Thomas v Monsoon Group Australia Pty Ltd

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 the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Section 92(4)(b) is subject to s 93(2), which stipulates that a non-use application made under s 92(4)(b) may only be made after three years have passed from the date the particulars of the trade mark were entered into the Register. The particulars of the Trade Mark were entered onto the Register on 11 May 2020 and the non-use application was filed on 12 May 2023. This requirement is therefore satisfied.
The three year period of non-use referred to in s 92(4)(b) is the three year period ending on 12 April 2023 (‘Relevant Period’).
Section 96 allows for a person to oppose an application for removal by filing a notice of opposition, and s 100(1)(c) places the onus to rebut an allegation made under s 92(4)(b) on an opponent. Section 100(3) states, inter alia, that the opponent is taken to have rebutted the allegation if it establishes that the trade mark (without additions or alterations substantially affecting its identity) was used in good faith by the registered owner during the relevant period; or that there were circumstances that were an obstacle to use. Note 1 to s 100(3) allows for authorised use to be taken as use by the registered owner in accordance with s 7(3).
Section 101(1) provides that the Registrar may remove a trade mark for any or all of the goods or services to which the application for removal relates, if satisfied that the grounds for removal are established. Alternatively, s 101(3) bestows upon the Registrar a discretion not to remove a trade mark, even where the grounds for removal are established. Section 101(4) provides two examples of matters the Registrar may take into account in deciding whether to exercise the discretion, being use of a trade mark in respect of similar services or closely related goods, or vice versa, but does not limit the matters the Registrar may take into account.
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].
Mr Thomas makes the following statements in respect of the KAYAL business:
·The KAYAL business stated in India in 2001;
·The word KAYAL does not have a direct English translation but is understood as meaning ‘backwater’ in the Southern part of India;
·The first restaurant under the mark Kayal…was opened on or about 19 April 2001 in…India;
·In or about 2006, as the business grew, I opened the first location in the United Kingdom in the Midlands;
·Subsequently, in the United Kingdom, the KAYAL business expanded to Leicester, Nottingham, Leamingtom and West Byfleet;
·In or around 2015, I stated contacting various parties to negotiate a franchise agreement for the expansion to Australia;
·I have four Franchisees in Australia to date; the most recent Franchisee (Mr Joseph Cyriac) executed a Franchise Agreement on 13 December 2022;
·I have visited Australia in relation to the Kayal business in March 2023 with face-to-face business discussions with the franchisees;
·I confirm that two Australian franchisees were ready to launch their businesses shortly after signing franchise agreements in December 2019 and January 2020. However, in late 2019 the Covid-19 pandemic hit the world and started having a significant impact in Australia from early 2020. As a result of this, all businesses, particularly hospitality businesses, were harshly affected by government mandated shutdowns;
·While it has been a very difficult time in the food and hospitality industry over the last three years, the project and intention to launch in Australia have remained and the Australian franchisees have taken effective steps to commence business…;
·I have had continuous communications with franchisees throughout the period of Covid restrictions. We continued to have ongoing commercial discussions and planning for the opening of these Kayal restaurants once commercial activity picked up after the end of government mandated lockdowns;
·With the current and previous opposition proceedings to removal actions, franchisees expressed quite some concern regarding the “Kayal” Trade Mark. It is therefore critical to the Kayal business that the “Kayal” Trade Mark and brand is preserved.[6]
[6] Thomas, [13]-[28].
It is declared that around 2015 Mr Thomas began contacting various parties to negotiate a franchise agreement for expansion to Australia. According to Thomas the population of Keralan people in Australia is increasing, particularly those who have migrated from India then to the United Kingdom then to Australia. Mr Thomas allegedly advertised for franchisees in Australia on the KAYAL business website ‘ although this is not documented nor the date disclosed. It is declared that there was immediate interest from people who had migrated from the United Kingdom to Australia who had been patrons of the Opponent’s restaurants and had maintained a personal relationship with Mr Thomas.
Annexed to Thomas are four franchise agreements, three of which are contained in confidential exhibits.[7] Mr Thomas relies significantly on these franchise agreements. The Registrar is required to provide reasons for her findings, and in discharging that duty it may become necessary for me (as the Registrar’s delegate) to discuss information claimed to be confidential. However, where such discussion is necessary, I will use broad terms to refer to potentially sensitive information.
[7] Thomas, Confidential Exhibits JT-2, JT-4 and JT-11, and Exhibit JT-15.
Each of the franchise agreements relates to the operation of a restaurant business under the Kayal branding and trade marks (being the plaint text word and composite marks containing the word). The agreements identify the rights and responsibilities of each franchisee and the franchisor (being Mr Thomas), and contain nearly identical terms and conditions. The earliest was executed on 27 December 2019, another was executed on 21 January 2020, then 13 December 2022 and lastly 18 March 2023. It is declared that the franchisees of the first two agreements were ready to commence operations shortly after signing, but the onset of Cov-19 and then the removal actions relating to the Opponent’s trade marks caused them to delay commencement. The third likewise appears to have delayed commencement, although it is not explicitly stated why this is so.[8] The franchisee of the fourth franchise agreement had apparently already been operating a restaurant under another name in Victoria. As at the date of Thomas, the restaurant had allegedly converted to the ‘Kayal’ brand and was operating under that name, although no evidence of this is exhibited in Thomas.
[8] Later statements at Thomas [28] and [29] imply that it is due to the removal actions mounted by the Applicant and to Covid-19 restrictions.
Mr Thomas had purchased flights to travel to Australia in April 2020 and again in April 2022, evidenced by confirmation of flight itineraries,[9] to assist in property selection and allegedly to provide training to the franchisees. However, each trip was cancelled due to Covid-19 restrictions. Mr Thomas was eventually able to travel to Australia in March 2023 to meet his franchisees face-to-face and to investigate potential properties for the Kayal business. As evidence of his investigations, a number of emails regarding commercial properties available for sale or lease are exhibited, all dated in March 2023, although some are addressed to third parties not identified in Thomas.[10]
[9] Thomas, JT-5 to JT-6.
[10] Thomas, JT-19.
Thomas provides an overall figure for the amount spent on advertising the Kayal business since first use, which is of a significant amount. However, the figure applies to worldwide advertising and does not distinguish that which applies to Australia. As evidence of the alleged reputation of the Kayal business, Thomas exhibits an extract dated 4 May 2020 from KeralaVoice, the provenance of which is not stated. The extract states ‘The largest Kerala restaurant chain in the UK, is looking for a franchise worldwide…operations starting soon in countries including Australia and New Zealand’.[11] Additionally, celebrity chefs ‘The Hairy Bikers’ and Paul Hollywood have visited the Opponent’s restaurants, the former in 2014 and the latter at an undisclosed date.[12] Paul Hollywood mentions one of the United Kingdom Kayal restaurants in a book he published in 2013.[13] The United Kingdom restaurants have also won several awards and accolades, including during 2022 and 2023.[14]
[11] Thomas, [69] and JT-21.
[12] Thomas, [72]-[73] and JT-22 to JT-23.
[13] Thomas, JT-24.
[14] Thomas, JT-25.
The Trade Mark is also promoted on the website ‘ screenshots of which are provided between the years 2007 and 2021.[15] All of them display the Trade Mark although none of them mention Australia. Likewise, the Trade Mark is promoted via Facebook® and the Australian site for the Tripadvisor platform, but Australia is not mentioned in either.[16]
[15] Thomas, JT-26.
[16] Thomas, JT-27 to JT-28.
According to Thomas, three of the franchisees would be fully operational except for the impact of the Covid-19 pandemic.[17] Thomas concludes with the submission that the Registrar ought to exercise discretion to maintain the registration on the basis that the inability to use the Trade Mark has been as a result of the Covid-19 pandemic and its wide-ranging effects on the hospitality industry’s ability to operate, a matter beyond Mr Thomas’s control.
[17] Thomas, [29].
The GC Declaration and the JC Declaration both attest to the respective declarant’s knowledge of the Kayal restaurants from the declarants’ experiences living in the United Kingdom. Both declare they signed franchise agreements with Mr Thomas and that they visited potential restaurant locations (in Sydney and Melbourne respectively) with Mr Thomas during his visit to Australia in March 2023. Both also declare they look forward to opening their restaurants in 2024.
The Philip Declaration similarly identifies the declarant as a person who was familiar with the Opponent’s Kayal restaurants on account of his previous residency in Ireland. Mr Philip is the owner and director of Flavorage Pty Ltd and operated a restaurant under the business name Flavorage. He declares that after telephone and email communications with Mr Thomas in 2021 and discussions held during Mr Thomas’s visit in March 2023, he entered into a franchise agreement and the Flavorage restaurant is now operating under the brand Kayal. As evidence of this he exhibits an Australian Business Name record which show that Flavorage Pty Ltd has three business names: Kayal Cafe (as of 18 December 2023), Kayal Hospitality (as of 18 December 2023) and Flavorage (as of 6 September 2023).
Discussion
I must first decide whether there has been use of the Trade Mark by the Opponent (being the registered owner) or an authorised user, in relation to the registered services during the Relevant Period. If satisfied so, the opposition succeeds. If not satisfied that the Trade Mark has been used, I must then determine whether to exercise my discretion to allow the Trade Mark to remain registered. The Opponent appears also to indicate some reliance upon the existence of an obstacle to use, being the onslaught of the Covid-19 pandemic. For completeness I will address this issue as well.
Alleged use of the Trade Mark
The quantum of use required to rebut an allegation of non-use is not extensive. As little as a single bona-fide use of the Trade Mark during the Relevant Period may be sufficient,[18] but if a single use if relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[19] Moreover, the use must be as a trade mark, that is, use as a ‘badge of origin’[20] for the relevant services in the course of trade. There need not be an actual sale under the Trade Mark in order for use to be in the course of trade, but it must be shown that the Opponent has gone beyond mere preliminary activities:
The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark ... or that the mark has been used in an advertisement of the goods in the course of trade ... In such cases however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade.[21]
[18] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J) (‘Woolly Bull’).
[19] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).
[20] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sunberg and Finkelstein JJ).
[21] Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73, [23] (Gibbs CJ, Mason, Wilson, Deane and Dawson JJ) (‘Moorgate’).
The Opponent’s submissions on use are brief and assert that use of the Trade Mark in the franchise agreements is use in Australia within the Relevant Period by the Opponent and/or is authorised use by the franchisees. I am not persuaded that this is so. The franchise agreements do not themselves constitute an actual trade or offer to trade in the registered services under the Trade Mark, nor an existing intention to offer or provide the registered services under the Trade Mark.[22] At their highest they represent an intention to use the Trade Mark in respect of the registered services at the times the agreements were entered into, however when that intention was to be put into effect is indeterminate and has not come to fruition. More is required to prove use:
[T]he owner will not use its mark unless it has so acted 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, ie, to carrying its intention to use the mark into effect.[23]
[22] Ibid [23].
[23] Woolly Bull (n 17), [40].

The question of authorised use is moot where use is not established:
Evidence of intended use is not evidence of use where the intention is not implemented…mere entry into a licence agreement is not evidence of use whether under the authority of the registered owner or at all.[24]
[24] Unilever Australia Limited c Karounos [2001] FCA 1132. [62] (Hill J) (‘Unilever).
As to other use alleged in the evidence, I note that both Thomas and Philip assert that the restaurant formerly named Flavorage is now (at the dates of the respective declarations) operating under the Kayal brand. The only evidence adduced to support this assertion is an ABN Lookup record which lists ‘Kayal Cafe’ and ‘Kayal Hospitality’ as two business names of Flavorage Pty Ltd. Without more, such as a dated advertisement, invoice or image of signage, registration of a business name does not amount to use of a trade mark.[25]
[25] Angela Christou v Tonch Pty Ltd [2008] ATMO 24, [35] (Hearing Officer Conway).
I note also the Trade Mark’s presence online via the ‘ website and social media, and its mention in publications. However, none of these are shown to be directed to the Australian market. The only potential engagement with Australian consumers is the apparent response from those who would be franchisees to the advertisement that the Opponent was looking to expand into Australia. However, that advertisement is not shown in evidence nor is it stated when it was placed on the website.
I am accordingly not satisfied that use of the Trade Mark has been established in the Relevant Period and the ground for removal is made out. It is convenient at this point to consider whether circumstances that were an obstacle to use of the Trade Mark are established.
Circumstances that were an obstacle to use
Section 100(3)(c) provides that an application under s 92(4)(b) may be rebutted if:
the opponent has established that the trade mark was not used by its registered owner in relation to [the relevant] goods and/or services during [the relevant] period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.
As already mentioned, it is not entirely clear whether the Opponent intends to enliven s 100(3)(c). The SGP does not explicitly say so, although the Opponent’s Submissions contain a section headed ‘Obstacles in using the Registered Mark in the relevant period’. I therefore comment as follows.
The Opponent relies upon two sets of circumstances that it says were an obstacle to use of the Trade Mark during the Relevant Period. The first is the effect of the Covid-19 pandemic on travel and the hospitality industry more generally. The second is the removal actions mounted by the Applicant. For either of these to apply it is necessary for the Opponent to establish a ‘causal link’ between the circumstances and the non-use of the Trade Mark:
There must be a causal link shown between the relevant circumstances and the mark’s non-use. This requirement arises from the fact that s 100(3)(c) creates an excuse only where the mark has not been used by the registered owner “because of” circumstances etc. It will not assist the opponent to removal to show the existence of an impediment to use of the kind referred to in s 100(3)(c) if he does not also establish that, but for that impediment, he would have used the mark.[26]
[26] Woolly Bull (n 17) [55].
I am not satisfied that such a causal link has been established in respect of the effect of the Covid-19 pandemic. Whilst travel restrictions at times did impede the movement of travellers, particularly during 2020 and into 2021, such restrictions were not continuous by 2022. Mr Thomas does not provide any corroborating evidence to show which travel restrictions applied during the Relevant Period, particularly those during 2022 when travel restrictions eased globally. Accordingly, he has not established that but for the travel restrictions, he would have visited Australia. Nor has he established that his physical presence in Australia was required in order for use to commence. He does not elaborate on the training that he was to give in accordance with the franchise agreement and so I am unable to ascertain that the training required him to be physically present. Additionally, whilst it is understandable that a franchisor may prefer to view potential properties themselves, it is not clear why his franchisees could not select properties with his guidance but not physical presence (especially given real estate is well publicised online and ‘virtual tours’ are commonplace).
As to the removal actions mounted by the Applicant, the effects of litigation will not generally constitute an obstacle to use.[27] In Unilever Australia Pty Ltd v Karounos Hill J considered circumstances similar to those here and found the instigation of the removal action did not constitute an obstacle to use
It was submitted…that the institution of the present proceedings by Unilever prevented use of the mark, in that it deterred others from entering licence agreements to commercialise the mark or from taking action under such licence agreements. So, it was said that the failure of the licensees to use the marks was a circumstance beyond the control of the registered owner sufficient to satisfy s 100(3)(c) of the Act.
In Woolly Bull Enterprises Drummond J considered what was sufficient to constitute an obstacle to use for the purposes of s 100(3)(c). After extensive consideration, Drummond J concluded at [55] that:
"In my opinion, circumstances within s 100(3)(c) will only exist when events arise that are capable of disrupting trade in the area of commercial activity in which goods bearing the registered owner's mark are traded. For the statutory excuse to be made out, those circumstances must cause (in a practical business sense) non-use of the particular mark by the owner, whether or not they have an impact on any persons other than the owner of that mark who are also involved in that same area of commercial activity. There must be a causal link shown between the relevant circumstances and the mark's non-use."
In my view, the institution of the present proceedings did not constitute an obstacle to use in the relevant sense. In any event the evidence shows no evidence of use, whether in the period prior to the commencement of these proceedings, or for that matter after them. There is no reason to infer that the proceedings had any effect at all on any commercial activity. There is simply no causal link shown.[28]
[27] Davison M and Horak I, Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co., 7^th ed, 2022) 740.
[28] Unilever (n 23) [66]-[68].
In applying the test from Woolly Bull Enterprises cited by Hill J, I am not satisfied that the removal action initiated by the Applicant amounts to circumstances capable of disrupting trade in the area of the Opponent’s commercial interests. Rather, I consider the Opponent (and his franchisees) has made a commercial decision to delay using the Trade Mark until the outcome of the removal actions is known. Whilst such a position perhaps makes prudent business sense, it does not constitute an obstacle to use in the sense contemplated by s 100(3)(c).
I am therefore not satisfied that the non-use of the Trade Mark during the Relevant Period was due to circumstances that were an obstacle to use.
Registrar’s discretion
Section 101(3) provides:
If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
The Opponent bears the onus of satisfying me that it is reasonable to exercise the discretion in its favour.[29] The discretion is broad and limited only by the subject-matter, scope and purpose of Part 9 of the Act. In Austin, Nichols & Co Inc v Lodestar Anstalt, the purpose of Part 9 was expressed as follows:
The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners.[30]
[29] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).
[30] [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).
A range of circumstances may be considered in exercising this discretion, which need not be exceptional but must be sufficient to satisfy me that it is reasonable to do so.[31] Factors that have been held to be relevant were summarised in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd,[32] and included any abandonment of the mark or residual reputation in it, sales under the mark after the relevant period, whether the removal applicant had entered the market knowing of the registered mark, and whether there had been use in respect of similar goods or closely related services.
[31] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934, [198] (Flick J).
[32] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ).
The Opponent’s submissions allege a number of factors in support of the exercise of the Registrar’s discretion, namely:
·     The Trade Mark has an international reputation;
·     The Trade Mark has been used in Australia after the Relevant Period;
·     The businesses of the franchisees have been affected by obstacles and they will suffer if the Trade Mark is removed, in terms of wasted resources and effort;
·     It is in the public interest to preserve consumer trust and prevent confusion, where the Trade Mark has already built recognition amounts its target audience;
·     The Applicant has no genuine interest in contesting the removal action, as evidenced by its failure to adduce evidence in answer.
I am not satisfied either that the Trade Mark has an international reputation nor that it has been used after the Relevant Period. The allegation of an international reputation appears to rest primarily upon the fact that the franchisees in Australia were aware of and wished to replicate the Opponent’s business. However, their awareness stems from their previous patronage of the Opponent’s restaurants overseas and their personal relationship with the Opponent. There is also an assertion that the population of people in Australia who originate from the Kerala region is growing. However, there is nothing in the evidence to substantiate this statement. Similarly, there is no evidence of the degree to which Australian consumers may be aware of celebrities’ engagement with the restaurant or the restaurants’ promotion online. Outside of the franchisees, there is no evidence of any knowledge of the Trade Mark amongst Australian consumers.
As to the alleged use after the Relevant Period, as already discussed the allegations of use do not rise above bare assertions. There is no evidence of any use of the Trade Mark in the course of trade either during or after the Relevant Period.
There are few facts that support the proposition that it is in the public interest to maintain the registration. Confusion seems unlikely given that there is no evidence of public use of the Trade Mark and three of the franchisees have delayed operations pending the outcome of the removal action (and there is no evidence of use by the fourth franchisee). As already stated, I am not satisfied the Trade Mark has a reputation in Australia, residual or otherwise, that might lead to confusion should it be removed from the Register.
Whilst the private interests of the Opponent and his franchisees are likely to be detrimentally affected by removal of the Trade Mark, I am not satisfied that they outweigh the public interest in having unused trade marks removed. This is especially so when any commencement of operations is at an indeterminate time in the future. Additionally, their private interests are somewhat minimised by them awaiting the outcome of the removal action before taking any further action.
The lack of evidence from the Applicant is not a relevant consideration here. There are many reasons a party may choose not to file evidence. The parties have been involved in previous removal actions and it may be that those previous actions have informed the Applicant’s current position. In any event, the onus rests with the Opponent given it is in the best position to prove whether the Trade Mark has been used.
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 Worth
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
17 February 2025

[2025] ATMO 33

17 February 2025