2025 ATMO 166

Trade Marks Act 1995 (Cth) - opposition under section 52 - s60 considered and established - trade mark registration refused

1. This is a decision on the opposition by Ayam S.A.R.L. ('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 Alpha Oriental Traders Pty Ltd ('Applicant'):

Trade Mark: ('Trade Mark')

Filing Date: 2 September 2022 ('Relevant Date')

Specification: Class 29: Creamers for beverages; Bouillon; Broth; Canned fish; Canned meat; Canned fruits; Canned vegetables; Coconut cream; Coconut fat; Coconut flakes; Coffee cream in the form of powder; Coffee whiteners; Beverages made from milk; Milk-based beverages (milk predominating); Canned milk; Coconut milk; Condensed milk; Milk products; Canned tomatoes; Curry (prepared meals of meat or vegetables); Dairy produce; Artificial cream (dairy product substitutes); Dried milk powder; Dried fish; Dried fruit; Dried vegetables; Snack foods made from dried vegetables; Edible fats; Edible oils; Garlic paste; Dried onions; Pickled vegetables; Beef stock; Chicken stock; Fish stock

Class 30: Beverages made from chocolate; Aerated beverages (with coffee, cocoa or chocolate base); Beverages consisting principally of chocolate; Beverages consisting principally of cocoa; Beverages consisting principally of coffee; Milk chocolate; Curry (spice); Curry mixes; Curry paste; Curry powder; Snack foods prepared from grains; Dried chilli (spice); Chilli powder; Curry sauces; Fish sauce (condiments); Ketchup (sauce); Food dressings (sauces); Sauce (edible); Sauce mixes; Sambal oelek (ground red pepper sauce); Satay sauces; Tartar sauce; Soya sauce; Soy sauce

Class 32: Coconut juice (beverages); Coconut water (beverages); Non-alcoholic beverages flavored with coffee; Non-alcoholic beverages flavoured with coffee; Soya-based beverages, other than milk substitutes

1. Following the advertisement of acceptance of the Application for possible registration, the Opponent filed a Notice of Intention to Oppose on 31 March 2023, followed by a Statement of Grounds and Particulars ('SGP') on 1 May 2023. The Applicant filed a Notice of Intention to Defend on 22 June 2023.
2. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed evidence in support ('EIS') on 27 September 2023 followed by the Applicant's evidence in answer ('EIA') filed on 18 December 2023. The Opponent filed its evidence in reply ('EIR') on 28 February 2024.
3. Once the time for filing evidence had ended, the parties had an opportunity to request a hearing. The Opponent asked to be heard by way of written submissions and the Applicant did not ask to be heard. The Opponent's written submissions were prepared and filed by Stephen Krouzecky of Krouzer IP on 23 May 2025. 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.

1. In its SGP, the Opponent nominated grounds of opposition under ss 42(b), 43, 44, 58A, 58 and 60. In its written submissions, the Opponent only pressed the grounds of opposition under ss 44, 58 and 60.
2. 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.

Hervé Ernest Marie Simon, Group Marketing Director of Maison Denis SA group of companies licensed by the Opponent and authorised to provide evidence for the Opponent under Power of Attorney ('Simon ')

01 to 18 (including Confidential Exhibits 03, 08-10, 18)

Anthony Joseph Cody, Principal and Creative Director of Tweak Design Pty Ltd ('Cody')

1. Simon attests that the Opponent was established in 1892 and is in the business of manufacturing, selling and exporting prepared foods and canned goods, particularly Asian foods, under the mark AYAM BRAND. Simon declares that the mark AYAM BRAND is used on its own and in combination with other elements and devices ('AYAM Marks') including in particular a Rooster Device which Simon claims consumers 'readily recognize and associate with the Opponent'. The Rooster Device was chosen because it is the symbol of France, has a favourable image in Asian countries and in Malay language is called AYAM.[4]
2. Simon states that the Opponent has registered a number of the AYAM Marks in Australia including the seven registrations detailed in Annexure A to this decision each of which has been used in Australia since the date specified in the Annexure ('Opponent's Registrations'). Simon also exhibits details of some of the AYAM Marks in other jurisdictions. I note that the Opponent's Australian registrations include registrations for the following mark:

and

1. In Australia, the exclusive distributor of the Opponent's products is A Clouet (Australia) Pty Ltd and this company is authorised to use the AYAM Marks in Australia. Any reference to the Opponent in this decision includes a reference to A. Clouet (Australia) Pty Ltd.
2. Simon avers that every year over 60 million AYAM BRAND products are produced under the AYAM Marks and sold in over 30 countries, including in Australia since 1986. Simon claims that the AYAM BRAND is the leading Asian food brand in Australia with a significant proportion of Australians surveyed in 2021 recognising the Opponent's logo ('Opponent's Survey').[5] Simon also exhibits the confidential results of an independent market analysis conducted in 2023 which the Opponent claims demonstrates that the AYAM BRAND is the leading brand in multiple food categories including Asian food, coconut milk and cream, Asian bottled sauces and meal pastes[6] ('Opponent's Market Analysis').
3. The Opponent's prepared foods and canned goods include coconut cream, coconut milk, Asian curry pastes and cooking sauces, Asian bottled sauces, soy sauce, chilli sauce, noodles, Asian desserts, Asian food ingredients, canned sardines, canned mackerel, canned tuna, canned vegetables and canned fruits ('Opponent's Goods'). Extracts of the Opponent's website at www.ayam.com ('Opponent's Website') showing the Opponent's product range are exhibited.[7]
4. The Opponent's Logo has been used on cartons, lids, caps, and marketing materials throughout Australia. The Opponent's Goods are promoted in Australia in print and television media, online, via social media and at events such as the Gluten Free Expo and Syndey Lunar Festival. The Opponent's Goods are sold Australia-wide including in large supermarkets such as Coles and Woolworths as well as online on the Opponent's Website and other online supermarket and shopping sites. Examples of use and marketing of the Opponent's Goods are exhibited with details of the Opponent's total estimate advertising and marketing expenditure provided. Confidential sales figures (in dollars and units) from 2012 to 2022 are set out in Simon and I note that the sales are very impressive.
5. The remainder of Simon comments on the similarities of the Trade Mark to the Opponent's Logo and goods of the parties.
6. Cody attests to his history working in the design of packaging for fast moving consumer goods for 35 years including for over 10 years on the design of packaging for the Opponent's Goods. Cody declares that in his professional opinion, the Trade Mark is confusingly similar to the Opponent's Logo.

1. Aloush declares that the Applicant was established in November 2011 and since then has been operating as an international trading and distribution business specialising in the importation of third party's food and beverage products from Asia Pacific into Victoria, Australia.
2. In July 2022, the Applicant decided to launch a home branded range of food and beverage products and selected the name GOLDEN ROOSTER as he considered it to be appealing. Aloush attests that he engaged a graphic designer in India to create a GOLDEN ROOSTER Logo. The designer misspelt the word 'ROOSTER' but Aloush 'liked the uniqueness of that spelling so decided to keep it'. Aloush declares that he has delayed launching products under the Trade Mark until these proceedings are finalised.
3. According to Aloush, a number of other food brands operate in Australia using the image of a rooster as part of their trade mark. The Applicant provides details of such marks on the Australian Trade Marks Register. A selection of the marks relied on are listed in Annexure B to this decision ('Other Rooster Registrations'). Aloush also provides screenshots dated 30 November 2023 of a number of these marks being used for different food products particularly Asian foods ('Third Party Uses').

1. Simon 2 disputes the Applicant's contention that it is seeking a monopoly in all marks containing or consisting of a Rooster Device and points to the features of the Trade Mark it considers to render the Trade Mark confusingly similar to the Opponent's Logo. Further, Simon 2 claims that the Other Rooster Registrations are immaterial as the trade marks and/or goods are more dissimilar to those of the Opponent's Logo than the Trade Mark. In addition, Simon 2 comments on the Third Party Uses and provides other submissions that it is not necessary to summarise here.

Section 60

1. The provisions of s 60 are reproduced below:

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 services 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 services, 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.

Note: For priority date see section 12.

1. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
2. In support of this ground of opposition, the Opponent relies on the Opponent's Registrations for the AYAM Marks and claims that these marks have acquired a significant reputation in Australia as a result of the 'considerable sales and marketing campaigns' which have resulted in the Opponent being a leading brand in the categories of Asian foods, coconut, meal pastes and Asian sauces with 69% of Australians recognising the Opponent's Logo.

1. Reputation, in the context of s60, refers to the 'recognition of [the mark] by the public generally'.[8] It is the reputation in the mark(s) relied upon by the Opponent that must give rise to a likelihood of deception of confusion.[9]
2. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[10] Furthermore, it is necessary to establish a reputation in each of the marks on which the Opponent relies.[11]
3. There are a variety of ways the reputation of a trade mark may be established, including by demonstrating that a significant number of people have been exposed to the trade mark,[12] or providing evidence of high volume of sales, advertising expenditure or other forms of promotion of goods or services to which the trade mark applies.[13]
4. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was 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 services 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.[14]

1. The reputation relied on by the Opponent must be amongst a significant or substantial number of persons.[15] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[16] In the present case, the relevant market is significant being Australians who purchase food products such as sauces, food pastes, coconut cream and milk, noodles and spices.
2. In its submissions, the Opponent argues that its evidence establishes a considerable reputation in the AYAM Marks which reputation dates back to its continuous use of AYAM BRAND and a Rooster Device since 1892 in Malaya and in Australia since 1986 for Asian and canned foods. In support of this contention, the Opponent relies on its sales of over 60 million products annually in over 30 countries, the Opponent's Survey and the wide range of products sold. Whilst the Opponent acknowledges that it has used a number of different emblematic seals, it argues that these vary 'very marginally' and all have contributed to building a reputation in the AYAM Brand.
3. The most relevant mark is the Opponent's Logo as this mark is most similar to the Trade Mark. I acknowledge that the Opponent has used variations of the Ayam Marks since 1986 but agree with the Opponent that the logo elements of each of the Ayam Marks do not differ significantly with each having a round band border with a buckle device and containing a rooster. Further, the Opponent has used the Opponent's Old Logo in Australia since 2001 and the Opponent's Logo since 2017. The difference between these logos is marginal with the word "SINCE' replaced with 'CLOUET'. In my opinion the Opponent's Old Logo and the Opponent's Logo are substantially identical with the use of the Opponent's Old Logo reinforcing the use of the Opponent's Logo.
4. The Opponent's Logo appears on all of its products in various forms, examples of which are shown below:

1. Sales of the Opponent's Goods in Australia are extremely substantial with millions of units sold annually generating significant turnover. Moreover, the Opponent expends a considerable amount of money annually on marketing and promoting its products. Whilst most of the advertising appears to feature the marks registered under registrations 879526 and 1706370, the Opponent's use and promotion of the AYAM Marks for a long period of time before the Relevant Date, have resulted in strong consumer recognition of the Opponent's Logo as demonstrated by the Opponent's Survey.
2. The Opponent's Logo has been used in relation to an extensive range of Asian food products including sauces, desserts, noodles, coconut milk, coconut oil, coconut cream, coconut water, coconut milk powder, food pastes, soup, spices and seasoning, sesame oil, palm sugar, tinned fish and ready-to-eat meals ('Opponent's Asian Food Products').
3. I am satisfied that the Opponent had acquired a strong reputation in the Opponent's Logo at the Relevant Date in the Opponent's Asian Food Products.

1. Having found a reputation in the Opponent's Logo in Australia for the Opponent's Asian Food Products, I must now determine whether as a result of that reputation, use of the Trade Mark is likely to deceive or cause confusion under s 60(b).
2. The threshold for confusion is not high, although a mere possibility of confusion is not enough.[17] There must be a real and tangible danger of confusion or deception. It is enough if the ordinary person entertains a reasonable doubt.[18] Consumers need not think that the respective marks are the same and any confusion does not necessarily need to persist to the point of purchase. It is sufficient if consumers would have cause to wonder if the goods provided under the Trade Mark are being provided by the same person as the owner of the mark in which the reputation has been established.[19]
3. Section 60 does not require that the goods of the Opponent be similar in quality or price to those claimed by the Applicant, nor is there a requirement that the relevant trade marks be substantially identical or deceptively similar. However, in In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi, the Registrar's delegate observed:

The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent's trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark's reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[20]

1. The Opponent argues that as the Applicant has not used the Trade Mark, it is appropriate to consider a notional use of the mark which would include the same manner in which the Opponent uses its emblematic seal namely as the Opponent's Logo which may be coloured, black & white, or embossed as illustrated at [31].
2. Further, the Opponent alleges that the Trade Mark is at least deceptively similar to the Opponent's Logo. In particular, the Opponent notes the left facing, realistic nature of the rooster, the adoption of an emblematic seal with a circular border. The combination of these elements creates a degree of similarity despite the different word elements of the respective marks. I agree with the Opponent that the Trade Mark is markedly more similar to the Opponent's Logo than the Other Rooster Registrations. Also, in view of the differences in the marks and/or goods, the Third Party Uses do not demonstrate that rooster device marks similar to the Opponent's Logo were in common use at the Relevant Date.
3. Many of the Applicant's Goods overlap with or are similar to the Asian Food Products for which the Opponent's Logo is used. Further, these products are fast moving consumers goods that are purchased without a great degree of care. Given the similarities and prominence of the rooster device in the Trade Mark and Opponent's Logo, and in view of the fact that the marks may be embossed and/or appear relatively small on products, I consider that there is a real likelihood that a consumer may inadvertently pick up the Applicant's Goods thinking that they are those of the Opponent. Even if consumers undertake a closer inspection of the Trade Mark, consumers may well assume the goods are associated with the Opponent given the Opponent's longstanding use of the Opponent's Logo and variations of that mark.
4. In all the circumstances, I am satisfied that there is a real risk that as a result of the reputation in the Opponent's Logo that use of the Trade Mark may deceive or cause confusion. Hence, the s 60 ground of opposition is established.

1. The Opponent has established a ground of opposition under s 60 and therefore, I refuse to register the Trade Mark under application number 2296775. This refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks 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.
2. The Opponent has requested an award of costs. As costs generally follow the event, I award costs against the Applicant under s 221 in accordance with Schedule 8 of the Regulations.

Class 30: Canned sauces in this class, salad dressings, condiments and all other goods in this class

Class 29: Meat; fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables, jellies; jams; eggs; milk and other dairy products; edible oils and fats; salad oil and olive oil for use as food; preserves; pickles

Class 30: Coffee, tea, cocoa; sugar; tapioca; sago; coffee substitutes; flour and preparations made from cereals; ices; honey; treacle; yeast; baking powder; salt; mustard; pepper; vinegar; sauces; spices and salad dressing

Class 29: Meat; fish, poultry and game excluding chicken meat; meat extracts excluding chicken extracts; preserved, dried and cooked fruits and vegetables, jellies; jams; eggs; milk and other dairy products; edible oils and fats; salad oil and olive oil for use as food; preserves; pickles

Class 30: Coffee, tea, cocoa; sugar; tapioca; sago; coffee substitutes; flour and preparations made from cereals; ices; honey; treacle; yeast; baking powder; salt; mustard; pepper; vinegar; sauces; spices and salad dressing; pearl barley

Class 31: Dog food, fresh fruits and fresh vegetables excluding chicken meat and chicken extracts

Class 29: Meat; fish, poultry and game; preserved fish, sardines and mackerel; preserved tuna fish; salmon; tinned meat, tinned fish, tinned fruits and tinned vegetables; meat extracts; preserved, dried and cooked fruits and vegetables; baked beans; coconut cream, coconut milk for cooking; tomato puree; food pastes made from fish; jellies; jams; eggs; milk and dairy products; meat preserves; pickles; edible oils and fats; vegetable oil and olive oil for use as food; prepared salads

Class 30: Coffee, tea, cocoa; sugar; tapioca; sago; coffee substitutes; flour and preparations made from cereals; ices; honey, treacle; yeast; baking powder; salt for cooking and flavouring food; mustard; pepper; vinegar; sauces; curry sauces, curry paste; spices; food pastes (seasonings), food pastes (spices); vegetable purees (sauces); salad dressing; pearl barley (prepared), preparations of malted barley for use in making beverages; tinned corn

Class 31: Pearl barley (in the husk), barley; malted barley; unprocessed barley; dog food, fresh fruits; fresh vegetables; salad vegetables (fresh)

Class 29: Meat; fish, poultry and game; preserved fish, sardines and mackerel; preserved tuna fish; salmon; tinned meat, tinned fish, tinned fruits and tinned vegetables; meat extracts; preserved, dried and cooked fruits and vegetables; baked beans; coconut cream, coconut milk for cooking; tomato puree; food pastes made from fish; jellies; jams; eggs; milk and dairy products; meat preserves; pickles; edible oils and fats; vegetable oil and olive oil for use as food; prepared salads

Class 30: Coffee, tea, cocoa; sugar; tapioca; sago; coffee substitutes; flour and preparations made from cereals; ices; honey, treacle; yeast; baking powder; salt for cooking and flavouring food; mustard; pepper; vinegar; sauces; curry sauces, curry paste; spices; food pastes (seasonings), food pastes (spices); vegetable purees (sauces); salad dressing; pearl barley (prepared), preparations of malted barley for use in making beverages; tinned corn

Class 31: Pearl barley (in the husk), barley; malted barley; unprocessed barley; dog food, fresh fruits; fresh vegetables; salad vegetables (fresh)

Class 30: Sauce, curry and spices except for confectionary

Class 30: Preparations and materials, all included in this class for stabilizing, binding, agglutinating, thickening and/or emulsifying foodstuffs

Class 29: Meat, fish, poultry and game, processed foods in this class

Class 35: Retail, wholesale and distribution of beverages and prepared foods, poultry, meat, fish, game, condiments etc

Eng Lee Linseed Oil & Sauce Manufacturers & Sons SDN BHD

Class 29: Meat, fish, shellfish, crustaceans, poultry and game; meat fish, poultry and game extracts; jellies; eggs; milk and milk products including butter, cheese, cheese products, milk beverages; edible oils and fats; margarine, jams

Class 30: Tapioca, sago, pepper, vinegar, sauces, dried and preserved herbs, spices and confectionery, all being goods in this class

Class 30: Noodles, dumplings, ravioli, rice-noodles, wrappers for ravioli, dough, rice, wheat, wheat flakes, flour for food, cereal powder, assorted grain fiber powder, tapioca balls, sago

Class 29: Olive oil, edible oils and fats, tinned foods

Class 29: including Preserved, dried and cooked fruit and vegetables; Asian or Thai curry paste and curry soup, coconut milk

Class 30: including noodles, Asian or Thai condiments, spices and sauces

Class 29: Agar-agar for culinary purposes, almonds, ground, dried coconuts, rennet, soya based dairy substitutes, milk substitutes, yoghurt powder, preparations for making milk beverages, preparations for making beverages (milk based) and kefir (milk beverage), all for inclusion in kits

Class 43: includes café services; takeaway food and drink services

[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.

[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

[7] Simon 1, Confidential Exhibit 9. Whilst this exhibit is marked confidential because it is publicly available information, I have not treated it as confidential.

[8] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) ('McCormick').

[10] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] 33 FCR 302, [1992] FCA 159, [77] (Lockhart J).

[11] Qantas Airways Ltd v Edwards [2016] FCA 729; (2016) 338 ALR 134, [160] (Yates J).

[14] [2019] FCA 923, [83] (O'Bryan J).

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

[16] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

[17] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153 [70] (North, Middleton and Barker JJ).

[18] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 594, 595 (Dixon CJ, McTiernan J, Webb J, Fullagar J, Taylor J) ('Southern Cross'); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [76] (Moore, Sackville and Emmett JJ).

[19] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50]; Southern Cross (n 18), 594.

[20] [2012] ATMO 124, [40] (Delegate Thompson).