A.D. Padmasingh Isaac trading as Aachi Spices and Foods v Ragopika Pty Ltd (‘Padmasingh')

[2021] ATMO 47

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by A.D. Padmasingh Isaac trading as Aachi Spices and Foods to registration of trade mark application number 1909008 (class 43) – AACHI INDIAN CUISINE - in the name of Ragopika Pty Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: Chris Round and Bianca D’Angelo of K & L Gates Lawyers Applicant: Relied on written submissions
Decision:	2021 ATMO 47 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42, 44, 58, 60 and 62A pressed – s 60 established - application refused.

Background

1. This matter is an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Ragopika Pty Ltd (‘the Applicant’). Relevant details of the application are set out below.

Trade mark:	AACHI INDIAN CUISINE (‘the Trade Mark’)
Trade mark application:	1909008
Filing Date:	22 February 2018 (‘Priority Date’)
Specification:	Class 43: Restaurant services; fast food oulet (‘Applicant’s Services’)

1. The application was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 4 July 2019. A.D. Padmasingh Isaac trading as Aachi Spices and Foods (‘the Opponent’) filed a Notice of Intention to Oppose on 3 September 2019 followed by a rectified Statement of Grounds and Particulars (‘SGP’) on 17 September 2019. Thereafter the Opponent and Applicant filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard, by way of video conference, the matter in Canberra on 4 March 2021 as a delegate of the Registrar of Trade Marks. Chris Round and Bianca D’Angelo of K & L Gates Lawyers appeared for the Opponent. The Applicant relied upon its own written submissions.

   Grounds of Opposition

3. The SGP nominated grounds of opposition under ss 44, 60, 42(b), 58, and 62A of the Act. The onus is upon the Opponent to establish one of its grounds of opposition on the ‘balance of probabilities’.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663, [26] and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

4. The Opponent pressed all grounds of opposition at the hearing.

5. The time at which the grounds of opposition must be established is the Priority Date, being the date of the application for registration of the Trade Mark.[2]

   Evidence

   7.     The evidence consists of the following declarations:

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595.

Declarant	Position	Date Made	Annexures
Evidence in Support
A.D.Padmasingh Isaac (‘Isaac 1’)	Founder and owner of the Opponent	24.02.20	AI-1 to AI-19
Evidence in Answer
Nadarajan Iyyappan Pillai (‘Pillai’)	Director of the Applicant	27.05.20	RP-1to RP-13
Evidence in Reply
A.D.Padmasingh Isaac (‘Isaac 2’)	Founder and owner of the Opponent	21.07.20	AI-20 to AI-26

The Opponent

1. Isaac 1[3] states that the deponent founded a business (that he refers to as the ‘Aachi business’) in India in 1995. The Aachi business began marketing and manufacturing spices in India. The Aachi business in headquartered in Chennai, Tamil Nadu in South India.

   [3] At [2].

2. Isaac 1 further states[4] that the Aachi business expanded its activities and established the Opponent. Isaac 1 (at [16] to [19] and Annexures AI-11 to AI-13) demonstrate significant global expansion of the Opponent in the area of food related goods and restaurant services.

   [4] At [6] to [8].

3. The Opponent is the owner of Australian trade mark registration number1219486 which is for the plain word ‘AACHI’ and registered in respect of food-related goods in classes 29 and 30, with a priority date of 16 January 2008.

4. The Opponent has also applied to register the plain words ‘AACHI KITCHEN’ for restaurant services in class 43.[5] It also has a pending international registration designating Australia for a logo that depicts the word ‘AACHI’ within an oval for goods and services in classes 29, 30 and 43.[6] Both applications were made after the Priority Date.

   [5] See Australian trade mark application number 1948519.

   [6] See Australian trade mark application number 2109580.

5. I will discuss further evidence that relates to specific grounds of opposition later in this decision.

   The Applicant

6. The Pillai declaration[7] states that Mr Nadarajan Iyyappan Pillai (‘Mr Pillai’) is the founder of the Applicant, which owns the business operating under the Trade Mark in Perth, Western Australia, since May 2016.

   [7] At [1] and [2].

7. Mr Pillai states that he named his business in remembrance of his grandmother, whom he called ‘Aachi’. He also states that ‘Aachi’ was widely used in his clan community in Tamil Nadu as a term of endearment for ‘grandmother’, which is supported by Annexures RP-4 to RP-6 of the Pillai declaration.

8. In its registration and applications for trade marks the Opponent included the endorsement that ‘Aachi’ means ‘elderly lady with respect. In Isaac2[8], Mr Isaac states that he is a Tamil speaker and ‘Aachi’ has the meaning included in the endorsements; however, he accepts that in parts of South India the word is used for ‘grandmother’. I do not consider that the different definitions are inconsistent with each other, both connote respect for one’s elders.

   [8] At [6]

   Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

9. Section 60 of the Act provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note:For priority date see section 12.

10. It is not necessary to show under s 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

11. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick [9] (‘McCormick’), by Kenny J at [81] – [82]:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [9] (2000) 51 IPR 102.

12. Further, at [86], Kenny J said:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

13. The Opponent’s evidence establishes that the Aachi business has amassed a turnover of tens of billions of US dollars globally over the past 20 years or so, and spent approximately one billion US dollars on advertising globally, including in Australia, in the same time frame.[10]

    [10] Isaac 1, at [13] and Annexure AI-10.

14. Within Australia, Isaac 1 provides the following details of the promotion and sale of its food products under AACHI brands through its licensed Australian distributors:

    ·     Sales by one of its distributors (‘PKF’) for the period April 2016 to March 2017 of US$105,54.49, and April 2017 to December 2018 of US$87,212.50.[11]

    ·     PKF’s total sales volumes from 2016 to mid-2019 of approximately US$297,787.94.[12]

    ·     Invoices from three other major distributors of Indian food products demonstrate the distribution of similar quantities of AACHI banded products throughout Australia, including Western Australia.[13]

    ·     At least 136 different types of AACHI branded products have been exported to Australia from 2008 to date.[14]

    ·     Since 2011, the Opponent has promoted to Australia its full product range of over 400 products via its website aachigroup.com/cms.[15]

    ·     The Opponent’s AACHI brands are particularly well known amongst the Indian diaspora in Australia and consumers of South Indian cuisine.[16]

    [11] Isaac 1, at Annexure AI-14.

    [12] Isaac 1, at Annexure AI-15.

    [13] Isaac 2 at [9], Annexures AI-22 - AI-25.

    [14] Isaac 1, at [19(b). and Annexure AI-23.

    [15] Isaac 1 at [23], Annexure AI-16; Isaac 2 at [9], Annexures AI-22 - AI-25.

    [16] Isaac 1, at [7] to [14].

15. I am satisfied that the Opponent’s evidence has established in the terms of McCormick that the Opponent’s AACHI trade mark has the requisite reputation among relevant Australian consumers of South Indian food products and cuisine before the Priority Date. While some of the Opponent’s evidence of use is after the Priority Date, I find it relevant to the continuing reputation of the Opponent’s trade marks.

16. It is also necessary for the Opponent to establish that, because of its reputation in its marks, notional use of the Trade Mark on the Applicants specified Services would be likely to deceive or cause confusion.

17. The meaning of the words ‘likely to deceive or cause confusion’ were discussed by the Full Federal Court in The Coca-Cola Company v All-Fect Distributors Ltd, referring to Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd[17] where Richardson J, in the New Zealand Court of Appeal, said:

    “Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public ... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.[18]

    [17] [1979] RPC 410 at 423.

    [18] [1999] FCA 1721; (1999) 96 FCR 107; 47 IPR 481, 39.

18. It is not necessary to show actual confusion under section 60, but rather a likelihood of confusion. Evidence of confusion is notoriously difficult to procure as those deceived or confused may not realise or report such confusion. Further, as the Full Federal Court stated in Australia Postal Corporation v Digital Post[19]‘ the threshold for confusion is not high’. For a likelihood of confusion to exist, ‘the triggering event need go no further than mere confusion, in the sense of holding a reasonable doubt, while stopping short of actual deception or mistake’.[20]

    [19] (2013) FCAFC 153, [70].

    [20] McDonald's Inc v Future Enterprises Pte Ltd [2007] ATMO 22, [26].

19. The assessment of the likelihood of deception or confusion is informed by ‘the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties’.[21]

    [21] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124.

20. The Trade Mark and the Opponent’s AACHI trade marks (both registered and applied for) are essentially the same. The essential feature is the word ‘Aachi’, while the Trade Mark includes also the utterly descriptive words ‘Indian cuisine’. Conceptually, the Trade Mark and the Opponent’s marks are both reminiscent of a grandmother’s home cooked meals.

21. Having regard to the Opponent’s reputation in its trade marks, the similarity of the competing trade marks, both literally and conceptually, and the similarity of the goods and services in relation to how they are used, I am satisfied that relevant consumers will be caused to wonder if there is some connection between the Applicant’s Services and the South Indian food products and cuisine for which the Opponent has acquired a reputation under its AACHI trade marks.

22. Therefore, the Opponent has established a ground of opposition under the provisions of s 60. Having found in favour of the Opponent in terms of s 60 there is no need for me to discuss the other grounds set out in the SGP although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

    Decision

    30. Section 55(1) of the Act applicable to this matter provides:

    Unless the proceedings are discontinued or dismissed, the Registrar
    must, at the end, decide:

    (a)  to refuse to register the trade mark; or

    (b)  to register the trade mark (with or without conditions or  limitations) in respect of the goods and/or services then
      specified in the application;

    having regard to the extent (if any) to which any ground on which the
    application was opposed has been established.
    Note: For limitations see section 6.

    31. I have found the opposition to be successful on the ground raised pursuant to s 60 of the Act. I accordingly refuse to register trade mark application number 1909008.

    Costs

    32.     The Opponent has sought an award for costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent is the successful party, I award costs against the Applicant at the official scale set out in Schedule 8 to the Regulations.

    
    Jock McDonagh
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    4 June 2021