Jaimon Thomas v Monsoon Group Aust. P/L

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.