On 22 February 2018, Ragopikia Pty Ltd (the Applicant) applied to register the trade mark AACHI INDIAN CUISINE for “restaurant services” and “fast food outlet” in class 43. The trade mark application was accepted but subsequently opposed by A.D. Padmasingh Isaac (the Opponent).
The Opponent led five different grounds of opposition, but only the section 60 ground (relating to a prior trade mark with reputation) was considered.
The Opponent was founded by Mr A.D. Padmasingh Isaac (the Aachi Business) in India in 1995. The Aachi Business manufactures spices in India and is headquartered in Chennai, Tamil Nadu in South India. The Aachi Business has business operations globally in the area of food related goods and restaurant services.
The Opponent is the owner of Australian Trade Mark Registration No. 1219486 for the plain word AACHI registered in respect of food related goods in classes 29 and 30. The Opponent is also the owner of a pending trade mark application for the plain words AACHI KITCHEN and a pending international registration designating Australia for the mark for similar food related goods and services.
The Applicant, founded by Mr Nadarajan Iyyappan Pillai, owns a business in Perth and has operated since May 2016. The business operates under the trade mark which Mr Pillai states was named in remembrance of his grandmother, whom he called ‘Aachi’, a term used by his community in Tamil Nadu as an endearment for ‘grandmother’. The meaning of Aachi was not disputed and the Opponent accepts that in parts of South India, the word is used for ‘grandmother’. Notably, the Opponent’s registration and applications included the endorsement that Aachi means ‘elderly lady with respect’, which is not inconsistent with the meaning stated by the Applicant.
Section 60 – Reputation in Australia
Under Australian law, the registration of a trade mark may be opposed on the basis that (i) another trade mark had, before the priority date of the opposed application, acquired a reputation in Australia and (ii) as a result of that reputation, the use of the opposed trade mark would be likely to deceive or cause confusion.
Reputation can be inferred from a high volume of sales with substantial advertising figures and other promotions (McCormick & Company, Inc v McCormick  FCA 1335, at .
Based on the Opponent’s evidence, the Aachi business has generated a turnover of tens of billions of US dollars globally over the past 20 years and has spent approximately one billion US dollars on advertising globally, including in Australia during the same period of time.
Within Australia, the Opponent has made a considerable number of sales through its distributor and has exported at least 136 different types of AACHI branded products since 2008. The Opponent has promoted over 400 products via its website and the AACHI brands are said to be well known amongst Indian diaspora in Australia and consumers of South Indian cuisine.
Taking into account the Opponent’s evidence, the Delegate found that the Opponent’s AACHI trade mark has the requisite reputation among relevant Australian consumers of South Indian food products and cuisine before the priority date of the Applicant’s trade mark application.
Turning to the second element of section 60, the Opponent must also establish that because of its reputation of its marks, the use of the Applicant’s trade mark would likely deceive or cause confusion.
In determining whether there is likelihood of deception or confusion arising from the use of the Applicant’s trade mark, the Delegate considered the similarity of the Applicant’s trade mark and the Opponent’s AACHI trade marks.
The Delegate found that the Applicant’s trade mark and the Opponent’s AACHI trade marks are essentially the same. The respective marks each have the essential feature ‘Aachi’ and are reminiscent of a grandmother’s home cooked meals. Due to the similarity of the competing trade marks and the goods and services, the Delegate held that relevant consumers would be led to wonder if there is some connection between the Applicant’s services for which the Opponent has acquired a reputation under its AACHI trade marks.
As the Opponent had successfully established the ground of opposition under section 60, there was no need to consider any of the other grounds of opposition.
The full decision can be read here.