Jaimon Thomas v Monsoon Group Aust. P/L - [2023] ATMO 12

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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Jaimon Thomas v Monsoon Group Aust. P/L and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2023] ATMO 12
Decision Date: 6 February 2023

CaseChat Overview and Summary

This matter concerned an opposition by Monsoon Group Aust. P/L (the Opponent) to the trade mark application of Jaimon Thomas (the Applicant). The Opponent asserted ownership of registered trade marks for the word and stylised forms of ‘Kayal’ in connection with Indian cuisine restaurants. The Opponent alleged that the Applicant's use of the trade mark in relation to foodstuffs, particularly in a bar/restaurant context, was in bad faith and likely to cause confusion.

The court was required to determine several key issues. Firstly, it needed to ascertain the significance of the word ‘Kayal’, specifically whether it was descriptive of the Opponent's services or a distinctive term. Secondly, the court had to consider whether the services offered by the Applicant were similar to the Class 43 services covered by the Opponent's registered marks, particularly in light of evolving service offerings such as pre-prepared meals, pick-up, and delivery. Finally, the court was tasked with assessing whether the Opponent possessed a sufficient reputation in Australia by the relevant date, despite limited direct operational presence.

In its reasoning, the court found that the evidence did not conclusively establish that ‘Kayal’ was descriptive of Indian cuisine or its seafood specialities, concluding instead that it was a distinctive term not descriptive of the services. The court also applied established practice regarding the similarity of services, finding that Class 43 services like 'preparation of take away and fast food' and 'take away food services' could be considered similar to Class 35 services of 'retail of food and drink' and Class 39 'food delivery' respectively, especially when dealing with similar marks. However, the court noted a lack of evidence demonstrating local use of the Opponent's marks in Australia that could establish a reputation. While franchise agreements had been signed, no franchisee was operational before the relevant date, and the Opponent's claims of a spillover reputation from its Indian and UK operations were not sufficiently supported by the evidence presented.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

The evidence filed in this matter comprises declarations by the following persons:Evidence in supportJaimon Thomas made 14 May 2021; and Warren Chandler made 14 May 2021Evidence in answerVimal Das made 17 August 2021Evidence in replyJaimon 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. 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.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Trade Mark No	1774537
Logo Mark
Priority Date	2 June 2016
Services	Class 43: Inn keeping (bar, restaurant and accommodation); Restaurant booking or…