Thomas v Monsoon Group Australia Pty Ltd

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.