FEDERAL COURT OF AUSTRALIA
Thomas v Monsoon Group Pty Ltd [2025] FCA 911
File number(s): VID 396 of 2025 Judgment of: HESPE J Date of judgment: 11 August 2025 Catchwords: TRADE MARKS – non-use – where the respondent brought a non-use action before the Registrar of Trade Marks (the Registrar) pursuant to s 92(4)(b) of the Trade Marks Act 1995 (Cth) (the Act) – whether to grant the applicant an extension of time to appeal decision of the Registrar’s delegate under r 34.25 of the Federal Court Rules 2011 (Cth) – where the respondent filed a submitting notice – where the Registrar did not seek to intervene or be heard – onus of the moving party in a non-use application – whether to exercise discretion in s 101(3) of the Act – whether “no self-evident reason” not to reverse delegate’s decision Legislation: Trade Marks Act 1995 (Cth)
Federal Court Rules 2011 (Cth)
Cases cited: "Bali" Trade Mark [1966] RPC 387
Conquip Holdings Pty Ltd v S & A Restaurant Corp [2000] FCA 256; AIPC ¶91-547
Hungry Spirit Pty Limited v Fit n Fast Australia Pty Ltd [2020] FCA 883
Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73; (1984) 156 CLR 414
Village Roadshow IP Pty Ltd v VUR Village Trading No 1 Limited [2025] FCA 428
Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 107 FCR 166
Division: General Division Registry: Victoria National Practice Area: Intellectual Property Sub-area: Trade Marks Number of paragraphs: 26 Date of hearing: 24 July 2025 Counsel for the Applicant: Andrew McRobert Solicitor for the Applicant: Wrays Solicitor for the Respondent: The Respondent filed a submitting notice, save as to costs ORDERS
VID 396 of 2025 BETWEEN: JAIMON THOMAS
Applicant
AND: MONSOON GROUP AUSTRALIA PTY LTD ACN 618 479 977
Respondent
ORDER MADE BY:
HESPE J
DATE OF ORDER:
11 AUGUST 2025
THE COURT ORDERS THAT:
1.Pursuant to rules 34.25, 1.34 and / or 1.39 of the Federal Court Rules 2011 (Cth):
(a)The Applicant be granted an extension of time within which to file a notice of appeal from the decision of the Registrar of Trade Marks by her delegate, delivered on 17 February 2025, in respect of Australian trade mark number 2003430 (Decision).
(b)The Applicant have leave to file and rely on a notice of appeal in the form of the draft Notice of Appeal filed on 28 March 2025 (a copy of which is at pages 15 to 24 of Annexure PAG-01 to the Affidavit of Philip Andrew Goatcher sworn on 26 March 2025).
2.The appeal be allowed.
3.The Decision be set aside.
4.The Registrar of Trade Marks allow Australian trade mark number 2003430 to remain registered in respect of all services covered by the registration.
5.The Applicant is directed to provide a copy of these orders to the Registrar of Trade Marks forthwith.
6.If the parties are unable to…
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- AGLC
- Thomas v Monsoon Group Pty Ltd [2025] FCA 911
- Case
- [2025] FCA 911
- Decision Date
CaseChat Overview and Summary
The primary legal issue was whether the Court should grant Thomas an extension of time to appeal the Registrar's delegate's decision. This involved an examination of the onus of proof in non-use applications and the discretion available to the Registrar under the Trade Marks Act 1995 (Cth). The Court also considered whether there was a self-evident reason not to reverse the delegate's decision, as per section 101(3) of the Act.
In its reasoning, the Court found that the Registrar did not seek to intervene or be heard in the matter, which shifted the onus onto the respondent to demonstrate a self-evident reason for not reversing the delegate's decision. The Court exercised its discretion under section 101(3) of the Act and found that there was no such self-evident reason. Consequently, the Court granted Thomas an extension of time to appeal, allowed the appeal, set aside the Registrar's decision, and directed that the trade mark remain registered.
The Court's orders included granting Thomas an extension of time to file a notice of appeal, allowing the appeal, setting aside the Registrar's decision, and mandating that the trade mark remain registered. The Court also outlined a process for determining costs if the parties could not reach an agreement, stipulating that written submissions be filed within specified timeframes.
Orders
Orders of the court
1. Pursuant to rules 34.25, 1.34 and / or 1.39 of the Federal Court Rules 2011 (Cth):
(a) The Applicant be granted an extension of time within which to file a notice of appeal from the decision of the Registrar of Trade Marks by her delegate, delivered on 17 February 2025, in respect of Australian trade mark number 2003430 (Decision).
(b) The Applicant have leave to file and rely on a notice of appeal in the form of the draft Notice of Appeal filed on 28 March 2025 (a copy of which is at pages 15 to 24 of Annexure PAG-01 to the Affidavit of Philip Andrew Goatcher sworn on 26 March 2025).
2. The appeal be allowed.
3. The Decision be set aside.
4. The Registrar of Trade Marks allow Australian trade mark number 2003430 to remain registered in respect of all services covered by the registration.
5. The Applicant is directed to provide a copy of these orders to the Registrar of Trade Marks forthwith.
6. If the parties are unable to reach agreement as to costs:
(a) the Applicant file written submissions in relation to costs of no more than two (2) pages within 14 days of these orders; and
(b) the Respondent file written submissions in relation to costs of no more than two (2) pages within 21 days of these orders.
Any issue of costs is to be determined on the papers.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
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