Thomas v Monsoon Group Australia Pty Ltd - [2025] ATMO 33

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Jaimon Thomas to application under section 92 of the Trade Marks Act 1995 (Cth) by Monsoon Group Australia Pty Ltd to remove trade mark number 2003430 (class 43) - Kayal - in the name of Jaimon Thomas.

Delegate:

Nicole Worth

Representation:

Opponent: Martin Earley, Baxter Patent and Trade Mark Attorneys

Applicant: did not participate in hearing

Decision:

2025 ATMO 33

Trade Marks Act 1995 (Cth) – application under section 92(4)(b) – use of trade mark not established – obstacle to use of trade mark not established – discretion to maintain registration not exercised – trade mark to be removed.

Background

Jaimon Thomas (‘Opponent’) has opposed an application made under s 92 of the Trade Marks Act 1995 (Cth)[1] (‘Removal Application’) to remove his trade mark from the Australian register of trade marks (‘Register’). The relevant details of the trade mark are as follows:
Registration No.:                   2003430
Trade Mark:                Kayal (‘Trade Mark’)
Filing Date:  16 April 2019
Services:Class 43: Booking of restaurant seats; Inn keeping (bar, restaurant and accommodation); Restaurant services; Restaurants; Salad bar restaurant service
[1] In this decision, all references to sections or regulations are references to sections of the Trade Marks Act 1995 (Cth) or regulations of the Trade Mark Regulations 1995 (Cth) respectively, unless otherwise indicated.
The Removal Application was made by Monsoon Group Australia Pty Ltd (‘Applicant’) on 12 May 2023. It was made on the basis of s 92(4)(b) and is in respect of all of the services for which the Trade Mark is registered.
The Opponent filed his Notice of Intention to Oppose the removal and Statement of Grounds and Particulars (‘SGP’) in due course, followed by evidence in support of his opposition (‘EIS’).
The Applicant did not file evidence in answer. Once the period for filing evidence in answer had expired, the Opponent requested that the matter be heard by way of written submissions. The Opponent filed its submissions on 15 October 2024 (‘Opponent’s submissions’). The Applicant did not file submissions.
The matter has now been allocated to me to decide, as a delegate of the Registrar of Trade Marks, on the basis of the documents identified above.
Legislative Framework
The subject application for removal has been made under s 92(4)(b), which relevantly provides:
92 Application for removal of trade mark from Register etc.
…
(4) An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(a) …
(b) 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…

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: [2025] ATMO 33
Decision Date: 17 February 2025

CaseChat Overview and Summary

This matter concerned an application by Thomas (the Applicant) to remove the trade mark "Kayal" from the Register of Trade Marks, owned by Monsoon Group Australia Pty Ltd (the Opponent). The Applicant sought removal under section 92(4)(b) of the *Trade Marks Act 1995* (Cth), alleging non-use of the trade mark during the relevant period. The Opponent contended that the trade mark had been used in Australia and, alternatively, that the Registrar should exercise discretion to maintain the registration due to the trade mark's reputation and other relevant factors, including significant investment in establishing franchises in Australia.

The primary legal issue before the Hearing Officer was whether the Opponent had established sufficient use of the "Kayal" trade mark in Australia during the relevant period to prevent its removal from the Register. A secondary issue, to be considered if use could not be established, was whether the Registrar should exercise discretion to maintain the registration, taking into account the Opponent's asserted reputation and other factors, such as substantial capital, time, and effort invested in setting up franchisees in Australia. The standard of proof required of the Opponent was on the balance of probabilities, and if the exercise of discretion was sought, the Opponent bore the onus of positively satisfying the Registrar that it was reasonable to do so.

The Hearing Officer found that the ground for removal under section 92(4)(b) had been established, meaning the Opponent had failed to demonstrate sufficient use of the trade mark. Consequently, the Hearing Officer was not satisfied that discretion should be exercised to maintain the registration. The trade mark was ordered to be removed from the Register in its entirety, with the removal to be stayed for at least one month from the date of the decision to allow for a potential appeal. Costs were awarded against the Opponent.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

I proceed on the basis that the standard of proof required of the Removal Opponent is on the balance of probabilities.[2] I note further that if the exercise of the Registrar’s discretion is sought, it is for the party seeking the exercise of the discretion to positively satisfy the Registrar that it is reasonable to do so.[3]SGP and Evidence [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52 of the Act.[3] Austin, Nichols & Co Inc v Lodestar Anstalt (‘Austin’) [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ), citing Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273].SGP The SGP asserts that the Trade Mark has been used in the Relevant Period, which is reiterated in the EIS and so is discussed below. It is further alleged that to the extent the Opponent cannot establish sufficient use of the Trade Mark in Australia, the Registrar should exercise discretion not to remove the Trade Mark having regard to the reputation of the Trade Mark in Australia and ‘other relevant factors’. The SGP also states:The [Opponent] stands to be severely disadvantaged if the Kayal Mark is removed from the Trade Marks Register. The [Opponent] has spent very substantial amounts of capital, time and effort in settling agreements with Franchisees in Australia to have Covid-19 intervene preventing necessary business trips to Australia from the United Kingdom and Kerala, and substantial efforts and focus on defending multiple removal action brought by [the Applicant]. The [Opponent’s] efforts and investments over a three-to-four-year period to set up Franchisees in Australia, would be lost.EIS The EIS comprises the following four declarations:Declaration by Jaimon Thomas, owner and founder of Kayal Restaurants in the United Kingdom and India, with exhibits JT-1 to JT-28, dated 20 December 2023 (‘Thomas’).Declaration by Geogy Cyriac, franchisee of the Kayal restaurant business owned by the Opponent, with exhibit GC-1, dated 20 December 2023 (‘GC Declaration’).Declaration by Joseph Cyriac, franchisee of the Kayal restaurant business owned by the Opponent, with exhibit JC-1, dated 20 December 2023 (‘JC Declaration’).Declaration by Sabeesh Philip, owner and director of Flavorage Pty Ltd and franchisee of the Kayal restaurant business owned by the Opponent, with exhibits SP-1 to SP-2a, dated 19 December 2023 (‘Philip’). Mr Thomas is the owner and founder of Kayal Restaurants, referred to by him as ‘the KAYAL business’, which includes various restaurants in the United Kingdom, India and alleged franchises in the Asia Pacific region including Australia. In around March 2019 Mr Thomas became aware of use of a trade mark by the Applicant which allegedly infringed his then-registered trade mark comprising the word Kayal with a by-line and imagery of a lamp and boat (registration number 1774537). Mr Thomas sent a letter of demand to the Applicant in June 2019. The Applicant then filed an application to remove the Trade Mark under s 92(4)(a) on 3 June 2021. The Opponent succeeded in its opposition to that application.[4] On 12 May 2023 the Applicant filed the subject removal application under s 92(4)(b).[5][4] The Opponent did not succeed in its opposition to the removal of registration 1774537 under s 92(4)(b), also nominated in that application.[5] Thomas, [4]-[7].

Decision

Reasons for decision

I am accordingly not satisfied that I should exercise my discretion to maintain the registration of the Trade Mark.Decision and Costs The ground for removal under s 92(4)(b) has been established and the Trade Mark should be removed from the Register in its entirety. Given that this decision may be appealed to the Courts, the removal shall not take place until at least one month from the date of this decision. If the Registrar is served with a notice of appeal before then, the removal shall not occur until the appeal has either been discontinued or the removal application has been otherwise dealt with as the Court sees fit. It is usual that costs follow the event, and given there is no apparent reason to depart from this principle I award costs against the Opponent in accordance with Schedule 8 of the Regulations.Nicole WorthHearing OfficerOppositions and HearingsTrade Marks and Designs17 February 2025

Ratio Decidendi

Legal Principle Established

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