Jaimon Thomas v Monsoon Group Australia Pty Ltd - [2023] ATMO 93

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Jaimon Thomas to applications under section 92 of the Trade Marks Act 1995 (Cth) by Monsoon Group Australia Pty Ltd for removal of trade mark numbers 1774537 – KAYAL THE KERALA BACKWATER CUISINE (figurative) – and 2003430 – KAYAL – both in class 43 in the name of Jaimon Thomas

Delegate:

Nicholas Barbey

Representation:

Opponent: Edwina Whitby of counsel instructed by Baxter Patent Attorneys Pty Ltd

Applicant: Sonia Stewart of counsel instructed by LegalVision ILP Pty Ltd

Decision:

2023 ATMO 93

Trade Marks Act 1995 (Cth) – applications under ss 92(4)(a) and (b) – complete removal sought – intention in good faith to use or authorise use established in respect of registration 2003430 – evidence does not show use of registration 1774537 during the relevant period or obstacle to use – discretion not exercised – registration 2003430 to be retained on the Register and registration 1774537 to be removed

Background

Jaimon Thomas (‘Opponent’) is the owner of the following Australian trade mark registrations (together ‘Registrations’):
Trade mark:   (‘537 Mark’)
Registration number:  1774537
Filing date:  2 June 2016
Specification:  Class 43: inn keeping (bar, restaurant and accommodation); restaurant booking or reservation services provided in relation to a customer loyalty or frequent buyer scheme; restaurant reservation services; restaurant services; restaurant services for the provision of fast food; restaurants; salad bar restaurant services; self-service restaurants; theatre restaurants (provision of food and drink); hospitality services (accommodation); hospitality services (food and drink); arranging of wedding receptions (food and drink); charitable services, namely providing food and drink catering; coffee bar and coffee house services (provision of food and drink); food and drink catering; food cooking services; food preparation; internet cafe services (provision of food and drink prepared for consumption); night club services (provision of food and drink); preparation of food and drink; preparation of take-away and fast food; providing food and drink; snack bars (provision of food and drink); take away food services; take out food and beverage services; takeaway food and drink services
(‘537 Services’)
Trade mark:  Kayal     (‘430 Mark’)
Registration number:  2003430
Filing date:  16 April 2019
Specification:  Class 43: booking of restaurant seats; inn keeping (bar, restaurant and accommodation); restaurant services; restaurants; salad bar restaurant services
(‘430 Services’)
On 3 June 2021, Monsoon Group Australia Pty Ltd (‘Applicant’) filed a non-use application based on ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking removal of the 537 Mark from the Australian Register of Trade Marks (‘Register’). On the same day, the Applicant also filed a non-use application based on s 92(4)(a) of the Act seeking removal of the 430 Mark from the Register. Both non-use applications sought removal of all the registered services.
The Opponent filed notices of intention to oppose the non-use applications followed by Statements of Grounds and Particulars (‘SGPs

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2023] ATMO 93
Decision Date: 11 July 2023

CaseChat Overview and Summary

This matter concerned two non-use applications brought by Jaimon Thomas (the Applicant) against Monsoon Group Australia Pty Ltd (the Opponent) concerning registered trade marks. The applications sought the removal of the trade marks from the Register on the grounds of non-use. The delegate of the Registrar of Trade Marks heard the matter.

The primary legal issues before the court were whether the Opponent had made good faith use of the registered trade marks in Australia during the relevant periods, or alternatively, whether the Opponent had a good faith intention to use the trade marks in Australia on the relevant dates. Specifically, for one trade mark, the court had to consider the ground of non-use under section 92(4)(b) of the Act, requiring proof of use in the three years preceding the application. For the other trade mark, the court had to consider whether the Opponent had a good faith intention to use the mark on a specific relevant date, or had used it in Australia in the period leading up to the application.

The court's reasoning focused on the onus of proof, which rested on the Opponent to rebut the allegations of non-use. The delegate considered the evidence filed by both parties, including evidence in support, evidence in answer, and evidence in reply. The court noted that section 101(3) of the Act allowed the Registrar to decline removal even if a ground for non-use was established, if it was reasonable to do so. The delegate applied the relevant provisions of the Act concerning the periods for establishing use and the requirement for good faith intention.

The delegate determined that the Opponent bore the onus of rebutting the non-use allegations. The court considered the specific grounds raised under section 92 of the Act for each trade mark, including the requirement to demonstrate good faith use or intention to use the marks in Australia during the prescribed periods. The delegate would then make a determination based on the evidence and submissions presented.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The same evidence was filed in respect of both non-use applications. Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). In turn, the Opponent filed Evidence in Reply (‘EIR’) and an oral hearing was requested. On 15 March 2023, the Opponent filed additional evidence (‘Late Evidence’) which will be addressed below. Submissions were filed by the Opponent on 28 March 2023 (‘Opponent’s Submissions’) and by the Applicant on 4 April 2023 (‘Applicant’s Submissions’). As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 11 April 2023. Edwina Whitby of counsel presented submissions on behalf of the Opponent and Sonia Stewart of counsel presented submissions on the Applicant’s behalf. Section 92 of the Act relevantly provides: The Opponent bears the onus of rebutting the non-use allegations.[1] If satisfied that it is reasonable to do so, the Registrar may decline to remove the Registrations from the Register even if the ground on which the relevant non-use application was made has been established.[2][1] Act ss 100(1)(a)–(c).[2] Ibid s 101(3). The non-use application made in respect of the 537 Mark was filed on 3 June 2021 and complies with s 93(2) of the Act.[3] It nominated grounds under ss 92(4)(a) and (b) of the Act. However, given the way that s 92(4)(a) is expressed, this provision essentially merges with s 92(4)(b) once a trade mark has been registered for 5 years.[4] Accordingly, it is only necessary to consider the s 92(4)(b) ground. To rebut the non-use allegation, the period in which the Opponent must establish good faith use of the 537 Mark in relation to the 537 Services in Australia is the three year period ending on 3 May 2021 (‘537 Period’).[3] See Act s 93(2) prior to amendments to that section brought about by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3. The amended s 93(2) applies to trade mark applications filed from 24 February 2019 onwards.[4] See, eg, Auswool Products Pty Ltd v Source Co International Pty Ltd [2022] ATMO 173, [9]; Bangkok Broadcasting & T.V. Co Ltd v Seven Network (Operations) Limited [2021] ATMO 78, [21]; Orientis Gourmet v ABCDEX Pty Ltd and Burkhard Geiger [2020] ATMO 134, [17]; Live Entertainment Investments III Pty Ltd v The Education Group Pty Ltd [2018] ATMO 3, [22]. The non-use application made in respect of the 430 Mark was filed on 3 June 2021 and complies with s 93(1) of the Act. Adapting the language of s 92(4)(a), the non-use allegation can be summarised as follows: i) on 16 April 2019 (‘Relevant Date’) the Opponent had no good faith intention to use, authorise use of or to assign the 430 Mark in Australia and ii) the Opponent has not used the 430 Mark in Australia in relation to the 430 Services at any time before 3 May 2021 (‘430 Period’). In this context, the Opponent can rebut the non-use allegation by establishing use of the 430 Mark in relation to the 430 Services during the 430 Period. Alternatively, the non-use allegation can be rebutted if the Opponent establishes that, on the Relevant Date, he had a good faith intention to use the 430 Mark in respect of the 430 Services in Australia.

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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