail it". In the immediately following three questions and answers, he sought to recant, saying that he "recalled that answer" and said he had realised that he did not know whether Techniques was a retailer. I accept and prefer his original answer as being his true position. Further, at another point in his oral evidence, Mr El-Mouelhy even pointed out that he was aware that the Natvia retail packaging was not manufactured by Hellay or Techniques. This may be seen to be somewhat contradictory to his asserted lack of knowledge about whether a toll or contract manufacturer was retailing the products produced. Mr El-Mouelhy went on to say that, regardless, the packaging was not authorised to contain the Packaging Logo, even though the product contained within the packaging was produced by a toll manufacturer which was certified by HCA. While nearly all witnesses from time to time need to correct themselves or realise they have inadvertently said something which is wrong, in this case I do not accept Mr El-Mouelhy's "recall" of his initial evidence.
60 This conclusion is reinforced by Ms El-Mouelhy's confusing evidence on a similar line of questioning. This occurred in the context of her correcting counsel for the respondents when he asked her whether one of the products listed on the certificate, Milky Bake, went out into the public for retail sale. In her response she said that she thought he (that is, counsel) would be aware that Techniques was a powder blender. Counsel then asked whether a powder blender was different to a retailer, which she confirmed. In response to the question of whether a powder blender would have any use for the Packaging Logo, she said "not usually", but not necessarily no, as it was open to the manufacturers to retail the products themselves. She then said that it was a "gross assumption" to expect that because a manufacturer had obtained halal certification, a retailer would want to advertise the logo on its goods, and said it was a "totally untrue statement" that the main reason why a retailer would want halal certification for a product would be to put the Packaging Logo on a product. It was never made clear why that obvious conclusion would not be true. These statements as to the possibility of a toll manufacturer retailing products on their own behalf, when their very existence seems to be predicated on an arrangement where another entity is the retailer of products they make, are divorced from reality and were not supported by any other evidence.
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.
64 There is still further relevant evidence as to the nature of HCA's relationship with Flujo Group, Techniques and Hellay. In about 2011, Flujo Group took steps to export some Natvia products. They wanted to use the same packaging. Mr Zipper was asked to check with the halal certifier (that is, HCA) if the same certification could be used, which would also have the benefit of making contact with the certifier whom Flujo Group knew little about.
65 Mr Hanna was subsequently copied into a 5 March 2012 email from Mr Zipper to a Mr Mark Chen at Flujo Group as follows:
I have spoken with Halal Certification Authority Australia in Sydney and they assure me that Natvia can use the current Australian Halal symbol in EU countries, UK and USA without hesitation or extra costs/authority, etc.
However if Natvia was to be sold to a majority Muslim country there may be problems and I suggest that we seek further advice if this scenario eventuates.
This is clear and contemporaneous evidence that HCA knew about its logo being used beyond Techniques since at least 2012. The only evidence from HCA to counter what was conveyed in this email was from Ms El-Mouelhy, who said that this was "inconsistent with HCA's usual practices". That evidence was not a denial that someone at HCA had given that assurance, and therefore had that knowledge.
66 Flujo Group eventually found a distributor for the United Arab Emirates in about 2013 and commenced selling Natvia products there with the Australian packaging. The distributor accepted responsibility for labelling requirements, and never raised an issue about the halal certification on the packaging. Mr Hanna therefore did not consider that there were problems nor did he have any cause to contact HCA. After obtaining the certifications, Techniques did not raise any issue regarding certification of the Natvia products and Mr Hanna understood that this meant that the product that they manufactured was certified halal.
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.
72 With this factual history in mind, I now turn to the arguments as to the Trade Mark.