Opponent: Phoebe Arcus Senior Counsel, instructed by Griffith Hack

Holder: Megan Evetts of Counsel, instructed by Spruson & Ferguson

Trade Marks Act 1995 (Cth) - opposition to extension of protection under regulation 17A.33 - grounds of opposition under ss 42(b), 44, 58 and 60 considered - no grounds of opposition established - extension of protection may follow.

1. This proceeding concerns an opposition made under reg 17A.33 of the Trade Marks Regulations 1995 (Cth) ('Regulations')[1] by MomoIP LLC ('Opponent') to the extension of protection for an International Registration Designating Australia ('IRDA'), the details of which I reproduce below:

Holder: Nissin Foods Holdings Co Ltd ('Holder')

Specification: Class 29: Milk products; processed meat products; prepared meals consisting primarily of meat; processed seafood; prepared meals consisting primarily of seafood; processed vegetables and processed fruits; potato chips; prepared meals consisting primarily of vegetables; soya milk; pre-cooked curry stew, stew and soup mixes; soups; instant soup; noodle soups; instant noodle soups; potato-based snack food

Class 30: Confectionery; snack confectionery; bread and buns; sandwiches; hamburger sandwiches; pizzas; hot dog sandwiches; meat pies; seasonings; spices; cereal preparations; noodles; fresh noodles; dried noodles; instant noodles; chilled noodles; frozen noodles; noodle-based prepared meals; chilled noodle-based prepared meals; frozen noodle-based prepared meals; pasta; fresh pasta; dried pasta; instant pasta; chilled pasta; frozen pasta; pasta-based prepared meals; chilled pasta-based prepared meals; frozen pasta-based prepared meals; cooked rice; dried cooked rice; instant rice; chilled cooked rice; frozen cooked rice; rice-based prepared meals; chilled rice-based prepared meals; frozen rice-based prepared meals; sushi; ravioli; pasta sauce. ('Holder's Goods')

Convention details: 26 October 2017 Number: 2017-141891 Country: Japan

1. After being examined, acceptance of the Trade Mark was advertised on 30 January 2019. On 1 April 2019, the Opponent filed its Notice of Intention to Oppose the extension of protection of the IRDA. On 30 April 2019, the Opponent filed its Statement of Grounds and Particulars ('SGP').
2. On 22 August 2019, pursuant to reg 9.21, the parties requested that the opposition be suspended for a period of 6 months. A delegate of the Registrar of Trade Marks ('Registrar') directed that the opposition be suspended under reg 17A.34Q until 22 February 2020. Several further suspensions followed until on 17 October 2022, a delegate of the Registrar notified the parties that the opposition was to proceed.
3. On 4 November 2022, the Opponent filed its Notice of Intention to Defend.
4. On 17 February 2023, the Opponent filed its Evidence in Support ('EIS') being a declaration of Marguerite Zabar Mariscal, Chief Executive Officer of the Momofuku Group, which includes MomoIP LLC, a Delaware limited liability company and the holding company for the trade marks used by the Momofuku Group, dated 16 February 2023 ('Mariscal') with Annexures MM-1 to MM-3 and a declaration of Alexandra Kleiman, Vice President, Business Ventures & General Counsel of the Momofuku Group of companies, dated 16 February 2023 ('Kleiman'), with Annexures AK-1 to AK-11.
5. The time to file Evidence in Answer ('EIA') ended on 2 June 2023. The Holder did not file EIA.
6. On 22 June 2023, the Holder requested to be heard by written submissions.
7. On 22 April 2024, the Opponent requested to be heard by teleconference. The Holder then also sought to be heard by teleconference. Accordingly, the hearing was rescheduled.
8. On 20 January 2025, the Opponent filed its written summary of submissions and on 28 January 2025, the Holder filed its written summary of submissions. I heard the matter on 3 February 2025. The Opponent was represented by Phoebe Arcus Senior Counsel, instructed by Nicola Scheepers of Griffith Hack. The Holder was represented by Megan Evetts of Counsel, instructed by Daniel Wilson and Madeline Connolly of Spruson & Ferguson.

1. Regulation 17A.34 broadly provides that an extension of protection can be opposed on any of the grounds on which an IRDA may be rejected and also on the grounds of opposition specified in ss 58 to 61 and 62A. The Opponent has the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
2. The SGP nominated grounds of opposition under ss 42(b), 44, 58 and 60. The date for the rights of the parties to be determined is the Relevant Date.

1. Mariscal addresses the history of the Opponent's business and the alleged reputation of its restaurants and its food products. The Opponent was founded by chef David Chang in 2004. The Opponent's business started with the opening of a restaurant called Momofuku Noodle Bar in New York City. The Opponent has grown a private equity backed business with multiple restaurants across several countries. Most of the Opponent's restaurants have been located in North America and many trade under a sign which contains the word 'MOMOFUKU'. The Opponent's restaurants have received numerous awards which Mariscal lists.
2. The Opponent expanded into consumer products in 2009. In 2015 the Opponent expanded operations into the supply of ssam sauce. In 2020 the Opponent launched an e-commerce business, which has had substantial sales in $USD terms. Goods have also been supplied to retailers in the United States of America ('USA') including Target, Whole Foods, Wegmans, Central Market and independent retailers. Specific examples of goods sold by the Opponent are shown in Mariscal.[4] Mariscal states that in 2011, the Opponent sold two different sauce being a 'clay pot cooking sauce' and 'asian braising sauce' via the USA retailer Williams Sonoma in 2011. A line of goods was also launched under the sign Momofuku in 2020 which includes various noodles, chilli crunch, sauces and salts.
3. Mariscal states that the Opponent has a website www.momofuku.com ('Opponent's Website'). Annexure MM-1 is an undated example of the Opponent's Website, listing goods with reviews dated in 2021 and 2022. Mariscal states that that goods are available for sale at the Opponent's Website and at its restaurants.[5] Sales figures for goods sold in the period 2019 to 2022 have been substantial. Examples of goods as appearing on the Opponent's Website are at Annexure MM-2. This includes ssam sauce.
4. A screen capture of the Opponent's Website, dated 26 January 2017, at www.seiobo.momofuku.com, shows details for a restaurant located in Australia ('Restaurant') which I extract below:

1. I extract a relevant portion of an image from the landing page of the Opponent's Website, dated 21 January 2017 below:

1. An additional extract, dated 31 January 2017, shows the following which refers to the Restaurant located in Sydney:

1. Another extract also from the landing page of the Opponent's Website dated 31 January 2017 shows the following:

1. Another extract of the Opponent's Website dated 19 December 2016,[6] shows the following offer in relation to goods being ssam sauce priced at $7.50:

1. Mariscal also contains statements regarding the relationship between class 43 restaurant services and goods in classes 29 and 30. Mariscal draws on the declarant's own experience and states that, 'it is common in the restaurant industry (internationally and in Australia) for restaurants and cafes to offer class 29 and or 30 goods in addition to restaurant and café services'.[7] At Annexure MM-3 are copies of articles in Broadsheet relating to businesses in Australia which have provided class 43 services and were providing class 29 and/or 30 goods. These businesses include Continental Deli Bar and Bistro, Sydney; Cornersmith Annandale and Cornersmith Marrickville, Sydney; Osteria Emilia, Sydney; Panlaslang Pinoy, Sydney; and Alpha Restaurant and Food Store, Sydney. I note that three of these articles have been updated on dates after the Relevant Date. Mariscal also lists various registered Australian trade marks which include specifications in a number of classes, including classes 43, 39 and 30. No additional evidence is provided about how they are used in trade. Four chefs are also referred to in Mariscal, being Yotam Ottolenghi, Jamie Oliver, Martha Stewart and Wolfgang Puck who are said to be trading in class 43 services, as well as classes 29 and 30 goods without further details.
2. Mariscal refers to various appearances of David Chang on television between 2008 and 2018,[8] including on the show Master Chef Australia in 2011.

1. Kleiman declares that the Opponent used the trade mark 'Momofuku Seiobo' in relation to the Sydney based Restaurant from October 2011 to June 2021. Kleiman also declares that the 'Momofuku Group has enjoyed a high level of success, demonstrated by its high restaurant sales', providing figures for 2019 to 2022 which are substantial.[9] Kleiman also states that the Restaurant 'also enjoyed a high level of success, demonstrated by its high restaurant sales', with substantial figures presented for the financial years 2016/2017 to 2020/2021.
2. The evidence in Kleiman concerns both the Opponent's restaurants and its founder David Chang. Mr Chang is a chef who has made various appearances on television and media. In 2010 Mr Chang travelled to Australia for promotional purposes and made an appearance at the Melbourne Food and Wine Festival. In 2011, he was a guest judge on Master Chef Australia. The episode aired on 19 June 2011 and that episode is said to have attracted 1,615,000 total viewers in 5 metropolitan cities in Australia. There is no evidence about whether the Restaurant and its name was mentioned in that context.
3. Annexure AK-1 to Kleiman provides the details of several registered trade marks and pending applications for trade marks in Australia which contain the word MOMOFUKU. These include most relevantly registered trade mark 1355801, details of which I extract below:

Services: Class 43: Restaurant services, including sit-down service of food and take-out restaurant services; bar services ('Opponent's Services')

1. There are several annexures to which Kleiman refers in asserting that there is a reputation in the trade mark 'Momofuku'. Annexure AK-2 provides copies of the Facebook home pages for several of the Opponent's restaurants which have names that include the word 'momofuku'. Many of these are dated after the Relevant Date, including one for MOMOFUKU SEIOBO at The Star. Other than this, the restaurant locations are outside Australia. Annexure AK-3 consists of a screen capture of a menu of the Restaurant, showing the word 'momofuku' in a Facebook post, dated 15 April 2013. Annexure AK-4 is a screen capture of an article dated 12 August 2017 from goodfood Australia which is titled 'The delicious Instagram accounts food pros follow', mentioning David Chang and his prominence. Annexure AK-5 consists of data concerning follower statistics for the followers of Mr Chang's social media accounts by country, these figures appear to be moderate numbers. Australia has ranked either top three or four at the given times. Various other social media accounts, apparently for restaurants located overseas are provided with moderate follower figures.[10]
2. Kleiman also references various newspaper and magazine reviews and articles where the Momofuku Group has been a subject. Annexure AK-6 consists of 10 articles. Most of these articles appear in publications from the USA and concern restaurants located there, which trade under a sign including the word MOMOFUKU.
3. Kleiman also refers to, and provides extracts of, the Opponent's Website. Kleiman states that there have been a substantial number of visitors in total to the Opponent's Website since 1 April 2010.[11] Kleiman also states that reservations for the Restaurant could be made via the Opponent's Website.[12] Annexure AK-7 is an excerpt of analytics for the Opponent's Website, showing Australia is the third highest place of origin for users.
4. Kleiman refers to several publications with which David Chang has had involvement. This includes a cookbook released in 2011 which was written by Christina Tosi with a forward by David Chang as well as a food journal founded by Peter Meehan and David Chang. Annexure AK-8 is an article from Broadsheet dated 12 December 2011 which promoted the food journal. Annexure AK-9 is an article from the website www.bookdepository.com for a book published apparently on 23 September 2011 and mentions it was a New York Times Bestseller. There appear to have been several reviews for the book from large USA based publications including the New York Times and Wall Street Journal.
5. Annexure AK-10 to Kleiman consists of a collation of articles for the Sydney Morning Herald Good Food Guide awards received by the Restaurant in 2013, 2014, 2015, 2016 and 2017.
6. Kleiman also refers to Australian press articles and coverage referring to the Restaurant and/or David Chang in relation to restaurant services. Annexure AK-11 to Kleiman consists of 19 articles from blog, review and news websites. These include articles in the publications Drive Now, The Weekend Edition, Broadsheet, on www.nine.com.au, GOURMET Traveller, DELICIOUS, goodfood and COLLECTIVE HUB.
7. Also present in AK-11 to Kleiman is an extract of a book on the Australian Kinokuya store website titled 'MOMOFUKU', showing a publication date for the book as '2010/09'. There are no ratings present and it is not clear when the Kinokuniya listing for this book commenced. There is another such article on www.booktopia.com.au which listed the book as published in December 2010. Dymocks Books shows a book titled Momofuku Milk Bar dated 24 February 2012 by David Chang and Christina Tosi.
8. There are also food blog articles in Annexure AK-11. These include one titled 'Eating Ourselves Stupid in the USA - Momofuku Noodle Bar, New York', dated in July 2015, on the website www.foodvixon.com. This article discusses a trip to the Opponent's restaurants in the USA purportedly by an Australia consumer. Another is from iFAt Food Chronicles, which is a Sydney food blog, and titled 'Momofuku Noodle Bar, New York', dated 10 February 2014. This article again concerns a trip to New York to visit restaurants. Another article is from the website www.top10restaurants.com.au and titled 'Number 3 - Momofuku Seiobo', which ranks the Restaurant as number 3. An article on the website www.thermokitchen.com is titled 'Momofuku Cornflake Cookie Thermomix Style', published 3 February 2017, and last updated 6 December 2022, and it provides for a cookie recipe.

Section 44

1. Section 44 relevantly provides:

(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or

(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. In the SGP the Opponent relies on trade mark 1355801 for the ground of opposition under s 44. 1355801 has priority date that is earlier than the Relevant Date and is in the name of a person other than the Holder.

1. I next consider whether the Opponent's Services are closely related to the Holder's Goods. The Act does not define the words 'closely related'. However, in Registrar of Trade Marks v Woolworths Ltd, French J stated that the relationship between goods and services, 'may, and perhaps in most cases will, be defined by the function of the service with respect to the goods'.[13] The nature, function and circumstances of the trade, such as trade channels, are also relevant as is the likelihood of consumer association of the services with the goods because they are generally offered by the same people.[14] I should also consider whether the services are performed directly upon or by the means of the goods and whether the goods and services are generally regarded by the ordinary consumer as originating in, or as being part of, the one industry or trade, or, a closely related industry or trade.[15]
2. The Holder relies on the decision in Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods ('Ragopika'),[16] where Kennett J found that 'restaurant' and 'fast food outlet' services were not closely related to a variety of class 29 and class 30 goods, including 'meat, fish poultry and game', 'dried and cooked fruits and vegetables', and 'milk and milk products'.
3. In Ragopika Kennet J found that:

... [A]lthough a "restaurant" or "fast food outlet" is highly likely to use at least some of the products in relation to which the Aachi mark is registered in the preparation of its offerings (eg "meat, fish, poultry and game"; "dairy products"; "edible oils"; "spices"), I do not think it follows that those goods are "closely related" to the service of operating a restaurant. Nor do I consider that the goods and the services are "closely related" on the footing that specific subsets of the goods ("pickle"; "sauces") describes things that may be served in a restaurant. ...

... "Fast food" is food "which can be provided without delay", according to the Macquarie Dictionary, and may well include food that is intended to be consumed away from the premises in which it is sold. However, the expression connotes food that has been prepared so as to be ready to eat as a meal, presented or packaged so as to be easily consumed straight away (for example, cooked or reheated if appropriate and/or assembled into a sandwich or salad) and usually offered with things such as napkins and disposable cutlery. Converting foodstuffs (including those of the kinds included in classes 29 and 30) into a form suitable to be sold as "fast food", and offering it for sale freshly prepared and appropriately packed, are the essential elements of the service. The food thereby supplied is either eaten on the premises or taken away to be eaten, rather than taken home to be used as an ingredient or otherwise prepared for consumption. It is in a quite different category from the foods included in classes 29 and 30. Thus, to adapt what Yates J said in Qantas Airways at [126], what is it that makes the goods which are the subject of the Aachi mark goods that are "related to" restaurant or fast food services beyond the fact that they are, along with a vast range of other goods, capable of being used in the provision of those services? Nothing in the nature or function of the goods does so.[17]

1. The Holder submits that the decision in Ragopika is directly on point and the mere fact that some of the goods may be served or used in the preparation of food in a restaurant or bar does not mean those goods are closely related to the Opponent's Services. They further submit that, as in Ragopika, the fact that the restaurant services of 1355801 include 'take-out restaurant services' does not assist the Opponent. They say that converting food stuffs into a form suitable to be sold as take-away food and offering it for sale freshly prepared and packaged is in a different category to the Holder's Goods. Further they submit that whilst the Holder's Goods include 'prepared meals consisting primarily of meat' and 'prepared meals consisting primarily of seafood', that does not materially affect the relevant analysis. They say these are goods which are prepared in advance and sold for consumption in supermarkets and grocery stores, in a different manner to a take-out restaurant freshly preparing, packaging and selling food for immediate consumption.
2. The EIS does not assist the Opponent in establishing the close relationship required as all of the venues mentioned in Annexure MM-3 to Mariscal show only that the concurrent delivery of the goods and services is possible in some specific instances. That it is possible these goods and services might be delivered by the same traders is not sufficient. I am not, for example, satisfied on the evidence that such a practice is commonplace or a consumer expectation. The goods in question are edible commodities for preparation at home whilst the services for the preparation and provision of food for others are usually to be eaten at the premises. Restaurant services also ordinarily provide prepared foods in a ready to consume state.
3. I must decide this matter based on the evidence before me, though I have noted that Ragopika supports the conclusion I have reached. The Opponent notes that on 26 March 2024, the United Kingdom Intellectual Property Office found in favour of the Opponent in an opposition to the Holder's application for registration of a trade mark comprised of the word 'MOMOFUKU' ('UK Decision').[18] The Opponent refers me to the UK Decision, which in part concerned questions under the UK law of similarity between certain goods and restaurant services. However, the parties there were for a large part in agreement that there was similarity between certain goods the restaurant services. I need not rationalise the reasons for the UK Decision with the Australian principles, though I note that there may also have been different evidence before the hearing officer which is not before me; and the UK Decision involved, in part, different goods.
4. Applying the relevant principles and considering the evidence before me, I am not satisfied that the Holder's Goods are closely related to the Opponent's Services.
5. Accordingly, the ground of opposition under s 44 is not established.

1. Section 58 provides that, 'registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark'. The term 'owner' is not defined in the Act. However, it is well established that the owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application for it in Australia, whichever is the earlier.
2. To establish this ground of opposition the Opponent must show all of the following:
   • that a person other than the Holder used the Trade Mark, or a trade mark with additions or alterations which do not substantially affect the identity of the Trade Mark,[19] in the course of trade in Australia; and
   • that the use was before the filing date of the Trade Mark, or before use of the Trade Mark by the Holder, whichever is the earlier; and
   • that the use was in relation to the Holder's Goods or in relation to goods considered to be the same kind of thing as the Holder's Goods.[20]
3. The SGP provides particulars for the Opponent's s 58 ground of opposition in the following terms:

The Opponent first used the Opponent's Trade Mark in Australia in connection with restaurant services in October 2011. The Opposed Mark is substantially identical with, and/or deceptively similar to, the Opponent's Trade Mark and has been filed for goods in Classes 29 and 30 that are closely related to the Class 43 services for which the Opponent's Trade Mark is registered. The Opponent and not the [Holder] is the owner of the MOMOFUKU trade mark by virtue of first use in Australia.

1. At the hearing Counsel for the Holder submitted that the EIS and SGP state only that a trade mark has been used in relation to only services rather than any goods. Accordingly, they submitted that that the Opponent's reference in submissions at the hearing to the use of a trade mark in relation to goods was outside of what was originally particularised in the SGP for the s 58 ground of opposition. A relevant threshold for s 58 is whether the Holder's Goods are the same kind of thing as those for which another person has used a substantially identical trade mark. Ultimately, the leading text in the SGP for the s 58 ground is 'Applicant not the owner of the trade mark - Section 58'. I also note that the parties have engaged with the overall issues about whether there has been trade in relevant goods throughout the EIS, which appears to show goods upon which the trade mark MOMOFUKU ('Opponent's Mark') has been affixed. Even if the SGP's language is somewhat misdirected, I consider the issue of whether there has been use of a trade mark by a person other than the Holder on services and/or goods has been broadly and fairly contested throughout the proceedings.[21] Accordingly, in considering the ground of opposition under s 58, I should consider whether the evidence shows use of a trade mark on or in relation goods and not just services .
2. For the s 58 ground of opposition, the Opponent relies on the use of signs which contain the word MOMOFUKU on the Opponent's Website and by the statement made in Kleiman that goods have been sold in the Opponent's restaurants, which would have included the Restaurant.
3. I note that the evidence as to sales of goods in the Restaurant rises no higher than an assertion and the statement is not specifically directed to Australian operations.[22] I am not satisfied that there has been an offer or sale of goods in the Restaurant. To the extent that meals are shown as provided or offered in the Restaurant, these meals are essentially the provision of restaurant services. The provision of restaurant services is not the same kind of thing as the Holder's Goods.
4. The Opponent's Website shown in the screen capture dated 24 October 2016, at Annexure MM-2 to Mariscal, lists a 'momofuku peach tote', 'momofuku beanie' and 'momofuku sticker sheet'. Also shown is a 'momofuku cookbook' in another screen capture of the Opponent's Website, dated 28 November 2016. These are not goods which are same kind of thing as the Holder's Goods. I also note that that some of the evidence, such as that shown in Annexure MM-1 to Mariscal, does not assist as it is either not dated or it is otherwise dated after the Relevant Date.
5. I turn to consider the use of signs on the Opponent's Website in relation to goods. Relevantly, Annexure MM-2 to Mariscal shows the use of the Trade Mark in relation to ssam sauce on the website of a person other than the Holder in a screen capture dated 31 January 2017. Annexure MM-2 also contains a screen capture of the Opponent's Website, dated 19 December 2016, showing a bottle of ssam sauce which displays the sign 'momofuku'. Accordingly, there appears to be use of the word 'momofuku' in relation to ssam sauce.
6. Ssam sauce is a sauce which is also known as 'ssamjang sauce'. It is used in a variety dishes, some including meat and noodles. Annexure AK-6 includes an article from the website www.firstwefeast.com which shows the ssam sauce goods sold by the Opponent and mentions recipes which use ssam sauce.[23] One of the recipes suggests a pork ragu with pasta.[24] The marketing language of the Opponent for its ssam sauce also suggests a very broad range of culinary applications. I consider ssam sauce to be the same kind of as only the Holder's 'pasta sauce'.
7. The Holder also submits that the Opponent's Website insofar as it shows use of signs in relation to goods, was not directed to Australia even if there is use of the sign for restaurant services directed to Australia. It submits that the Opponent's Website as appearing in Annexure MM-2 to Mariscal was merely accessible in Australia and not directed at Australia when considered under the principles outlined in Ward Group Pty Ltd v Brodie & Stone Plc.[25] Kleiman states that reservations could be made for the Restaurant before the Relevant Date on the Opponent's Website. However, whether this was the ordinary course a consumer seeking information about the Restaurant is not established. For example, a person conducting a search of the internet for information about the Restaurant may have been directed to the reservations page or the specific page concerning the Australian restaurant. This page shows nothing about the sale of goods and concerns only restaurant services. Furthermore, Kleiman does not, for example, state directly that goods were able to be purchased on the Opponent's Website by Australian consumers, even if they do state that they could be purchased at the Opponent's restaurants.
8. In International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Ltd ('International Hair Cosmetics'),[26] Logan J held that the use of trade marks on a website with a British domain name constituted use directed to Australia, by marketing to Australians through a drop-down link to a page containing certain products marketed and sold in Australia. Unlike International Hair where the Court noted information which showed that the products in question were directed to Australia with reference to the relevant trade mark,[27] the screen capture of the Opponent's Website at Annexure MM-2 does not appear to reference Australia for the relevant goods. Just because one section of the Opponent's Website is directed at Australia for specifically restaurant services, does not here on the balance of probabilities, establish that the other specific sections of the restaurant were directed at Australia.
9. The landing page of the Opponent's Website displays a bottle of ssam sauce which bears the sign 'momofuku'. There are general user statistics provided for the Opponent's Website across a long period of time. The Opponent's Website appears to have been accessed by substantial numbers of Australian users across that period in total. However, the statistics do not demonstrate that Australian consumers accessed, for example, the particular offer appearing at Annexure MM-2 to Mariscal and dated 19 December 2016, for ssam sauce. Nor do the statistics establish that the few snapshots in time of the Opponent's Website's landing page, where it displays the bottle of the ssam sauce, were accessed by Australian consumers. The evidence also does not establish that even one sale of any goods occurred in Australia. The fact that the Opponent itself in its SGP initially sought to assert its ground of opposition under s 58 as to use of a trade mark by reference only to restaurant services is telling in this regard. I also note that the Opponent's Website where it shows the ssam sauce, and other goods, uses metrics consistent with a consumer base outside of Australia, referencing ounces and inches. This, in combination with the other evidence, suggests a direction to consumers outside of Australia. Ultimately, the Opponent bears the onus in this matter. The Opponent also has not established that the offshore Opponent's Website, specifically where it appears to offer ssam sauce, or other goods, was directed at Australia in the Relevant Period by providing evidence of persons in Australia accessing specifically those parts of the Opponent's Website.[28] I am not satisfied that the Opponent's Website, where it shows ssam sauce, was directed to Australian consumers.
10. Accordingly, the ground of opposition under s 58 has not been established.

1. The Opponent also relies upon s 60, which provides:

60 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.

1. A relevant 'reputation' for the purposes of s 60 is not simply assumed.[29] It is the Opponent who must establish that a reputation exists as a matter of fact.[30] The word 'reputation' here means 'the recognition of the [trade mark] by the public generally'.[31] The Opponent can demonstrate such a reputation by a variety of means, including quantum of sales or advertising and promotional activities.[32] Advertisements or other appearances of the other trade mark on television, radio or in magazines and newspapers may also be relevant. The required reputation is most often inferred from a high volume of sales, together with substantial advertising expenditures and other promotions.[33] Direct evidence of consumer appreciation of a mark, while often harder to produce, is another avenue for showing that a reputation exists.[34]
2. The SGP states that:

The Opponent has been using ...[1355801] in Australia since before the priority date of the ... Trade Mark. In particular, the [1355801] has been continuously used in Australia since the date of first use in October 2011 and up to the present time in connection with "Restaurant services" in Class 43. The Opponent has, before the priority date of the [Trade Mark], acquired a significant reputation in the [1355801] in Australia in relation to the "Restaurant services" in Class 43 to which the food and beverage goods of the [Trade Mark] are closely related. Because of this reputation and given the highly distinctive nature of the MOMOFUKU trade mark, the [Holder'] use of the identical mark for food and beverage goods in Classes 29 and 30 for which the application has been filed would likely deceive or cause confusion.

1. The Restaurant enjoyed substantial sales in the financial years 2016/2017 to 2020/2021 in a single location in Australia. The worldwide amount of sales for the group of companies is substantial.[35] Whilst sales figures are provided for MOMOFUKU GOODS, these are not demarcated as being for Australian sales. The Restaurant's awards have included the Sydney Morning Herald Good Food Guide Awards in 2013, 2014, 2015, 2016 and 2017,[36] which I view as not insignificant. There has been moderate media coverage of the founder of the Restaurant and the Restaurant. It is not always clear how the founder's own reputation has resulted in any elevated reputation in the Opponent's Trade Mark. The articles in evidence which are targeted at Australian readers and consumers have unclear rates of circulation even if they do laud the founder of the Restaurant whilst mentioning the Restaurant.
2. The Opponent also relies on numerous Australian visitors to the USA which they say would likely result in spillover reputation. This evidence is quite general in the manner it relates to spillover reputation for Australian consumers. Whilst there is evidence of activities overseas, when this evidence is weighed it is not substantial, unlike, for example, in In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd where the Court appears to have relied upon multiple publications in major outlets such as The Daily Telegraph, The Age, The Sun Herald and Sydney Morning Herald in finding that there was such a magnitude of response to various promotional events in Australia that was not plausible unless the brand in question had a significant reputation in Australia.[37]
3. Overall, I am satisfied on the balance of probabilities that the Opponent's Trade Mark and for that matter, the combination trade mark MOMOFUKU SEIOBO each had a reputation for fine dining restaurant services in Australia. However, I am not satisfied that there was a reputation in relation to any goods.
4. What I must next consider is whether, based on the reputation(s) in a trade mark, that use of the Trade Mark in relation to specifically the Holder's Goods is likely to deceive or cause confusion.
5. The Holder submits that there is insufficient nexus between the services for which there is a reputation and the Holder's Goods, noting that:

The examples that [the Opponent] provides in Annexure MM-3 (which, with the exception of one, are venues described as a "deli", "food store", "corner store" or "grocery store") are vastly different to the fine dining MOMOFUKU SEIŌBO restaurant that was being operated in the Star Casino in Sydney.[38]

1. The evidence only rises to the level of there being a reputation in restaurant services amongst persons concerned with fine dining. I also note my comments regarding the lack of close relationship between restaurant services and the Holder's Goods. Although the similarity /close relationship between the goods and services are not required under s 60, the relationship between the goods and services can nonetheless be relevant. Because of the insufficient nexus between fine dining restaurant services and the Holder's Goods, and the level of reputation(s) established, I do not consider that deception or confusion is a real risk. Whilst there is some evidence that at times a celebrity chef will run their own line of goods, in this case the goods in question would be sold under a part of another earlier trade mark not referring to a person. Many of the Holder's Goods present little risk of confusion especially because of their expected processed and mass produced natures, such as instant noodles or instant rice. The nature of the goods and services are different in that much of the expected value derived for restaurant services is the experience of consuming a meal of a given restaurant, which is unlike that value derived from, for example, pre-prepared meals or food such as instant noodles. I am not satisfied that there is a real risk that a consumer would be deceived or caused to wonder whether there is a connection in the course of trade between the Holder's Goods and the services of the Opponent provided under its MOMOFUKU and/or MOMOFUKU SEIOBO trade marks because of a reputation in either of these trade marks.
2. Accordingly, I am not satisfied that the ground of opposition under s 60 has been established.

1. Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of the Trade Mark would not could be contrary to law.[39]
2. The SGP states:

The Opponent has continuously used the Opponent's Trade Mark in Australia since October 2011 in connection with "Restaurant services" in Class 43. As a result, the Opponent has acquired a substantial reputation in Australia in the Opponent's Trade Mark for the aforementioned services.

The Opposed Mark is substantially identical with or deceptively similar to the Opponent's Trade Mark and is used or intended to be used connection with goods that are similar or so highly related to the services for which the Opponent's Trade Mark is used and registered.

As a result, consumers could be misled or deceived as to the origin of the goods of the Opposed Mark, and/or whether the Opponent has endorsed, licensed, or approved use of the Opposed Mark in connection with goods that are closely related to the services for which the Opponent's Trade Mark is registered.

The priority date of the Opponent's Trade Mark and the Opponent's use of its mark in connection with Class 43 restaurant services predates the Priority Date of the Opposed Mark.

Using the Opposed Mark for the food and beverage goods in Classes 29 and 30 for which the Opposed Mark has been filed or for services or closely related to those goods, would amount to, without limitation, breaches of:

(a) Section 18 of the ACL, which prohibits a person, in trade or commerce, from engaging in conduct which is misleading or deceptive or is likely to mislead or deceive;

(b) Section 29(1)(g) of the ACL which prohibits a person, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion, by any means, of the supply of goods or services, from making false or misleading representations that the goods or services have sponsorship or approval; and

(c) Section 29(1)(h) of the ACL which prohibits a person, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion, by any means, of the supply of goods or services, from making a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation.

1. The Opponent submits that use of the Trade Mark would be contrary to ss 18 and 29 of the Australian Consumer Law ('ACL') which forms Schedule 2 of the Competition and Consumer Act 2010 (Cth).
2. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression 'mislead or deceive' in s 18 of the ACL and 'false or misleading' in s 29 of the ACL.
3. As already indicated in respect of s 60, I am not satisfied that use of the Trade Mark for Holder's Goods is likely to cause deception or confusion due to the reputation of the Opponent's Trade Mark or the MOMOFUKU SEIOBO trade mark. It follows that on the stricter test posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive, or amount to a false or misleading impression under ss 18 and 29 of the ACL.
4. The Opponent has not established that use of the Trade Mark would be contrary to law. Consequently, the ground of opposition under s 42(b) has not been established.

(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

(2) The Registrar must notify the International Bureau of the Registrar's decision.

1. I am not satisfied that a ground of opposition has been established. Accordingly, extension of protection of the IRDA may follow in due course.
2. If the Registrar is served with a notice of appeal before that time, I direct that extension of protection shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court's order or direction.

1. Both parties have requested costs. It is normal for costs to follow the event. I note that the Holder has been successful. I award costs against the Opponent in accordance with Schedule 8 to the Regulations.

[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[13] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [38].

[14] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [40] (Kennett J) ('Ragopika'). See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).

[15] Re Aussat Pty Ltd [1993] ATMO 55 (Hearing Officer Thompson).

[18] UK Intellectual Property Office decision number O/0255/24, published 26 March 2024 (Hearing Officer S Wilson).

[19] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936 (Gummow J). See also, s 7(1).

[20] Re Hicks Trade Mark; Ex parte Metters Bros [1897] VicLawRp 118; (1897) 22 VLR 636 (Holroyd J).

[21] Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited [2023] FCAFC 175, [144] (Nicholas, Burley and Cheeseman JJ).

[25] [2005] FCA 471, [43] (Merkel J).

[26] [2011] FCA 339.

[28] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, [76] (Yates, Stewart and Rofe JJ); Redbubble Ltd v Hells Angels Motorcycle Corporation (Australia) Pty Limited [2024] FCAFC 15, [59] (Perram and Downes).

[29] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) ('ConAgra').

[30] ConAgra, ibid. See also, Sara Lee Corp v Bali Blue Pty Ltd [2003] ATMO 81 (Hearing Officer Skivington).

[31] McCormick & Co Inc v McCormick [2000] FCA 1335, [127] (Kenny J) ('McCormick').

[32] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O'Bryan J).

[33] McCormick (n 31) [80] (Kenny J).

[37] In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193, [10] (Katzmann J).

[38] Holder's Written Summary of Submissions, [33].

[39] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).