Federal Court of Australia

Thomas v Monsoon Group Pty Ltd [2025] FCA 911

ORDERS

THE COURT ORDERS THAT:

1.    Pursuant to rules 34.25, 1.34 and / or 1.39 of the Federal Court Rules 2011 (Cth):

(a)    The Applicant be granted an extension of time within which to file a notice of appeal from the decision of the Registrar of Trade Marks by her delegate, delivered on 17 February 2025, in respect of Australian trade mark number 2003430 (Decision).

(b)    The Applicant have leave to file and rely on a notice of appeal in the form of the draft Notice of Appeal filed on 28 March 2025 (a copy of which is at pages 15 to 24 of Annexure PAG-01 to the Affidavit of Philip Andrew Goatcher sworn on 26 March 2025).

2.    The appeal be allowed.

3.    The Decision be set aside.

4.    The Registrar of Trade Marks allow Australian trade mark number 2003430 to remain registered in respect of all services covered by the registration.

5.    The Applicant is directed to provide a copy of these orders to the Registrar of Trade Marks forthwith.

6.    If the parties are unable to reach agreement as to costs:

(a)    the Applicant file written submissions in relation to costs of no more than two (2) pages within 14 days of these orders; and

(b)    the Respondent file written submissions in relation to costs of no more than two (2) pages within 21 days of these orders.

Any issue of costs is to be determined on the papers.

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

REASONS FOR JUDGMENT

HESPE J:

INTRODUCTION

1    The applicant seeks an extension of time in which to file a notice of appeal pursuant to r 34.25 of the Federal Court Rules 2011 (Cth) (Rules). The appeal is from a decision of a delegate of the Registrar of Trade Marks made on 17 February 2025 under s 101 of the Trade Marks Act 1995 (Cth) (Act) to remove the applicant’s trade mark from the Register of Trade Marks for non-use during the period of three years ending on 12 April 2023 (Relevant Period).

2    The decision of the delegate followed an application filed by the respondent pursuant to s 92 of the Act to remove the applicant’s Australian Registered Trade Mark No. 2003430 which is the word “KAYAL” registered in class 43 for “booking of restaurant seats; inn keeping (bar, restaurant and accommodation); restaurant services; restaurants; salad bar restaurant services” (Trade Mark).

3    The applicant is the owner and founder of a restaurant business operating under the Trade Mark which, during the Relevant Period, included restaurants located in the United Kingdom and India.

4    The hearing of the application for extension of time and the appeal, if an extension is granted, were listed for hearing on 24 July 2025.

5    Before the hearing, the respondent filed a submitting notice pursuant to r 12.01 of the Rules, submitting to any order the Court may make in the proceeding but requesting that it be heard on the question of costs. The Court is satisfied that the respondent was served with the application for the extension of time and the draft notice of appeal. The Court is also satisfied that the respondent was made aware that the hearing would address both the application for the extension of time and the appeal. In those circumstances, by filing a submitting notice, the respondent has indicated that it does not wish to contest the relief sought in the application: r 12.01(1) of the Rules.

6    Based on the affidavit evidence before it, the Court is also satisfied that the Registrar was made aware of the application for the extension of time, the grounds of appeal and the fact that the respondent had filed a submitting notice. The Registrar has not sought to intervene or to be heard on the application for the extension of time or the appeal if an extension of time is granted.

Application for extenstion of time

7    An appeal lies to this Court from a decision of the Registrar made under s 101 of the Act: s 104 of the Act. The appeal must be filed within 21 days of the date of the decision: r 34.24(1) of the Rules. Accordingly, the deadline to appeal was 10 March 2025. The application for an extension of time and draft notice of appeal were filed on 26 March 2025, some 2 weeks late.

8    The applicant was travelling in India when he was informed by his trade marks attorneys of the delegate’s decision on 26 February 2025, a little more than a week after the decision had been made. When the applicant’s trade marks attorneys informed the applicant of the decision, they did not inform the Applicant that they could not prepare and file an appeal and that such an appeal would need to be prepared and filed by a firm of solicitors. The applicant’s trade marks attorneys sent the applicant a follow up email on 5 March 2025 requesting that the applicant let them know if he wished to proceed with filing an appeal. Because the applicant was travelling and did not have continuous access to his emails, he did not see this email until 10 March 2025. The applicant’s trade marks attorneys sent a further email on the morning of 10 March 2025 informing the applicant that 10 March 2025 was the deadline for filing an appeal. The applicant read this email in the early hours of the morning in India on 10 March 2025 and arranged for instructions to be sent for an appeal to be filed. It was only then that the applicant was informed by the applicant’s trade marks attorneys that he would need to engage solicitors to file an appeal and that, as it was a public holiday in Victoria that day, the applicant “might attempt to find a NSW based solicitor” and was provided a link to the NSW Law Society website.

9    In these circumstances where the delay is not long, the applicant has provided an explanation for the delay and the respondent has not sought to contend that it has suffered any prejudice and does not contest the relief sought by the applicant, it is appropriate to grant the extension of time: see for example Yang v Vuly Pty Ltd [2020] FCA 1037 at [9] (Burley J).

the Appeal

10    Pursuant to s 92(4)(b) of the Act, a person may apply to the Registrar to have a trade mark removed from the Register on the ground:

that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)    used the trade mark in Australia; or

(ii)    used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

11    The operation of the statutory scheme concerning such applications was explained by Burley J in Hungry Spirit Pty Limited v Fit n Fast Australia Pty Ltd [2020] FCA 883, as follows (emphasis in original):

[8]    The Registrar is obliged to give notice of an application under [s] 92, including by advertising the application in the Official Journal: s 95. The application for removal may be referred by the Registrar to a prescribed court for determination: s 94. That step was not taken in this case. Any person may oppose an application for removal by filing a notice of opposition with the Registrar in accordance with the regulations and within the prescribed period: s 96. If the application for removal is unopposed, or the opposition has been dismissed, the Registrar (or the court, if the application is referred to it) must remove the trade mark from the Register in respect of the goods and/or services specified in the application: s 97. If the application is opposed, the registrar must deal with the opposition in accordance with the regulations: s 99. The Trade Marks Regulations 1995 (Cth) provide that the applicant must file a notice of intention to defend the application, if a notice of intention to oppose the application is filed: reg 9.15. If a notice of intention to defend is not filed within the period required, the Registrar may decide to take the opposition to have succeeded, and refuse to remove the trade mark from the Register: reg 9.15(3).

[9]    Section 100(1) provides that it is for the trade mark owner (as the opponent to the non-use application) to rebut any allegation that the trade mark has not been used or was not intended to be used.

[10]    Section 101(1) provides that if the proceedings have not been discontinued or dismissed, and the Registrar is satisfied that the ground on which the application was made have been established the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates. Section 101(2) similarly provides that if, at the end of the proceedings relating to the opposed application the court is satisfied that the grounds on which the application was made have been established the court may order the Registrar to remove the trade mark from the register in respect of all or some of the goods or services to which the application relates. However, the Registrar (or the court) may elect not to effect any removal if she (or the court) is satisfied that it is reasonable to decline to do so: s 101(3), (4).

[11]    If the application is determined by the Registrar (or her delegate) an appeal lies to this Court or the Federal Circuit Court from the decision: s 104. It is by that route that the present appeal is before the Court. As a hearing de novo, the Court stands in the shoes of the Registrar to consider afresh whether or not the non-use application should be allowed.

…

[13]    As a hearing de novo, the Court considers the application for removal brought pursuant to s 92 afresh. The use of the word “appeal” in s 56 and in s 104 does not confer appellate jurisdiction upon the Court. The Court approaches the matter for the first time exercising the judicial power of the Commonwealth, not in order to decide whether the delegate as an executive decision maker was right or wrong, or otherwise to correct error in the executive decision, but to deal with a subject matter, a controversy, for the first time: New England Biolabs Inc v F Hoffmann-La Roche AG [2004] FCAFC 213; 141 FCR 1; 62 IPR 510 at [44] (Kiefel, Allsop (as their Honours then were) and Crennan JJ); Woolworths Ltd v BP PLC (No 2) [2006] FCAFC 132; 154 FLR 97; 235 ALR 698; 70 IPR 25 at [137] (Heerey, Allsop (as his Honour then was) and Young JJ); Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; 367 ALR 393 (Burley J at [228], Greenwood J agreeing generally at [18]).

12    Notwithstanding that the trade mark owner (and the opponent to the application for removal) bears the onus of rebutting an allegation of non-use, Burley J explained in Hungry Spirit that it may be appropriate to make orders reversing a decision of the delegate in the absence of determining the merits of the appeal where the applicant for removal does not seek to contest its application for removal on appeal. That is because an applicant for removal remains the moving party on the trademark owner’s appeal to the Federal Court and, as such, remains under an obligation to prosecute its non-use application. As Burley J explained:

[14]    The Act and Regulations make clear that it is the applicant for removal that remains the moving party, despite the fact the appeal was initiated by Hungry Spirit and despite the reversal of onus effected by s 100. In this regard it is significant that the applicant is obliged to file a notice of intention to defend. If it does not do so, then the opposition may be taken to have succeeded and the removal application will fail. Whilst Hungry Spirit was obliged to file a notice of appeal in this Court, because it did not succeed before the delegate, the substantive moving party in the proceeding remained Fit n Fast, as the applicant for removal.

[15]    Further, s 101(1) requires the Registrar to be satisfied that the grounds upon which the non-use application was made have been established. Accordingly, despite the reversal of onus, ultimately it is for the applicant for removal to persuade the Registrar of the appropriateness of any order made.

[16]    In these circumstances, it is apparent that despite the different scheme set out in the Act and Regulations, the application for non-use must be initiated and prosecuted by the non-use applicant. The position is analogous to that which I considered in Hungry Spirit 1 [Hungry Spirit Pty Ltd ATF The Hungry Spirit Trust v Fit n Fast Australia Pty Ltd [2019] FCA 1277].

[17]    In the present case, Fit n Fast and Hungry Spirit have reached a compromise, with the consequence that Fit n Fast no longer wishes to prosecute its application for non-use. Hungry Spirit maintains its opposition to the non-use application. Were that to have been the position before the delegate of the Registrar, she could pursuant to reg 9.15 have moved, in effect, to dismiss the application for non-use. Having been notified of the parties’ position, the Registrar does not oppose the orders sought, which will remove the limitation placed on the designation of goods and services. Furthermore, having regard to my consideration of the reasons given by the delegate, I can see no self-evident reason why, in these circumstances, the orders should not be made.

13    Although in the present case the parties do not seek an order by consent, the effect of the submitting notice is that the respondent does not contest the relief sought by the applicant and has put forward no evidence or argument as to non-use or as to exercise of the discretion under s 101(3) of the Act. The Court therefore considers the approach adopted by Burley J in Hungry Spirit to apply in the present case.

14    In Hungry Spirit, Burley J considered it appropriate to make orders reversing the decision of the delegate without determining the merits of the appeal. Nonetheless, his Honour examined the reasons given by the delegate to be satisfied that there was “no self-evident reason” why the orders should not be made. The Court understands the phrase “no self-evident reason” to be a reference to a clear determinative matter of fact or law which would preclude the making of orders reversing the decision of the delegate.

15    In the present case, the Court has been assisted by oral and written submissions from the applicant in order to be satisfied that there is no self-evident reason why the orders should not be made. The Court considers that it is important to be so satisfied in order to ensure that reversing a decision of the Registrar without determining the merits of the appeal does not undermine the integrity of the Register : see further Village Roadshow IP Pty Ltd v VUR Village Trading No 1 Limited [2025] FCA 428 at [12]-[13] (O’Callaghan J).

16    The Court is of the view that it is appropriate to make the orders sought in this case for the following reasons.

17    First, the respondent, who was successful before the delegate but remains the moving party, does not contest the making of the order which has the effect of setting aside the orders made by the delegate.

18    Secondly, the Registrar having been informed of the application and the appeal has not sought to oppose, or intervene.

19    Thirdly, the fact that the delegate found that the Trade Mark was not used in Australia during the non-use period, and also declined to exercise the statutory discretion to not remove the Trade Mark, is not a bar to the court allowing the appeal: Village at [21].

20    Fourthly, the applicant, as the opponent to the removal application, is taken to have rebutted the allegation of non-use if it establishes that it used the Trade Mark in good faith in relation to the relevant services during the Relevant Period: s 100(1)(c) of the Act. The fact that no restaurant was operating in Australia using the Trade Mark during the Relevant Period does not preclude the making of a finding that there has been a use of the mark in relation to the services: Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73; (1984) 156 CLR 414 at 433.

21    Fifthly, as was explained in Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 107 FCR 166 at [40] (Drummond J), to demonstrate use it is sufficient for the owner of the mark to show that it has:

gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, that is, to carrying its intention to use the mark into effect.

22    There is a demarcation between use of a mark in trade and activities with respect to the mark which are preliminary to actual use of the mark: Woolly Bull at [23]. Here there is at least evidence of the owner of the mark conducting a restaurant business outside of Australia under the KAYAL brand and having entered into franchise agreements in Australia, as franchisor, pursuant to which franchisees were to conduct restaurant operations offering that same style of cuisine under the KAYAL brand and the Trade Mark, thereby opening a channel for the establishment of such restaurants: cf Conquip Holdings Pty Ltd v S & A Restaurant Corp [2000] FCA 256; AIPC ¶91-547 at [78]-[85] (Heerey J). There is therefore at least some factual basis from which it might be concluded that the applicant had committed itself to using the Trade Mark in Australia.

23    Sixthly, an opponent to a removal application is taken to have rebutted the allegation of non-use if the opponent establishes that the trade mark was not used by its registered owner in relation the relevant goods or services during the relevant period because of circumstances that were an obstacle to the use of the trade mark during the period: s 100(3)(c) of the Act. It is not necessary to show that the circumstances made use of the mark impossible; it is enough to show that those circumstances made it impractical, in a business sense, to use the mark: Woolly Bull at [45](5) citing "Bali" Trade Mark [1966] RPC 387 at 406 (Ungoed-Thomas J). Furthermore, it is not necessary to show that the circumstances that constitute an obstacle existed throughout the relevant period: Woolly Bull at [58]. In the present case, the Trade Mark was to be used in relation to restaurant services which were severely disrupted during the Relevant Period by the COVID-19 pandemic and the corresponding restrictions implemented by various State governments. In the present case, there is at least some evidence that the COVID-19 pandemic affected the ability of franchisees to commence their operations.

24    Seventhly, no party now contends that the s 101(3) discretion to allow the Trade Mark to remain registered should not apply in favour of the applicant even if the applicant fails to prove it used the Trade Mark in Australia during the Relevant Period. By contrast, the applicant referred to the following matters as supporting an exercise of the discretion:

(a)    occurrence of the COVID-19 pandemic;

(b)    the evidence of the franchise agreements entered into; and

(c)    the fact that since the non-use application was made a restaurant under the KAYAL name in Victoria pursuant to the terms of a franchise agreement between it and the applicant.

25    The Court is satisfied that there is no clear determinative factual or legal barrier which would preclude the exercise of the discretion in the present case. The Court is satisfied that there is no self-evident reason why the orders sought by the applicant should not be made.

26    The Court therefore considers it appropriate to make orders the effect of which is to reverse the decision of the Registrar’s delegate, without determining the merits of the applicant’s claim that it used the Trade Mark.

Associate:

Dated:    11 August 2025