Louder World Pty Ltd v Decibles Pty Ltd and Gaurav Gosain
[2025] ATMO 154
•4 August 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Louder World Pty Ltd to registration of trade mark application number 2380290 (class 41) – KALA CHASHMA - in the name of Decibles Pty Ltd and Gaurav Gosain
Delegate: | Tracey Berger |
Representation: | Opponent: Self-represented Applicants: Self-represented |
Decision: | 2025 ATMO 154 Trade Marks Act 1995 (Cth) – opposition under section 52 – s 58 considered and established – trade mark registration refused |
Background
This is a decision on the opposition by Louder World Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below filed in the name of Decibles Pty Ltd and Gaurav Gosain (‘Applicants’):
Trade Mark: KALA CHASHMA (‘Trade Mark’)
Number:2380290 (‘Application’)
Filing Date: 15 August 2023 (‘Relevant Date’)
Specification: Class 41: Arranging of entertainment; Arranging and conducting of entertainment events; Arranging of musical entertainment; Arranging of exhibitions for entertainment purposes; Entertainment services provided in virtual environments; Fashion show services (entertainment); Night club services (entertainment); Organisation of entertainment events; Organisation of exhibitions for entertainment purposes; Organising events for entertainment purposes; Organising of entertainment; Party planning (entertainment); Live entertainment; Entertainment services; Cruise ship entertainment services
(‘Applicants’ Services’)
Endorsement: The Applicant has advised that the English translation of the transliterated Hindi word/phrase KALA CHASHMA appearing in the trade mark is Black Shades.
[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Following the advertisement of the acceptance of the Application for possible registration, the Opponent filed a Notice of Intention to Oppose on 29 January 2024, followed by a Statement of Grounds and Particulars (‘SGP’) on 19 February 2024 (subsequently rectified). The Applicants filed a Notice of Intention to Defend on 8 June 2024.
The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed evidence in support (‘EIS’) on 9 September 2024 followed by the Applicants’ evidence in answer (‘EIA’) filed on 19 December 2024. The Opponent filed its evidence in reply on 20 February 2025.
Once the time for filing evidence had ended, the parties had an opportunity to request a hearing. Neither party asked to be heard and the Opponent requested a decision without a hearing. I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine. I do so based on the aforementioned materials.
Grounds and onus
In its SGP, the Opponent nominated grounds of opposition under ss 43, 58 and 60. 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 on the balance of probabilities.[3] The rights of the parties are to be determined at the Relevant Date being both the filing date and priority date of the Trade Mark.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
and Edelman JJ).
Evidence
The following evidence was filed:
| 7. Declarant and Position | Date | Exhibits/Annexures |
| EIS | ||
| Raj Khanna, director of the Opponent (‘Khanna’) | 9 September 2024 | 1 to 7 |
| EIA | ||
| Gaurav Gosain, director of Decibles Pty Ltd and IndianClubX (‘Gosain’) | 15 December 2024 | A and B |
| EIR | ||
| Raj Khanna (‘Khanna 2’) | 23 February 2024 | ‘Response to Annexure A’ and Exhibit 1 |
EIS
The Opponent claims that it has used the Trade Mark since 30 September 2022 when it held its first Kala Chashma event at the Bollywood Club. Since that time it has organized five series of events under the Trade Mark held in Melbourne, Sydney and Singapore. The dates and venues of these events are provided being 8 events in total from 30 September 2022 to 22 June 2024. Khanna also provides both the total revenue and gross revenue generated from these events, neither of which is substantial.
Khanna claims to have sent emails and newsletters promoting its events under the Trade Mark to over 800,000 individuals with over 2,700 people attending its Kala Chashma events. Khanna provides reports of its email campaigns dating from 27 September 2022 promoting its events.
The Opponent also promotes its events under the Trade Mark on Facebook and Khanna claims its Facebook promotion has reached over 1 million people (which appears to include promotion of the events in Singapore). Khanna provides the average engagement rate of these promotions and the total expenditure on Facebook Advertising Analytics. Examples of the Facebook promotions are provided and it appears from these promotions that the Opponent’s events are Bollywood-themed entertainment events featuring music, DJs, live performances and dancing where guests are encouraged to wear black & white and black sunglasses (‘Opponent’s Services’).
EIA
The Applicants claim that the Trade Mark has been continuously used since 26 August 2023 when Decibles Pty Ltd (‘Decibles’) held its first event under the Trade Mark. Since that time, a total of 10 events have been organised across Sydney and Melbourne between 26 August 2023 to 7 December 2024 with about 3,500 people attending in total. Gosain details the total revenue generated from these events which is low.
According to Gosain, the Applicants’ social media promotion of its events under the Trade Mark is estimated to have reached 275,000-500,000 people. An estimate of the Applicants’ expenditure for ‘brand building and advertisements’ is provided and this expenditure is not significant. From the social media posts provided promoting the Applicants’ events, it appears that these are Bollywood themed nightclub parties
Most of the remainder of Gosain constitutes submissions on the grounds of opposition and it is not necessary to summarise those arguments at this time. However, I note that in relation to the s 58 ground, Gosain claims that the Opponent is not the first user of the Trade Mark in Australia as Gill Products and Dreamz Events Perth both used the Trade Mark for their events in December 2016. Examples of what appear to be different Bollywood themed events hosted by Dreamz Events Perth and other entities in 2016, 2019 and 2020 are provided.
EIR
Khanna 2 responds to the Applicants’ evidence and submissions contained in the EIA. In particular, Khanna 2 asserts that there has been consumer confusion as a result of the Applicants’ use of the Trade Mark with the Opponent receiving queries about whether the Applicants’ events are associated with the Opponent and erroneously purchasing tickets for the Applicants’ events instead of the Opponent’s events.
By the time of the EIR, the Opponent had hosted 12 events and updated revenue figures are provided.
With respect to the third party events held under the Trade Mark such as those of Gill Productions and Dreamz Perth in 2016, Khanna 2 claims that these were isolated incidents and neither third party maintained consistent use of the mark.
Discussion
Section 58
Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Ownership of a trade mark can be established through authorship and use of a trade mark,[4][ or, in the absence of use, a combination of authorship, the filing of an application or an intention to use the trade mark.[5]
[4] Moorgate Tobacco Co Ltd v Philip Morris Ltd (no 2) [1984] HCA 73; 156 CLR 414 (Deane J); Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [49] and [55] (Keane CJ, Stone and Jagot JJ).
[5] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ) (‘Pham’); The Shell Co of Australia Ltd v Rohm and Haas Co [1948] HCA 27; (1948) 78 CLR 601, 627 (Dixon J).
The concept of trade mark ownership was discussed in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Court of the Federal Court observed:
[O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[6]
[6] [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ).
To succeed in this ground of opposition, the Opponent must establish the following:
i.The Trade Mark is identical, or substantially identical, to an earlier trade mark;[7]
ii.The earlier trade mark has been used in respect of services that are ‘the same kind of thing’ as the Applicants’ Services.[8]
iii.Another person has an earlier claim of ownership based on use of the earlier trade mark in Australia before the Relevant Date.[9]
[7] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[8] Re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).
[9] Pham (n 5) [50] (Greenwood, Jagot and Beach JJ).
In its SGP, the Opponent claims that the Applicants are not the owner of the Trade Mark because the Opponent has used KALA CHASHMA since 30 September 2022 ‘predating Decibles’ use and trade mark filing’.
The mark the Opponent claims to have used is identical to the Trade Mark.
I am also satisfied that the Opponent has used the Trade Mark in relation to services which are the same kind of thing as the Applicants’ Services. Services are the same kind of thing if they are ‘true equivalents’.[10] The Opponent’s Services are the same as many of the Applicants’ Services. Whilst some items in the specification of the Application are broader than the Opponent’s Services and some (eg. Fashion show services) are not the same kind of thing, the services for which both parties have used the Trade Mark are essentially the same.
[10] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, (Greenwood, Besanko and Katzmann JJ)
The Opponent’s evidence supports its claim that it has used the Trade Mark in Australia since 20 September 2022 for the Opponent’s Services. The Opponent has provided evidence of its social media posts and email campaigns promoting its KALA CHASHMA event held in September 2022 as well as attendance numbers, photos and other supporting evidence for this and subsequent events. I am satisfied that the Opponent has used the Trade Mark for the Opponent’s Services since September 2022. This use predates the filing of the Application and any use of the Trade Mark by the Applicants.
Whilst the Applicants claim that the Opponent is not the owner of the Trade Mark because the mark was used in 2016 by Gill Productions and Dreamz Events Perth, the purpose of this proceeding is not to determine whether the Opponent is the owner of the Trade Mark but only whether or not the Applicants are not the owner. The Applicants have provided examples of other parties using KALA CHASHMA for events but there is no evidence that the Trade Mark was continuously used by any of these parties. This evidence supports the Opponent’s case that the Applicant is not the owner of the Trade Mark. The fact that the Opponent has demonstrated that it used the Trade Mark for the Opponent’s Services, which are the same kind of thing as many of the Applicants’ Services, before the filing of the Application or any use of the Trade Mark by the Applicants is sufficient to establish the s 58 ground of opposition.
Given that the Opponent has established the s 58 ground of opposition with respect to most of the Applicant’s Services, I do not consider it appropriate to offer the Applicant the opportunity to amend the Application.
Having found the s 58 ground of opposition established, it is unnecessary that the remaining grounds be considered.
Decision
Section 55 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 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.
The Opponent has established a ground of opposition under s 58 and accordingly, I refuse to register trade mark number 2380290. This refusal will be recorded one month from the date of this decision unless the Registrar of Trade Mark is served with a notice of appeal. If an appeal is filed, the disposition of the application shall be in accordance with the Court’s order or direction.
The Applicants requested an award of costs in the Notice of Intention to Defend enlivening the issue of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicants under s 221 in line with Schedule 8 of the Regulations.
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
4 August 2025
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