Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods

• Jurisdiction: Australia Federal only
• Judgment Date: 18 May 2023
• Neutral Citation: [2023] FCA 487
• Date: 18 May 2023
• Court: Federal Court

Federal Court of Australia

Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487

Appeal from:	AD Padmasingh Isaac (t/as Aachi Spices and Foods) v Ragopika Pty Ltd[2021] ATMO 47
File number(s):	WAD 149 of 2021
Judgment of:	KENNETT J
Date of judgment:	18 May 2023
Catchwords:	TRADE MARKS – appeal from decision of a delegate of the Registrar of Trade Marks refusing registration application – whether use of mark sought to be registered would be likely to mislead or deceive – whether registered mark registered in respect of closely related goods – whether use of mark sought to be registered would contravene the Australian Consumer Law – whether appellant owner of mark sought to be registered – whether application made in bad faith – grounds of opposition not made out
Legislation:	Competition and Consumer Act 2010 (Cth), Sch 2 (Australian Consumer Law) ss 18, 29(1)(g) Trade Marks Act 1995 (Cth) ss 12, 19(3), 20, 42, 44, 52, 55, 56, 57, 58, 60, 62A, 72(1), 197 Trade Marks Act 1955 (Cth) Trade Marks Regulations 1995 (Cth) s 3.1, Sch 1
Cases cited:	Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd[2020] FCA 1530 Bickfords Australia Pty Ltd v Frank Ward [2008] ATMO 84 Briginshaw v Briginshaw(1938) 60 CLR 336 Campomar Sociedad, Limitada v Nike International Limited(1999) 202 CLR 45 Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co [1983] FCA 145; (1983) 48 ALR 511 Community First Credit Union Limited v Bendigo and Adelaide Bank Limited[2019] FCA 1553 ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 DC Comics v Chequout Pty Ltd[2013] FCA 478; 212 FCR 194 Dunlop Aircraft Tyres Limited v the Goodyear Tire and Rubber Company [2018] FCA 1014 Enagic Co Ltd v Horizons (Asia) Pty Ltd [2021] FCA 1512 Food Channel Network Pty Ltd v Television Food Network GP[2010] FCAFC 58; 185 FCR 9 Fry Consulting Pty Ltd v Sports Warehouse Inc[2012] FCA 81; 201 FCR 565 GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 Harrison v Teton Valley Trading Co Ltd[2004] 1 WLR 2577 Holder of IP Pty Ltd AFT Intelligent Assets Trust v Joseph Buttita [2020] ATMO 169 Jafferjee v Scarlett(1937) 57 CLR 115 Kicking Horse Coffee Co. Ltd [2018] ATMO 193 Lomas v Winton Shire Council[2002] FCAFC 413 McCormick & Company Inc v McCormick[2000] FCA 1335; 51 IPR 102 McDonald's Inc v Future Enterprises Pte Ltd [2007] ATMO 22 Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; 251 FCR 379 Qantas Airways Ltd v Edwards [2016] FCA 729 Raghu Lakshminarayanan vs M/S Fine Tubes (2007) 5 SCC 103 Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 Renaud Cointreau & Cie v Cordon Bleu International LTEE[2001] FCA 1170; 193 ALR 657 Rodney Jane Racing Pty Ltd v Monster Energy Company[2019] FCA 923 Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[2023] HCA 8 Sizzler Restaurants International Inc v Sabra International Pty Ltd (1990) 20 IPR 331 Societe Des Produits Nestle v Cosi Sandwich Bar (2002) 56 IPR 305 Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd[2003] FCA 1502; 134 FCR 51 Winton Shire Council v Lomas[2002] FCA 288; 119 FCR 416
Division:	General Division
Registry:	Western Australia
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	88
Date of hearing:	5-6 April 2023
Counsel for the Appellant:	Mr M Blandford
Solicitor for the Appellant:	Su & Co
Counsel for the Respondent:	Dr D Cox
Solicitor for the Respondent:	K&L Gates

ORDERS

		WAD 149 of 2021
BETWEEN:	RAGOPIKA PTY LTD Appellant
AND:	A D PADMASINGH ISAAC T/A AACHI SPICES AND FOODS Respondent

order made by:	KENNETT J
DATE OF ORDER:	18 MAY 2023

THE COURT ORDERS THAT:

1. The decision of the Delegate in decision [2021] ATMO 47 to refuse to register trade mark application number 1909008 in favour of the appellant be set aside.

2. The respondent’s grounds of opposition in respect of trade mark application number 1909008 by the appellant be dismissed.

3. Trade mark application number 1909008 be registered in favour of the appellant.

4. If no party files written submissions seeking a different costs order by 1 June 2023:

   1. the costs order made by the Delegate be set aside and instead there be an order that the respondent pay the appellant’s costs of the proceedings before the Delegate to be taxed if not agreed; and

   2. the respondent pay the appellant’s costs of the appeal to be taxed if not agreed.

5. If either party files written submissions as permitted by order 4, any submissions in response be filed by 15 June 2023.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

KENNETT J

Background

1. The appellant (Ragopika) is the corporate vehicle through which Mr Iyyappan Pillai (who goes by the name Mr Pillai) operates an Indian restaurant in Perth known as Aachi Indian Cuisine. The restaurant has been operating under that name since around June 2016.

2. The respondent is described as a “proprietary concern”, founded in 2006 by Mr AD Padmasingh Isaac (Mr Isaac). It is part of a group of enterprises under Mr Isaac’s control, based principally in Chennai, India, and carrying on a business that he founded in 1995 under the overall name Aachi. A “proprietary concern” is evidently a creature of Indian rather than Australian law, and the meaning of the expression was not explored in the evidence. I understand it to mean, in effect, the name under which one or more persons conduct a business. A “proprietary concern” is not a company and, it would seem, does not have a legal personality distinct from its owner or owners: Raghu Lakshminarayanan vs M/S Fine Tubes (2007) 5 SCC 103. For present purposes there is no need to distinguish between the various entities in the group, and I refer to the respondent and related entities collectively as Aachi. Aachi produces a range of packaged foods such as spices and spice mixes, pickles, jams, wheat products and ghee which are sold in several countries including Australia. Since about 1998 Aachi has also operated “quick serve” restaurants in Chennai. Its packaged food products have been available in shops in Australia since 2008.

3. “Aachi” is a word in the Tamil language which, depending on the context, can mean “grandmother” or can be a respectful way of addressing or referring to an older woman. There was a difference of view between the parties as to how commonly the word is used and how it should be understood, but not a fundamental one. Ragopika’s position was that “Aachi”
   is a commonly used word and its evidence emphasised the meaning “grandmother”. Aachi did not accept that the word was a commonly used one, but also did not suggest that it was especially arcane. I have proceeded on the basis that “Aachi”...