Ruling notes pandemic impacted franchisees' ability to begin operations
Australia’s Federal Court has ordered the registrar of trade marks to maintain a mark’s registration in connection with the services the registration covered: booking restaurant seats; inn keeping (bar, restaurant, and accommodation); restaurant services; restaurants; and salad bar restaurant services.
In Thomas v Monsoon Group Pty Ltd, [2025] FCA 911, the applicant was the owner and founder of a restaurant business operating under the Australian registered trade mark “KAYAL,” which included restaurants in the UK and India.
The respondent applied to remove the applicant’s mark.
On 17 February 2025, the trade marks registrar’s delegate removed the applicant’s mark from the register of trade marks based on non-use within the three years ending on 12 April 2023 under s 101 of the Trade Marks Act 1995 (Cth).
The applicant sought an extension of time to file a notice of appeal under r 34.25 of the Federal Court Rules 2011 (Cth).
Under rr 34.25, 1.34, and/or 1.39 of the Federal Court Rules 2011 (Cth), the Federal Court of Australia granted the applicant an extension of time to appeal, gave it leave to file and rely on a notice of appeal, allowed the appeal, and set aside the delegate’s decision.
The court deemed it appropriate to extend the time in these circumstances where:
Regarding the appeal, the court saw no self-evident reason to refuse to issue the orders the applicant sought and no clear and determinative factual or legal barrier to refrain from exercising the discretion under s 101(3) of the Trade Marks Act to allow a mark to remain registered.
The court considered granting the applicant’s requested orders appropriate for the following reasons.
First, the court ruled that the respondent received the application seeking an extension of time and the draft notice of appeal and understood that the hearing would tackle both the application and the appeal. According to the court, by filing a submitting notice, the respondent showed it did not intend to challenge the issuance of an order effectively setting aside the delegate’s orders.
Second, the court held that the registrar did not attempt to oppose or intervene despite knowing about the application for the extension of time, the appeal grounds, and the fact that the respondent had filed a submitting notice.
Third, the court determined that the delegate’s finding that the applicant did not use the trade mark in Australia during the relevant period did not bar the court from allowing the appeal.
Fourth, the court decided that the lack of a restaurant operating in Australia while using the trade mark within the relevant period did not prevent a finding of use of the mark in connection with the services listed in the registration.
Fifth, the court saw evidence supporting that the trade mark’s owner had a restaurant business outside Australia under the KAYAL brand and executed franchise agreements – providing that franchisees would conduct restaurant operations offering the cuisine style under the KAYAL brand and mark – as a franchisor in Australia.
Sixth, the court found an intention to use the trade mark relating to restaurant services. However, the court said the COVID-19 pandemic and the associated restrictions implemented by state governments affected franchisees’ ability to begin their restaurant operations.
Seventh, the court noted that the applicant cited the following circumstances to call for the court’s exercise of s 101(3) discretion:
