Federal Court of Australia

Thomas v Monsoon Group Australia Pty Ltd (Costs) [2025] FCA 1106

ORDERS

THE COURT ORDERS THAT:

1.    There be no order as to costs in relation to the appeal proceeding.

2.    The decision as to costs made by the delegate of the Registrar of Trade Marks be varied and the Respondent pay the Applicant’s costs of the proceeding before the delegate of the Registrar of Trade Marks fixed in the sum of $1,625.

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

REASONS FOR JUDGMENT

HESPE J:

INTRODUCTION

1    By orders made on 11 August 2025, the Court granted the applicant an extension of time in which to file a notice of appeal from a decision of the delegate of the Registrar of Trade Marks to remove the applicant’s trade mark from the Register of Trade Marks for non-use. The respondent earlier filed a submitting notice, save as to costs, pursuant to r 12.01 of the Federal Court Rules 2011 (Cth). The Court was satisfied that there was no self-evident reason why the orders sought by the applicant should not be made and the appeal was allowed without determining the merits of the applicant’s appeal: Thomas v Monsoon Group Pty Ltd [2025] FCA 911.

2    The parties have been unable to agree as to the costs of the proceedings. In accordance with the orders made on 11 August 2025, the parties filed written submissions and the issue of costs is to be determined on the papers.

3    The applicant now seeks its costs of both the proceeding before the delegate of the Registrar of Trade Marks and the appeal proceeding in this Court. The respondent submits that there should be no order for costs of the appeal and that the applicant should pay the respondent’s costs of the proceeding before the delegate.

Costs of the Appeal

4    An award of costs in proceedings before the Court is in the discretion of the Court: s 43(2) of the Federal Court of Australia Act 1976 (Cth) (the FCA Act). In the absence of special circumstances, though not a rigid rule, usually the discretion is exercised to award costs in favour of a successful party: Oshlack v Richmond River Council [1998] HCA 11; (1998) 193 CLR 72 at [35] (Gaudron and Gummow JJ), [66]-[67] (McHugh J) and [134] (Kirby J); Foots v Southern Cross Mine Management Pty Ltd [2007] HCA 56; (2007) 234 CLR 52 at [25] (Gleeson CJ, Gummow, Hayne and Crennan JJ); Northern Territory v Sangare [2019] HCA 25; (2019) 265 CLR 164 at [25] (Kiefel CJ, Bell, Gageler, Keane and Nettle JJ).

5    The exercise of the discretion can be affected by the respondent’s filing of a submitting notice. The filing of a submitting notice does not “immunise” a party from an adverse costs order. Attention must be paid to the context in which the submitting appearance was filed: Commissioner of Taxation v Warner (No 2) [2015] FCA 1281; (2015) 244 FCR 498 at [22] (Perry J); see too Nyman v Valmas [1997] NSWCA 235 at 5 (Beazley JA).

6    In the present case, the Court has had regard to the following matters in exercising its discretion:

(1)    The applicant applied for and was granted an extension of time. The need for the extension of time was not caused or contributed to by the actions of the respondent.

(2)    The appeal was necessary for the applicant to set aside the decision of the delegate.

(3)    The application for the extension of time and draft notice of appeal was filed on 26 March 2025. The submitting notice was filed on 4 June 2025, before any orders had been made for the filing of evidence or submissions.

(4)    The filing of the submitting notice had a fundamental impact on the evidentiary burden of the applicant and the nature of the task of the Court. The Court was relieved of the task of determining the merits of the applicant’s claims and the applicant was entitled to succeed on the basis that the Court was satisfied that there was no self-evident reason why the relief sought ought not to be granted.

(5)    The applicant’s success in the appeal was based on the threshold of “no self-evident reason” rather than based on ultimate findings of use made in its favour. The applicant’s success was assisted by the fact that the respondent did not seek to pursue their removal application.

7    In light of the above, the Court does not accept the applicant’s submission that the respondent adopted a true adversarial position: cf Kisimul Holdings Pty Ltd v Clear Position Pty Ltd (No 2) [2014] NSWCA 317; (2014) 86 NSWLR 645 at [15]-[19] (Beazley P, Barrett and Gleeson JJA). The Court will make no order as to the costs of the appeal.

Costs of the Application before the delegate

8    Section 43 of the FCA Act does not confer power on the Court to make an order as to the costs of a proceeding before the Registrar’s delegate: Somers Enterprises Australia Pty Ltd v Basefun Pty Ltd (No 2) [2025] FCA 418 at [10] (Bennett J). Section 197 of the Trade Marks Act 1995 (Cth) relevantly provides:

On hearing an appeal against a decision or direction of the Registrar, the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) may do any one or more of the following:

…

(d)    affirm, reverse or vary the Registrar’s decision or direction;

(e)    give any judgment, or make any order, that, in all the circumstances, it thinks fit;

(f)    order a party to pay costs to another party.

9    It has been accepted that this provision confers power to vary a delegate’s costs award relating to a proceeding before the Registrar of Trade Marks (or the delegate): UCP Gen Pharma AG v Mesoblast, Inc (No 2) [2012] FCA 500 at [3] (Jessup J).

10    The applicant calculated its total recoverable costs in accordance with reg 21.13 and sch 8 to the Trade Marks Regulations 1995 (Cth) (as the regulations then stood prior to amendment by the Intellectual Property Legislation Amendment (Fee Amounts and Other Measures) Regulations 2024 (Cth)) as being $1,625.

11    The question is whether, in light of the judgment of this Court, it can now be said that the applicant ought to have succeeded before the Registrar’s delegate, such that it would have been awarded its costs – and the respondent would not have been awarded its costs – on the conventional basis: Mesoblast at [3].

12    The appeal to this Court was a de novo hearing of the respondent’s removal application. The respondent, by its conduct has not sought to pursue its removal application in this Court. Had the respondent demonstrated its wish to not prosecute its application for non-use before the delegate (by failing to file a notice of intention to defend), the delegate could have dismissed that application pursuant to reg 9.15 of the Trade Marks Regulations 1995 (Cth).

13    In these circumstances, the Court will vary the delegate’s decision in relation to costs such that the respondent pays the applicant’s costs of the proceeding before the delegate, fixed in the sum of $1,625.

Associate:

Dated:    10 September 2025