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…

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.

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Details

Case: [2024] ATMO 202
Decision Date: 16 October 2024

CaseChat Overview and Summary

Jaimon Thomas opposed the registration of the trade mark application number 2263017, "kayal events", in Class 41, by Monsoon Group Australia Pty Ltd, before the Administrative Appeals Tribunal (AAT). The opposition was based on grounds including that the mark was not capable of distinguishing the applicant's services and that it was deceptively similar to Mr Thomas's earlier trade mark "KAYAL" registered in Class 41.

The Tribunal was required to determine whether the trade mark "kayal events" was capable of distinguishing the services offered by Monsoon Group Australia Pty Ltd, and whether it was deceptively similar to Mr Thomas's registered trade mark "KAYAL". The Tribunal also considered whether the applicant had established that the mark had acquired distinctiveness through use.

In its reasoning, the Tribunal applied the principles of trade mark law concerning distinctiveness and deceptive similarity. It noted that the word "kayal" itself did not have a readily apparent meaning in relation to the services in Class 41, which include entertainment services and event management. The Tribunal found that the addition of the word "events" to "kayal" did not fundamentally alter the overall impression of the mark, and that the marks "kayal events" and "KAYAL" were deceptively similar. The Tribunal concluded that the applicant had not demonstrated that the mark had acquired distinctiveness through use prior to the filing date of the application.

The Tribunal decided to refuse the registration of the trade mark application.

Orders