Jaimon Thomas v Monsoon Group Aust. P/L
[2023] ATMO 12
•6 February 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Jaimon Thomas to registration of trade mark application number 2086107 (classes 35, 39) – KAYAL Logo - in the name of Monsoon Group Australia Pty Ltd.
Delegate:
Debrett Lyons
Representation:
Opponent: Edwina Whitby of counsel, instructed by Baxter IP.
Applicant: Sonia Stewart of counsel, instructed by Legalvision ILP Pty Ltd.
Decision:
2023 ATMO 12
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44, 58, 59, 60 and 62A considered – amended application to proceed to registration.
Background
This decision is in respect of an opposition by Jaimon Thomas (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark detailed below, filed by Monsoon Group Australia Pty Ltd (‘Applicant’).
Trade Mark:
(‘Trade Mark’)
App. No.: 2086107
Filing Date: 6 May 2020
Services:Class 35: Supermarket retailing; convenience store retailing; hypermarket retailing; retail sale of prepared meat and meat products (butcher's shop); department store retailing; online retail services; purchase order services for others; Supermarket retailing
Class 39: Delivery of groceries; packaging of food; frozen food storage services; packing of food; delivery of meals and prepared foods; cold store keeping services
(‘Services’).
The application to register the Trade Mark was examined as required by s 31 of the Act and its acceptance for possible registration was advertised on 7 October 2020.
The Opponent filed a Notice of Intention to Oppose registration and a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a notice of their intention to defend the application from opposition. The parties then filed their evidence (set out below) in accordance with reg 5.14 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), after which the parties requested a hearing.
I heard the matter, as a delegate of the Registrar of Trade Marks, on November 1, 2022. Edwina Whitby, of counsel, instructed by Baxter IP, made oral and written submissions on behalf of the Opponent. Sonia Stewart, of counsel, instructed by Legalvision ILP Pty Ltd, represented the Applicant and did likewise.
Evidence
The evidence filed in this matter comprises declarations by the following persons:
Evidence in support
Jaimon Thomas made 14 May 2021; and
Warren Chandler made 14 May 2021
Evidence in answer
Vimal Das made 17 August 2021
Evidence in reply
Jaimon Thomas made 18 October 2021.
Preliminary Findings
The evidence shows that the Opponent has used a trade mark comprising the word ‘Kayal’ in word and stylised (logo) forms in connection with restaurants offering Indian cuisine, first in Chennai, India and later under license in the United Kingdom.
The Opponent has also registered those trade marks in Australia and details of the registrations are given below.
Trade Mark No
1774537
Logo Mark
Priority Date
2 June 2016
Services
Class 43: Inn keeping (bar, restaurant and accommodation); Restaurant booking or reservation services provided in relation to a customer loyalty or frequent buyer scheme; Restaurant reservation services; Restaurant services; Restaurant services for the provision of fast food; Restaurants; Salad bar restaurant services; Self-service restaurants; Theatre restaurants (Provision of food and drink); Hospitality services (accommodation); Hospitality services (food and drink); Arranging of wedding receptions (food and drink); Charitable services, namely providing food and drink catering; Coffee bar and coffee house services (provision of food and drink); Food and drink catering; Food cooking services; Food preparation; Internet cafe services (provision of food and drink prepared for consumption); Night club services (provision of food and drink); Preparation of food and drink; Preparation of take-away and fast food; Providing food and drink; Snack bars (provision of food and drink); Take away food services; Take out food and beverage services; Takeaway food and drink services.
Trade Mark No
2003430
Word Mark
KAYAL
Priority Date
16 April 2019
Services
Class 43: Booking of restaurant seats; Inn keeping (bar, restaurant and accommodation); Restaurant services; Restaurants; Salad bar restaurant services
The Applicant was incorporated in Australia on 10 April 2017. It purports to have used the Trade Mark in respect of the supply of foodstuffs. There is better evidence of use of the Trade Mark in connection with a bar/restaurant.
In short order, the Opponent asserts ownership of and a reputation in the Trade Mark and alleges that its use or intended use by the Applicant is in bad faith and will cause confusion. The particulars of those claims are soon discussed however there are contentions by both sides which bear on more than one ground of opposition, and it is convenient to ventilate them now.
The first is the signification of the word, ‘Kayal’. The Opponent states that the word does not directly translate into English but loosely means ‘backwater’ in the language in the south of India. The Opponent states that the word alludes to the seafood specialty of its restaurants. The Opponent’s Facebookâ page states that ‘[t]he whole school of South Indian seafood cuisine takes its name from Kerala backwaters’, from which the Applicant argues that the word ‘Kayal’ is analogous to using, for example, ‘Cajun’ or ‘Creole’, to describe those well-known cuisines. However, in my assessment, the evidence when taken as a whole, does not conclusively support that contention and my finding is that ‘Kayal’ is a distinctive term and certainly not one which is descriptive of the Services.
The next matter is whether the Services are similar to the class 43 services of the Opponent’s registered marks. The Opponent provides sworn evidence that the COVID-19 pandemic has seen the Opponent and other restauranteurs offer pre-prepared meals, pick-up and delivery services. The practice of this Office is, as may be expected, well developed in this area and its position is that class 43 services of the kind ‘preparation of take away and fast food’ are considered similar to the class 35 services of ‘retail of food and drink’. Further, class 43 ‘take away food services’ may be similar to class 39 ‘food delivery’ services on the rationale that whilst food delivery involves the delivery of goods produced by third parties, but that is not always the case and confusing similarity may arise when dealing with very similar marks (something I come to consider shortly).
The third issue is that of the Opponent’s reputation in Australia. There is no evidence of local use of the Opponent’s marks which could give rise to a reputation. From 2015 onwards the Opponent sought to franchise its business in Australia and indeed two agreements were signed, one in 2019 and another in 2020, but neither franchisee was operational before the Relevant Date. Nonetheless, the Opponent claims a spillover reputation in Australia in consequence of its activities abroad. In that regard the evidence is of a single restaurant that opened in 2001 in India and, from 2006 onwards, of the establishment of five licensed restaurants in regional towns and cities in the UK.
The Opponent refers to its awards and accolades over the years, but there is no evidence of that type from India and the UK evidence is largely localized, for example, showing that the Opponent’s licensed business in Leamington Spa was listed amongst the ‘Top 10 budget eats in Shakespeare country’ by The Guardian newspaper, and that another licensed restaurant had won the ‘Nottingham Post Indian Restaurant of the Year Award 2014 for Kayal on Broad Street’.
In my assessment, the evidence is of successful, regionally located, restaurants in the UK which have, at most, gained some recognition more broadly in that country. I am in agreement with the Applicant’s statement that there is no evidence that this reputation has independently established itself amongst persons ordinarily resident in Australia. I do not find a spillover or other reputation in Australia associated with the Opponent.
Grounds, Onus and Relevant Date
The grounds of opposition particularised in the SGP are those under ss 42, 43, 44, 58, 59, 60 and 62A of the Act. The Opponent bears the onus of establishing a ground of opposition[1] and the standard of proof is the ordinary civil standard of the balance of probabilities.[2] At the Hearing the s 43 ground was not pursued and I treat it as abandoned. The date at which the rights of the parties are determined is the filing date of the application[3], being in this case, 6 May 2020 (‘Relevant Date’).
Section 44
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).
Section 44 relevantly provides:
44 Identical etc. trade marks
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
17. In order to succeed on this ground the Opponent must show that at least one of the identified trade marks has a priority date earlier than that of the Trade Mark; that the earlier trade mark is registered in respect of services that are similar to, or goods that are closely related to, the Services; and that the earlier trade mark is at least deceptively similar to the Trade Mark.
18. Similar services are defined in s 14(2) of the Act as services that are the same or ‘of the same description’ as other services. I have already observed Office practice and the potentially conflicting services in this case. Registration 1774537 explicitly includes class 43 ‘takeaway food and drink services’ and conflicts directly with class 35 ‘retail of food and drink’. The Office practice does not distinguish the mode of retailing – whether hypermarket, supermarket or convenience store – and so what remains of the class 35 Services not in conflict with the prior registration is limited in my assessment to:
Retail sale of uncooked meat and meat products (butcher's shop); department store retailing other than for food and drink; online retail services other than for food and drink; purchase order services for others other than for food and drink.
19. Further, class 43 ‘takeaway food and drink services’ conflicts with the class 39 Services of ‘delivery of groceries’ and ‘delivery of meals and prepared foods’ to the extent that the trade marks at issue are ‘very similar’.
20. Registration 1774537 has a priority date earlier than that of the Trade Mark. The Opponent petitions me to find that the logo mark of the registration is substantially identical to the Trade Mark. I find that they are not and since the outcome of s 58, discussed below, does not in this case hinge on the determination of substantial identity, nothing more is achieved by expansion on my finding, here or later. However, applying the usual tests I find that the Trade Mark is deceptively similar to the Opponent’s logo mark for the purposes of s 44(2) and ‘very similar’ to that mark for the purposes of the preceding paragraph.
21. It follows that s 44(2) has been established for some of the Services and so the s 44 ground of opposition will succeed unless s 44(3) or (4) somehow apply. From what has been explained already, there is no scope for the principle of honest concurrent use under s 44(3) and the exception of prior continuous user described by s 44(4) has no application on the facts because the Applicant did not come into existence until after the priority date of Registration 1774537 and there is no earlier use by anyone who properly qualifies as a predecessor in title of the Applicant.
22. For these reasons the s 44 ground of Opposition is partly successful and reflected in the Decision, below.
Sections 60 and 42
23. It is convenient to address both ss 60 and 42 together as the Opponent’s case in respect of these grounds rests upon similar principles – the primary difference being that a higher threshold applies to its case under s 42.
24. The sections provide:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
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.
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
25. Where the ground under s 42(b) is based upon a breach of Australian Consumer Law, both ss 60 and 42(b) rely upon consumer confusion and/or deception because of the reputation of another trade mark[4]. The ground under s 60 requires only that consumers are likely to be confused, whereas the ground under s 42(b) requires that consumers would be misled or deceived (a higher threshold).[5] If the Opponent cannot establish its ground under s 60 then, where the case is framed as relying upon reputation, it likewise cannot establish its ground under s 42(b).[6]
[4] Here, the Opponent’s submission is that there is conduct in contravention of ss18 and/or 29(1) of Sch 2 to the Competition and Consumer Act 2010 (Cth), by reason of its reputation in its trade marks.
[5] See for example Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd [1979] RPC 410, at 423 (Richardson J) for an explanation of the difference between confusion and deception.
[6] See for example the comments of the delegate in Monster Energy Company v USA Nutraceuticals Group Inc [2017] ATMO 22 [57]-[58], regarding the relationship between a failure to establish s 60 and ss 18 and 29 of the Australian Consumer Law as well as the tort of passing off.
26. What must be shown is that at least one of the trade marks identified by the Opponent had a reputation in Australia at the Relevant Date, and that because of that reputation consumers will be confused or deceived.
27. I have already found that neither of the Opponent’s trade marks had a reputation in Australia at the Relevant Date and accordingly the ground of opposition under s 60 fails, as does the ground under s 42(b).
Section 58
28. Section 58 provides:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
29. The Opponent’s written submission is that the Applicant is ‘not the owner of the Trade Mark in the sense required by s 58 of the Act. Rather, the Opponent is the true owner of the mark KAYAL for Class 43 services claimed by the Applicant which are the same services as the KAYAL Word Mark.’
30. The Opponent must show the trade marks it relies upon are substantially identical to the Trade Mark[7]; that the Opponent’s services are the ‘same kind of thing’ as the Services[8]; and the trade marks relied on by the Opponent must have been used in the course of trade prior to the Relevant Date, or prior to the date of first use of the Trade Mark, whichever is earlier[9].
[7] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68, [62] (Gummow J).
[8] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[9] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
31. It is well established that the requirement of being ‘the same kind of thing’[10] is a more onerous test than that imposed by s 14(2). I have already identified the similar services for the purposes of s 44. It follows that s 58 can have no broader reach and a finding under this ground is rendered redundant.
[10] According to Re Hicks’ Trade Mark; Ex parte Metters Bros (1897) 22 VLR 636 the use must be in relation to goods or services that are “the same kind of thing” as the specified goods or services. This requirement was considered in Colorado Group Limited v Strandbags Group Pty Limited (2007) FCAFC 184 where it was stated that the goods need not be identical but must be essentially the same. See the Manual at 4.1.3.
32. This leaves before me two grounds which need to be examined more closely – s 62A and s 59. Relevant to both grounds is the evidence from the Applicant that:
I decided to file Trade Mark Application Number 2086107 (the Application) for the Current Logo Mark. I had every intention to use the Current Logo Mark for supermarket retailing services, delivery services, storage services, and to continue using the Current Logo Mark for catering and restaurant services, at the time of filing the Application. However, given there was another “KAYAL” on the trade mark register in Class 43, I decided to only apply in Class 35 and 39 to avoid any issues. I had not obtained any legal advice at this time and was only trying to ensure the Application was successful to avoid unnecessary costs (due to the financial strain of the pandemic …
Section 62A
33. Section 62A provides:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
34. The Opponent’s written submissions are that the application was made in bad faith and that the Applicant’s conduct ‘falls short of the standards of acceptable behaviour observed by reasonable and experienced persons in the industry’, echoing the language of the UK Courts after the introduction in 1994 of a bad faith ground of opposition there - language adopted in this country by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[11]. In that case I note that Her Honour went further, stating that:
… in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand, or unconscientious character.[12]
[11] [2012] FCA 81, [147], quoting, Harrison’s Trade Mark Application [2004] EWCA Civ 1028.
[12] Ibid [165]-[166].
35. The Opponent petitions me to find that the application was made in bad faith because (i) the Applicant has not proved independent creation of the name Kayal; (ii) an inference can be drawn that the Applicant was aware of the Opponent’s restaurant in India; (iii) the Applicant has before the Relevant Date received the Opponent’s cease and desist letter; and (iv) the Applicant sought registration in classes 35 and 39 because the Opponent’s class 43 registrations were a barrier to registration.
36. In the first place, it should be understood that knowledge of the Opponent’s trade marks does not, of itself, render the Trade Mark application as having been made in bad faith. The evidence shows that from before the Relevant Date the Applicant had offered restaurant services. I have found that the Opponent had no business in Australia before the Relevant Date and the Applicant might therefore take the view that it had a legitimate interest in the Trade Mark - if not in the word ‘Kayal’ - in Australia in respect of class 43 services. Indeed, it emerged during my questioning at the hearing that the Applicant has since sought to register the Trade Mark in class 43 by a later application. Further, although I have found that the word ‘Kayal’ is not on the evidence clearly descriptive of a particular cuisine, I accepted that it is a commonly understood word in parts of India and so it is not implausible that the Applicant struck on it’s use honestly.
37. I find that even if the Applicant had no intention to use the Trade Mark in respect of the Services (something discussed hereunder in connection with s 59) and, as stated, sought to avoid ‘any issues’ or ‘unnecessary costs’ in securing registration, then all that might be said is that the Applicant acted disingenuously and in a manner akin to the lack of competence or prudence described above by Dodds-Streeton J. Such action lies outside the perimeter of bad faith. On balance, I find that the ground of opposition under s 62A of the Act has not been established.
Section 59
38. Section 59 provides that the Trade Mark may be opposed on the ground that the Applicant did not intend to use, or authorise the use of, the Trade Mark.
39. In my assessment, this ground is the high point of the Opponent’s opposition. As stated above, before the Relevant Date the Applicant had offered restaurant services. By the Applicant’s own admission, it applied for the Trade Mark in respect of the Services to avoid the Opponent’s class 43 registrations, which it perceived as a barrier to registration. It had been put on notice of the Opponent’s claim to trade mark rights in the word, Kayal, and to my mind the evidence points towards the Applicant feeling the urgency ‘to do something’.
40. Although the act of filing an application to register a trade mark has long been held prima facie evidence of an intention to use the trade mark in relation to the applied-for goods or services, that presumed intention can be rebutted by slight evidence. I find in this instance that the presumption has been rebutted and accordingly the onus shifts to the Applicant to prove its intention to use the Trade Mark. Once again, the standard of proof is the balance of probabilities.
41. The Applicant has positively affirmed in a sworn document that it intended to use the Trade Mark for the Services. As stated, the Applicant was incorporated on 10 April 2017 but the evidence also shows that the business name KAYAL CATERING was registered on 25 May 2017 and the business name KAYALFOODS registered on 7 May 2020. Whilst the Applicant has shown it’s naivete with respect to the trade mark registration process, I am not sure that it can be inferred that these business name registrations were part of a more elaborate ruse to imply an interest in the Services where none existed. Further, the evidence shows the Trade Mark on truck livery and so it can be reasoned in some small measure that the Applicant had the capacity to offer the Services. Finally, there is some limited and flawed evidence of the Applicant offering groceries - notably an invoice of over AUD38,000 for what the Applicant describes as its first batch of Kayal branded and packaged Indian goods intended for sale in its Kayal supermarket.
42. The Opponent’s submission is that an inference should be drawn that the Applicant did not have a genuine intention to offer supermarket services and the like at the time of application and merely ‘expanded its intended services ex post facto so as to bolster its position’. I have considered that argument and it may reflect the truth, but when I balance the evidence the Opponent has not provided enough to convince me of that assertion. I find there is just enough to support the Applicant’s claim of an intention to use the Trade Mark in respect of the Services on the filing date. The Applicant has met the onus. The ground has not been established to my satisfaction.
Decision and costs
43. Section 55 of the Act relevantly provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, 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.
44. In Apple Inc. v Registrar of Trade Marks, [2014] FCA 1304, at [232], Yates J found that the fate of a trade mark application must be determined as a whole. In circumstances where an opposition has been established in respect of some, but not all, of the goods or services under consideration, the Registrar may proceed to reject the application in its entirety, following that authority. However, the Registrar also has a discretion to offer an amendment allowing an applicant to amend the application to remove goods or services for which a ground of opposition has been established.
45. In this instance I offered the Applicant the opportunity to amend the specifications to read as follows:
Class 35: Retail sale of uncooked meat and meat products (butcher's shop); department store retailing other than for food and drink; online retail services other than for food and drink; purchase order services for others other than for food and drink.
Class 39: Packaging of food; frozen food storage services; cold store keeping services
46. The Applicant agreed to the proposed amendment, formalising the matter in a letter to this Office on 3 February, 2023. The amendment has now been made. Since the opposition has not been established in respect of the amended services, application 2086107 may proceed to registration one month from the date of this decision.
47. If the Registrar is served with a notice of appeal before that time, I direct that the disposition of the application be in accordance with the court’s orders.
48. The usual rule is that costs follow the event. Each party has had a measure of success and I depart from the usual rule, ordering that each meet its own costs.
Debrett Lyons
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
6 February 2023
6
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