Jaimon Thomas v Monsoon Group Australia Pty Ltd

[2024] ATMO 202

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 2263017 (class 41) – kayal events - in the name of Monsoon Group Australia Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Baxter Patent Attorneys Pty Ltd

Applicant: LegalVision ILP Pty Ltd

Decision:

2024 ATMO 202

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42, 44, 58, 59, 60 and 62A considered – no grounds established – trade mark to proceed to registration

Background

1. This decision concerns an opposition by Jaimon Thomas (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below, filed by Monsoon Group Australia Pty Ltd (‘Applicant’):

Number:  2263017         (‘Application’)

Trade Mark:               kayal events    (‘Trade Mark’)

Filing Date:                13 April 2022  

Specification:            Class 41: Advisory services relating to the organisation of sporting events; Arranging and conducting of sports events; Arranging of sporting events; Booking of tickets for sporting events; Conducting of cultural events; Conducting of educational events; Conducting of entertainment events; Entertainment, cultural or sporting event booking or reservation services provided in relation to a customer loyalty or frequent buyer scheme; Entertainment, cultural or sporting event booking or reservation services provided in relation to a frequent flyer scheme; Handicapping or seeding of sports events; Hosting of sporting events; Lighting technician services for events; Master of ceremony services for parties and special events; Organisation of award ceremony events; Organisation of cultural events being event management services; Organisation of educational events being event management services; Organisation of entertainment events; Organisation of entertainment events being event management services; Organisation of musical events; Organisation of sporting events; Organisation of sporting events being event management services; Organisation of vehicle racing events; Organising events being the provision of entertainment, sporting and cultural activities for charitable purposes; Organising events for cultural purposes; Organising events for entertainment purposes; Organising of entertainment and social events (entertainment, sporting and cultural services); Organising of equestrian events; Organization of cosplay entertainment events; Organization of entertainment events; Party planning [entertainment] for reunion events; Production of sporting events; Providing facilities for sports events; Provision of recreational events; Provision of sporting events; Rental of equipment for use at sporting events; Sound engineering services for events; Timing of sports events; Video editing services for events  (‘Applicant’s Services’)

[1] Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2.     Following examination of the Application as required by s 31 and the subsequent advertisement of acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 14 November 2022 and a Statement of Grounds and Particulars (‘SGP’) on 14 December 2022.  The Applicant filed a Notice of Intention to Defend on 22 February 2023.

3. The parties then proceeded to file their evidence in accordance with the Regulations. The Opponent’s evidence in support of the opposition was filed on 6 June 2023 (‘EIS’) and the Applicant’s evidence in answer was filed on 5 September 2023 (‘EIA’). The Opponent’s evidence in reply was filed on 6 November 2023 (‘EIR’).

4.     Once the evidence stage ended, the parties were given the opportunity to request a hearing.  The Applicant requested a decision without a hearing and the Opponent did not ask to be heard.  This matter has been allocated to me, as a delegate of the Registrar of Trade Marks, to determine.  I do so based on the aforementioned materials.

Grounds, onus and relevant date

5.     In its SGP, the Opponent nominated grounds of opposition under ss 42, 44, 58, 59, 60 and 62A.

6.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

7.     The date at which the rights of the parties are to be determined is 13 April 2022 (‘Relevant Date’) being the filing date of the Application and priority date for the purposes of ss 44 and 60.

Evidence

8.     The following evidence was filed:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Jaimon Thomas, Opponent (‘Thomas’)	5 June 2023	JT-1 to JT-23
Warren Goodwin Chandler, Registered Patent Attorney and Registered Trade Mark Attorney at Baxter IP Patent Attorneys Pty Ltd, attorneys for the Opponent (‘Chandler 1’)	6 June 2023	WGC-1 to WGC-9
Evidence in answer
Vimal Das, sole director of the Applicant (‘Das’)	1 September 2023	VD-1 to VD-14
Evidence in reply
Warren Goodwin Chandler (‘Chandler 2’)	6 November 2023	WGC-1

EIS

9.     Mr Thomas attests that he is the owner and founder of Kayal Restaurants (‘Opponent’s Business’) which commenced business in India in 2001 providing restaurant services.  According to Thomas, the Opponent now operates various licensed restaurants in the United Kingdom, India and since 2019, in Australia under the mark Kayal in word and stylised forms.  Thomas declares that the Opponent’s Business provides food, restaurant services, take away services, deliveries, management and catering services.

10.     The Opponent has registered its Kayal marks in India, Ireland and the United Kingdom and in Australia. Details of the Opponent’s Australian trade mark registration are set out below:

Number	Trade Mark	Priority Date	Specification
2003430 (‘Opponent’s Registration’)	Kayal (‘Opponent’s Mark’)	16 April 2019	Class 43:  Booking of restaurant seats; Inn keeping (bar, restaurant and accommodation); Restaurant services; Restaurants; Salad bar restaurant services

11.     Both Thomas and Chandler 1 refer to Australian registration 1774537 in class 42 filed on 2 June 2016 for  (‘Opponent’s Logo’).  I note that this registration was removed from the Register on the grounds of non-use in 2023 as a result of an application by the Applicant under s 92(4)(b).[4]

[4] Jaimon Thomas v Monsoon Group Australia Pty Ltd [2023] ATMO 93 (Hearing Officer N. Barbey).

12.     Thomas attests that he has offered franchise opportunities for the Opponent’s Business since 2010 and in around 2015, starting contacting potential franchisees in Australia to negotiate a franchise agreement.  Two franchise agreements were signed, one in December 2019 and the other in January 2020.  Extracts of the franchise agreements are provided.  Thomas declares that these franchisees were ‘ready to launch’ businesses under the Opponent’s Mark when ‘COVID-19 hit’ and as part of the agreement with the franchisees, the Opponent agreed to travel to Australia to provide training.  The Opponent travelled to Australia in March 2023 for this purpose.

13.     Thomas provides confidential annual sales figures for the Opponent’s Business globally for 2015-2019 (inclusive) and an estimate of total advertising expenditure since the Opponent first used the Opponent’s Mark.  The Opponent’s Business has been promoted on its website at since 2007 and on its Facebook account.  Extracts from this website using the Wayback Machine and a screenshot of the Facebook account are provided.

14.     According to Thomas, the Opponent’s Business has acquired a reputation for the provision of quality Indian cuisine.  In support of this claim, the Opponent lists various awards the Opponent’s Business has won and exhibits copies of press articles in the United Kingdom and other documents about the Opponent’s Business and celebrity chefs visiting its restaurants.  Thomas also notes that the Opponent’s Business has received over 4,500 reviews on TripAdvisor and is consistently rated over 4 stars in customer reviews on Google.

15.     The remainder of Thomas is directed to the Applicant’s use of Kayal for restaurant and catering services which is not strictly relevant to the present proceedings and hence it is not necessary for me to summarise those claims now.  I will refer to these claims if they are pertinent in my discussion of the grounds of opposition.

16.     Chandler 1 lists various awards and accolades that the Opponent’s Business has received, outlines the Applicant’s use of Kayal in word and logo forms in relation to restaurant and catering services and claims that use by the Applicant is an infringement of the Opponent’s Registration.  According to Chandler 1, the Applicant knew of the Opponent’s Business before the Relevant Date.  Chandler 1 also outlines the research the Opponent’s attorneys undertook into the Applicant and notes that no use of the Trade Mark was identified for the Applicant’s Services. 

EIA

17.     Das declares that the parties have been involved in other proceedings including:

i.Opponent’s opposition to application 2086107 . Das  exhibits copies of the evidence filed by both parties in that proceeding and the delegate’s decision which found that the Opponent had established a ground of opposition under s 44(2) with respect to some of the services claimed by the Applicant;[5]

ii.The non-use action referred to at [11] which resulted in the removal of registration 1774537 for the Opponent’s Logo from the Register and Opponent’s opposition to application by the Applicant under s 92(4)(a) to remove the Opponent’s registration 2003430 Kayal in class 43, which removal application was unsuccessful.  Copies of the evidence filed in these proceedings and the delegate’s decision are exhibited to Das;[6]

iii.A further non-use application filed by the Applicant under s 92(4)(b) for removal of registration 2003430.

[5] Jaimon Thomas v Monsoon Group Australia Pty Ltd [2023] ATMO 12 (Hearing Officer D. Lyons).

[6] Jaimon Thomas v Monsoon Group Australia Pty Ltd (n 4).

18.     Das claims that the Trade Mark was chosen as the colloquial name for a lake in his home town in India as the word Kayal roughly translates to backwater or lake. 

19.     The Applicant was incorporated in April 2017 to operate a catering business named KAYAL CATERING.  Das declares that the Applicant concurrently operated a restaurant business under the Trade Mark.  In March 2020, the Applicant opened a supermarket under the mark KAYAL FOODS to sell Indian food, drinks and sweets as well as the Applicant’s own branded KAYAL food products.

20.     In June 2020, Das declares that he incorporated KayalFoods Pty Ltd (‘KFPL’) to operate Kayal Events which was registered as a business name in April 2022.  Das declares that the Applicant is the owner of the Trade Mark for ‘asset protection reasons’.  KFPL and the Applicant are related entities in that Das is the sole director and secretary of both entities and majority shareholder of KFPL (with the Applicant being the only other shareholder).

21.     Das declares that the Applicant’s Services under the Trade Mark are primarily promoted on its Instagram account with the handle @kayalevents.  Screenshots of this account from March 2022 are provided.

22.     Das details various events held by reference to the Trade Mark after the Relevant Date and planned future events.

EIR

23.     Much of Chandler 2 amounts to submissions rather than evidence.  However, Chandler 2 claims that the Applicant has filed numerous trade mark applications in Australia for the trade marks (or misspellings thereof) of third parties.  Details of the applications filed by the Applicant are provided.

Discussion

Section 44

24.     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)  it 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.

25.     To successfully oppose the Application pursuant to s 44, the Opponent must establish that the trade mark(s) upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

·has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

·is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

·is in respect of similar services and/or closely related goods to the Applicant’s Services (‘the third requirement’).

26.     In its SGP, the Opponent relies on the Opponent’s Registration and the now removed registration 1774537 for the Opponent’s Logo.  I confirm that both of these marks satisfy the first requirement.  In considering the second and third requirements, it is only necessary to consider the Opponent’s Registration.

27.     The test for whether two marks are substantially identical was set out by Windeyer J in TheShell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd,[7] where his Honour stated:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

[7] [1963] HCA 66; (1963) 109 CLR 407, 414.

28.     More recent decisions have placed emphasis on the relevance of the essential elements or ‘dominant cognitive cues’ of the marks.   In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’),[8] the Full Court held that a comparison of marks is to be carried out cognisant of the essential elements of the trade marks, noting that essential elements are unlikely to be found in mere descriptive elements.  In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd,[9] use of a composite mark containing HARBOUR LIGHTS was found to be use of HARBOUR LIGHTS and in Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd,[10] ANCHORAGE CAPITAL was found to be substantially identical to ANCHORAGE CAPITAL PARTNERS.  

[8] [2017] FCAFC 83, [52] (Greenwood, Jagot, and Beach JJ).

[9] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ).

[10] (2018) 351 ALR 436; [130] (Nicholas, Yates and Beach JJ) .

29.     The present comparison is between Kayal and kayal events.  In the context of services relating to events, the element ‘events’ in the Trade Mark is descriptive and makes a relatively unimportant contribution to the overall impression of the Trade Mark.  The essential element of the Trade Mark is ‘kayal’ which is the entirety of the Opponent’s Mark.  In my opinion, the Trade Mark is substantially identical to the Opponent’s Mark.

30.     Turning to the third consideration, I must determine whether the Applicant’s Services are similar to the services of the Opponent’s Registration.

31.     Section 14(2) provides that two sets of services are similar if they are the same or of the same description.  The test for similar services is essentially the same as for whether two sets of goods are of the same description namely whether the nature, purpose and trade channels are the same.[11]  No single consideration is conclusive in itself[12] and it is immaterial that the services of the parties might have some features in common which are incidental to their essential nature.[13]  The focus is on the totality of the two sets of services rather than individual aspects of the services.[14]

[11] MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, 243

[12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606 (Kitto J).

[13] Australian Tourism Company Ltd and Others v Mid Sydney Pty Ltd 42 IPR 561, 567 (Burchett, Sackville and Lehane JJ).

[14] Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd [2019] FCA 719, [125] (Davies J).

32.     The Applicant’s Services are essentially organising and producing events whereas the Opponent’s services are restaurant services.  Although a restaurant may on occasion host an event such as a birthday party, the purpose of celebrating the occasion is for the provision of food and drink rather than the organising of the event.  In general, a consumer would not approach a restaurant to organise and manage an event and the restaurant would not be responsible for invitations or other logistics but rather only for providing the venue and foods and drink.  Similarly, some events are directed to the provision of food and beverages such as a food and wine fair but these types of events are not typically organised by a restaurant, even though a restaurant may provide food and beverages at such an event.  Organisation of an event involves numerous steps such as creation, management, planning production, supervision and logistics including identifying a venue, target audience and objectives; meeting legal requirements; securing entertainment, exhibitors and/or vendors, suppliers and contractors for catering, first aid, traffic management, waste management;  publicising the event and selling tickets.  These are not the sorts of activities typically undertaken in the provision of restaurant services.  In my assessment and absent any evidence to demonstrate otherwise, I consider that the two sets of services are different in their nature, purpose and trade channels. 

33.     In my opinion, the Applicant’s Services are not similar to the restaurant services of the Opponent. Accordingly, the s 44 ground of opposition is unsuccessful.

Section 58

34.     Section 58 provides that a trade mark may be opposed on the basis that the applicant is not the owner of the mark.

35.     Ownership of a trade mark is established either by authorship and prior use, or by the combination of authorship, the filing of the application and an intention to use or authorise use.[15] 

[15] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ).

36.     The trade mark for which an opponent claims prior use must be at least substantially identical to the opposed mark[16]  and used for the ‘same kind of thing’.[17]

[16] Carnival Cruise Lines v Sitmar Cruises Ltd [1994] FCA 68 (Gummow J).

[17] Re Hicks's Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636.

37.     I have already found at [29] that the Trade Mark is substantially identical to the Opponent’s Mark and therefore, the relevant question is whether the Opponent has used the Opponent’s Mark for the same kind of thing as the Applicant’s Services.

38.     The Opponent has not demonstrated any use of the Opponent’s Mark as a trade mark in Australia before the Relevant Date.  Moreover, the Opponent’s Mark has been used overseas for restaurant services and the Opponent has only authorised its Australian franchisees to use the Opponent’s Mark for restaurant services.  The requirement that the Opponent’s services be the same kind of thing is a more onerous test than ‘similar services’ and given that I have found the Applicant’s services are not similar to restaurant services, it follows that the two sets of services are not the same kind of thing.

39.     Accordingly, the s 58 ground of opposition fails.

Section 59

40.     Section 59 provides that the Trade Mark may be opposed on the ground that the Applicant did not intend to use or authorise use of the mark.

41.     It is well established that applying for registration of a trade mark carries a presumption that an applicant intends to use the mark.[18]  The onus is on an opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date.[19]  If an opponent makes out a prima facie case, the evidentiary onus shifts to the applicant to show its intention to use the trade mark at the filing date.[20]

[18] Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J).

[19] Aston v Harlee Manufacturing Co [1960] HCA 47 (Fullagar J).

[20] Suyen Corp v Americana International Ltd (n 18) [190].

42.     In its SGP, the Opponent particularised this ground as follows:

The Applicant knew or ought to have known of the Opponent’s prior rights in the Opponent’s marks at the time of filing the application for registration of the Opposed mark. The Applicant’s business activities reside in the same kind of industry as the Opponent’s services. The Opposed mark includes services that are speculative, that is, they do not reflect the actual business conducted by the Applicant and are specified for the purpose of creating a commercial roadblock for the Opponent’s commercial enterprise in the same kind of industry. Hence the applicant does not intend to use the mark in relation to some or all of the services specified in the Opposed mark.

Further, there has been no use of the Opposed mark by the Applicant.

On the basis of the above, the Applicant does not intend to use, or authorise the use of, the trade mark in Australia, or assign the trade mark to a body corporate for use by the body corporate in Australia, in relation to the services specified in the Opposed mark.

43.     Das declares that it has used the Trade Mark in Australia for the Applicant’s Services.  This claim is supported by registration of the Trade Mark as a business name in April 2022 and the promotion of events on its Instagram account from March 2022.  Moreover, in August 2022, the Applicant held the KAYAL HI-GH-ON-MU-SIC event, in collaboration with Wonderwall Media, at the Penrith Panthers Club and subsequently at Mt Gravatt Showgrounds in Brisbane and Astor Theatre in Perth.  An extract from the Ticketek website is annexed to Das showing tickets being offered for sale to KAYAL HI-GH-ON-MU-SIC for the show on 5 November 2023 in Perth.  In addition to music events, the Applicant has hosted a cultural dance event in Sydney and Melbourne in April 2023 in collaboration with Indiegaga, another event management business.

44.     I am satisfied on my assessment of the evidence that the Applicant had the requisite intention to use the Trade Mark for the Applicant’s Services and has in fact used the mark for some of the services sought to be registered.  Das declares that it intends to expand its organisation of events beyond music and cultural events.  It is not necessary for the Applicant to have an immediate intention to use the Trade Mark in Australia for all of the claimed services.  As Jacobson J stated in Health World Limited v Shin-Sun Australia Pty Ltd:

In my view, the intention…is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[21]

[21] [2008] FCA 100, [160].

45.     I am satisfied that the Applicant had a sufficiently settled intention to use the Trade Mark for the Applicant’s Services at the Relevant Date.  Accordingly, the s 59 ground of opposition is unsuccessful.

Section 60

46.     Section 60 provides:

Section 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 Goods 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 Goods, 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.

47.     To establish a ground of opposition under s 60, an opponent must first demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market and secondly that as a result of that reputation, use of the trade mark would be likely to deceive or cause confusion.   

48.     Justice Kenny considered the meaning of ‘reputation’ in McCormick & Co Inc v McCormick and based on the Macquarie Dictionary definition, her Honour concluded it refers to ‘the recognition of the [trade mark] by the public generally.’[22]  This means the reputation must be amongst a ‘significant or substantial’ number of Australian consumers, tempered by the nature of the relevant market.[23]  

[22] [2000] FCA 1335, [81].

[23] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

49.     The Opponent must establish the ‘existence and extent of reputation’ as a matter of fact.[24]  In terms of establishing reputation, in Rodney Jane Racing Pty Ltd v Monster Energy Company, O’Bryan J observed that:

The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or Goods to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally...[25] 

[24] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [77] (Lockhart J).

[25] [2019] FCA 923, [83].

50.     In its SGP, the Opponent claims to have acquired a significant reputation in the Opponent’s Mark and Opponent’s Logo (collectively ‘Opponent’s Marks’) in Australia before the Relevant Date as a result of its use of these marks around the world since at least 2001.

51.     The Opponent’s evidence does not demonstrate any use of the Opponent’s Marks in Australia beyond the signing of two franchise agreements which does not appear to have resulted in the operation of any restaurants in Australia before the Relevant Date.  With respect to use of the Opponent’s Marks overseas, this use appears to be limited to a single restaurant in India from 2001, and from 2006, five licensed restaurants in regional towns and cities of the United Kingdom.  The awards that the Opponent has received are largely limited to those areas of the United Kingdom in which the Opponent has restaurants.  Despite trading for a significant period of time, the Opponent’s social media account has limited followers and there has not been a significant number of reviews on TripAdvisor or Google given the length of time the Opponent has been operating.  Although the Opponent has produced a few emails suggesting that customers who have patronised the Opponent’s overseas venues have assumed a connection between the Opponent and restaurants operated by the Applicant, this does not support a finding that the Opponent has a spillover reputation in Australia or that use of the Trade Mark for the Applicant’s Services is likely to deceive or cause confusion.

52.     I am not satisfied on the evidence that the Opponent had a reputation in the Opponent’s Marks amongst a significant section of the Australian public before the Relevant Date nor that the Applicant’s use of the Trade Mark for the Applicant’s Services is likely to deceive or cause confusion.  The s 60 ground is not successful.

Section 42(b)

53.     Section 42(b) provides that a trade mark may be opposed on the basis that use of the mark will be contrary to law.  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[26]

[26] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

54. The Opponent claims in its SGP that in light of the Opponent’s reputation in the Opponent’s Marks, the Applicant’s use of the Trade Mark will contravene ss 18 and 29 of the Australian Consumer Law Schedule 2 to the Competition and Consumer Act 2010 (Cth) (‘ACL’) or constitute the tort of passing off.

55. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60.[27]

[27] See e.g.: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ), Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

56. As already established in respect of s 60, I do not believe that use of the Trade Mark in respect of the Applicant’s Services is likely to deceive or cause confusion. It follows that, on the stricter tests posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation in breach of the ACL.

57.     Furthermore, I do not consider that use of the Trade Mark will amount to passing off.  Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation addressed the relationship between s 52 of the Trade Practices Act 1974 (Cth) (the equivalent provision to s 18 of the ACL) and passing off. His Honour considered that:

The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[28]

[28] [1989] FCA 506, [40] (citations omitted).

58. For similar reasons that I do not consider the Applicant’s use of the Trade Mark will contravene the ACL, I am not satisfied that the use of the Trade Mark would involve passing off.

59.     As such, I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

Section 62A

60.     Pursuant to s 62A, the registration of a trade mark may be opposed on the grounds that the application was made in bad faith.

61.     There have been two Federal Court decisions that substantively considered s 62A: Fry Consulting v Sports Warehouse Inc (No 2)[29] (Fry Consulting) and DC Comics v Cheqout Pty Ltd[30] (DC Comics). The following propositions emerge from each of these two decisions relevant to the present opposition:

[29] [2012] FCA 81 (‘Dodds-Streeton J) (Fry Consulting).

[30] [2013] FCA 478 (Bennett J) (DC Comics).

(a)Bad faith for the purposes of s 62A must be [as at the priority date] and must relate to the making of the subject of each of the applications:[31]

[31] Fry Consulting (n 29) [145].

(b)Section 62A does not require the opponent to establish that the trade mark’s use would result in deception or confusion. However, evidence to that effect may be persuasive in considering whether the application to register a mark was in bad faith:[32]

[32] DC Comics (n 30). [76].

(c)       The onus of proving bad faith rests upon the opponent:[33]

[33] Fry Consulting (n 29). [145].

(d)All of the circumstances surrounding the application to register the mark are relevant:[34]

(e)The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading:[35]

(f)While the seriousness of an allegation of bad faith that “impugns the character of an individual or collective character of a business” requires correspondingly cogent evidence, the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt:[36]

(g)Conduct which falls “short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area” is sufficient. Dishonesty is not required. Bad faith requires both subjective and objective elements; it is a combined test:[37]

(h)Circumstances where, following prolonged competition between the parties, there is a subsequent application to register a series of nearly identical trade marks can amount to conduct such that a reasonable person standing in the shoes of the applicant would have been aware that it ought not apply for trade mark registration:[38]

(i)Subjective naivety does not exclude a determination of bad faith for the purposes of s 62A:[39]

(j)A prior business connection with and knowledge of the opponent by the applicant such that a person standing in the shoes of the applicant should have known that he should not have applied for a trade mark deceptively similar to that used by the opponent is sufficient for a finding of bad faith:[40]

(k)An act of bad faith cannot be cured by an action after the date of the application[41].

(l)Use of a trade mark together with other indicia associated with the trade mark owner may lead to an inference of bad faith:[42]

[34] DC Comics (n 30). [62].

[35] Ibid.

[36] Fry Consulting (n 29). [145].

[37] Ibid [147], [148] and [165].

[38] Ibid [152].

[39] Ibid [154] and [155].

[40] Ibid [156].

[41] DC Comics (n 30), [62].

[42] Ibid [73].

62.     In its SGP, the Opponent alleges that the Applicant knew, or should have known, of the Opponent’s use of the Opponent’s Marks and filed the Application to take advantage of the Opponent’s reputation in those trade marks.

63. According to Thomas and Chandler 1, the Opponent’s attorneys sent a letter of demand to the Applicant dated 26 June 2019 alleging that the Applicant’s use of Kayal for restaurant services was infringing registration of the Opponent’s Marks. Thomas attests that he also contacted the Applicant directly by telephone. Moreover, the Opponent’s opposition to the Applicant’s application 2086107 and the Applicant’s non-use actions against the Opponent’s registrations for the Opponent’s Mark, noted at [17] above, were on foot well before the filing of the Application. Accordingly, it is apparent that the Applicant was well aware of the Opponent and its claim to have a reputation in the Opponent’s Marks before the filing of the Application.

64.     However, mere knowledge before the relevant date of another person’s business or trade marks without more does not in itself constitute a basis for a finding of bad faith.[43] 

[43] Fry Consulting (n 29).

65.     I have found that the Opponent did not have a reputation in Australia at the Relevant Date.  Das declared that he did not believe that the Opponent was using the mark Kayal in Australia.  This belief does not seem entirely unfounded given the Applicant’s success in removing the Opponent’s registration 1774537 on the grounds of non-use.  Even if the Opponent’s Marks were in use in Australia for restaurant services, the Applicant could still have believed that it was free to use the Trade Mark for the Applicant’s Services which I have found are not similar to restaurant services. 

66.     Chandler 2 appears to try to support its claim that the Application was filed in bad faith by alleging that the Applicant has engaged in a pattern of behaviour in applying for the trade marks of third parties.  The problem with this claim is that it has not been pleaded in the SGP and the Applicant has not had an opportunity to respond to that evidence which is not strictly evidence in reply.  Secondly, the Opponent has not provided any evidence that the trade marks in question are used or registered by another party for the relevant goods and services.  A number of the applications are for marks containing or consisting of ‘kayal’ or misspellings of ‘kayal.’

67.       The Applicant has attested to the reason for its adoption of the mark Kayal as well as its intention to operate and operation of various businesses under this mark.  The filing of applications for marks containing or consisting of Kayal is consistent with this intention and the Applicant’s use of such marks for different businesses.

68.     In all the circumstances, I am not satisfied that the filing of the Application was in bad faith and the s 62A ground of opposition is unsuccessful.

Decision

69. Section 55 of the Act relevantly provides:

55  Decision

(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 Goods 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.

70.     I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, the Trade Mark which is the subject of the Application may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal, I direct that registration of the Trade Mark shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

71. Both parties sought an award of costs and as costs generally follow the event, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

16 October 2024