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

Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited [2023] FCAFC 175
Full Court of the Federal Court of Australia
Nicholas, Burley, & Cheeseman JJ
Trade marks – Halal Certification Authority commenced proceedings against the respondents for infringement of its registered trade mark, and the respondents cross-claimed for cancellation of that mark – the trade mark in issue was a “figurative” or “composite” mark that consisted of a combination of words and a device – the mark appeared like a circular stamped seal, with Arabic characters transliterated as “halal” in the centre, and “Halal Certification Authority Australia” written around the perimeter of the circle – halal means “allowed or permitted in accordance with Islamic rights” – the primary judge found that the respondents had not used their marks as trade marks within the meaning of s120 of the Trade Marks Act 1995 (Cth), and that, even if they had, they were entitled to the benefit of the defence under s122(1)(b)(i) of that Act on the basis that they used their marks in good faith to indicate that their 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 – the primary judge also found that the use of Halal Certification Authority’s trade mark was likely to deceive or cause confusion and that its registration should be cancelled pursuant to s88(1) and (2)(c) of the Act, and that that trade mark was not capable of distinguishing Halal Certification Authority’s services from the services of other persons contrary to the then s41(2) of the Act and that its registration should also be cancelled pursuant to s88(1) and (2)(a) – Halal Certification Authority appealed – held: the trade mark was registered only in respect of services including “issuing halal certification to businesses and individuals for goods and services”, and the registration did not extend to goods of any kind – the use of a substantially identical mark on the respondents’ goods was not a use in relation to services – the Court rejected the submission 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 – the primary judge had therefore correctly dismissed the infringement case – in any event, the primary judge had also been correct that the defence under s122(1)(b)(i) would have applied – the respondents had used their marks in good faith to indicate that their goods were halal and had been certified as halal by the appellant, at least up until the time they received a letter of demand from the appellant – 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 – the primary judge had therefore been correct to find that the use of the trade mark was likely to deceive or cause confusion – the trial judge had also been correct to find that the trade mark was not capable of distinguishing the applicant’s services from the services of other persons, as 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 a circle to indicate that the goods had been certified as halal by that person – appeal dismissed.
Halal Certification Authority Pty Limited