Thomas v Monsoon Group Pty Ltd

This case concerned the Australian trade mark KAYAL, registered for restaurant-related services. Jaimon Thomas owned the registration and was described by the Court as the owner and founder of a restaurant business operating under the KAYAL brand. During the relevant period, that business included restaurants in the United Kingdom and India.

Monsoon Group Australia Pty Ltd applied to remove the mark from the Australian Register for non-use. A delegate of the Registrar of Trade Marks accepted that application and decided on 17 February 2025 that the mark should be removed. Thomas then went to the Federal Court to challenge that outcome.

The case became unusual for two reasons. First, the appeal was late and needed an extension of time. Secondly, by the time the matter came before the Court, Monsoon no longer wanted to contest the relief Thomas was seeking, apart from wanting to be heard on costs. The Registrar also did not seek to intervene. That procedural setting shaped the Court’s reasoning in a major way.

Under the Trade Marks Act, a person can apply to remove a registered trade mark for non-use. Monsoon did that, relying on the ground that the mark had remained registered for a continuous three-year period ending one month before the non-use application was filed and had not been used in Australia during that period in relation to the relevant services.

The delegate’s decision went against Thomas. To challenge it, he needed to appeal within 21 days. That deadline was 10 March 2025. But the extension application and draft notice of appeal were not filed until 26 March 2025.

The Court accepted the explanation for the delay. Thomas was travelling in India when he was informed of the delegate’s decision on 26 February 2025. His trade marks attorneys did not initially tell him that they could not themselves prepare and file the appeal and that solicitors would need to be engaged. A follow-up email sent on 5 March 2025 was not seen by Thomas until 10 March 2025 because he did not have continuous email access while travelling. On the morning of 10 March 2025, he was told that day was the filing deadline. He then arranged for instructions to be sent for an appeal to be filed, but only then was he told that solicitors were required and that the Victorian public holiday might complicate filing.

Justice Hespe treated the delay as short, accepted the explanation, and noted that Monsoon did not contend it had suffered prejudice. That was enough to justify an extension of time.

The Court had to deal with two linked questions. The first was procedural: should Thomas be given more time to file his appeal? The second was what should happen to the KAYAL registration once the matter was before the Court.

The judgment explains that an appeal from a Registrar decision under section 104 is heard de novo. In practical terms, that means the Federal Court is not simply checking whether the delegate made an error. The Court stands in the shoes of the Registrar and considers afresh whether the non-use application should succeed.

That said, the Court also emphasised another important feature of the statutory scheme. Even though the trade mark owner bears the onus of rebutting allegations of non-use, the applicant for removal remains the moving party and remains under an obligation to prosecute the non-use application. The Court relied on earlier authority explaining that where the non-use applicant no longer wishes to contest the matter on appeal, it may be appropriate to reverse the delegate’s decision without finally determining the merits, provided there is no self-evident reason not to do so.

That point is critical. The case does not stand for a broad proposition about what always counts as use of a trade mark in Australia. It stands more narrowly for the proposition that, in a de novo appeal, the Court may reverse a delegate’s non-use decision where the moving party no longer presses the case and there is no clear factual or legal barrier to that result.

Justice Hespe granted the extension of time, allowed the appeal, set aside the delegate’s decision and ordered that Australian trade mark number 2003430 remain registered for all services covered by the registration. Thomas was directed to provide the orders to the Registrar. Costs were left to be dealt with later on the papers if the parties could not agree.

The Court was careful about the basis for that outcome. It did not finally determine whether Thomas had proved actual use of the KAYAL mark in Australia during the relevant period. Instead, it adopted the approach used in earlier authority and asked whether there was any self-evident reason not to reverse the delegate’s decision in circumstances where Monsoon no longer contested the appeal.

The Court said there was no such clear barrier. Monsoon had been successful before the delegate but, as the moving party, no longer contested the orders sought. The Registrar had been informed of the application and appeal but did not oppose or intervene. The fact that the delegate had found no Australian use and had declined to exercise discretion was not itself a bar to the Court allowing the appeal.

The Court gave a structured set of reasons for making the orders.

First, Monsoon did not contest the making of orders that would set aside the delegate’s decision, even though it remained the moving party in the non-use application. That mattered because the statutory scheme requires the non-use application to be initiated and prosecuted by the applicant for removal.

Secondly, the Registrar had been informed of the extension application, the grounds of appeal and Monsoon’s submitting notice, but did not seek to oppose or intervene. The Court treated that as relevant, though not decisive on its own.

Thirdly, the Court said the delegate’s earlier findings were not themselves a legal barrier. The fact that the delegate had found no use in Australia and had declined to exercise discretion did not stop the Court from allowing the appeal.

Fourthly, the Court noted that the absence of an operating Australian restaurant during the relevant period did not necessarily preclude a finding of use in relation to the services. The judgment referred to authority recognising that use in relation to services can be broader than the physical operation of a venue.

Fifthly, the Court referred to authority stating that use may be shown where the owner has gone beyond investigation and planning and has objectively committed itself to using the mark. On the evidence before it, there was at least some factual basis for that conclusion. The Court pointed to the KAYAL restaurant business operating outside Australia and to franchise agreements in Australia under which franchisees were to conduct restaurant operations under the KAYAL brand, thereby opening a channel for the establishment of such restaurants.

Sixthly, the Court considered the possible obstacle-to-use pathway. It noted that it is enough if circumstances made use impractical in a business sense, not impossible. The Court said there was at least some evidence that the COVID-19 pandemic and related restrictions affected the ability of franchisees to commence operations.

Seventhly, no party argued against the possible exercise of the discretion to leave the mark on the Register. Thomas relied on the pandemic, the franchise agreements and the fact that since the non-use application was made a restaurant under the KAYAL name had opened in Victoria pursuant to a franchise agreement.

Putting those matters together, the Court concluded there was no clear determinative factual or legal barrier that would preclude the exercise of discretion and no self-evident reason why the orders should not be made.

Business owners should read this case carefully and narrowly. It is not a general statement that overseas operations, franchise plans or later launch activity will always defeat a non-use application. The Court repeatedly framed the result around the unusual procedural posture of the case. Monsoon stopped contesting the appeal. The Registrar did not intervene. The Court then asked only whether there was any self-evident reason not to reverse the delegate’s decision.

That means the case has limited precedential value on the substantive question of what conduct amounts to use for non-use purposes. It is more useful as a reminder of three practical points.

First, procedure matters. If the party seeking removal does not continue to prosecute the case, that can materially affect the result on appeal.

Secondly, evidence of genuine commercial commitment matters. If your business has not yet launched in Australia, you should still be able to show more than an idea or aspiration. Signed franchise or licence agreements, rollout plans, fit-out steps, supplier arrangements, launch correspondence and records of operational delays may all become important.

Thirdly, external events can matter, but only if they are supported by evidence and tied to the actual inability or impracticality of using the mark. The Court did not say COVID-19 automatically excuses non-use. It said there was at least some evidence that the pandemic affected the ability of franchisees to commence operations, which was relevant in the circumstances.

Although the Court did not finally decide the merits of use, the reasons show the kinds of material that can become important in a non-use dispute. For a business owner, the practical issue is whether you can prove objective commitment to bringing the brand into the Australian market.

Useful records may include signed franchise agreements, licence agreements, rollout schedules, site selection documents, fit-out contracts, supplier negotiations, menu development, staff recruitment steps, brand manuals, launch marketing, correspondence with franchisees and evidence showing why launch was delayed. If you rely on external obstacles, keep records that connect those events to the actual delay in using the mark.

For franchisors, the documents should clearly connect the Australian expansion activity to the registered mark itself. If the franchisee is meant to trade under the mark, the agreement and supporting documents should say so clearly. If the launch is delayed, record what happened and when. Scattered emails and informal conversations are much less persuasive than organised records showing a real commercial rollout.

For businesses acquiring or licensing a brand, due diligence also matters. Before rollout, check who owns the Australian registration, whether it has been used here, whether there is any non-use vulnerability and whether the contract gives you enough rights and obligations to support genuine use in Australia.

A common misunderstanding is that once a delegate removes a mark, the owner can only succeed on appeal by proving the delegate was wrong. That is not how this kind of appeal works. Because the hearing is de novo, the Court considers the controversy afresh.

Another common misunderstanding is that if there was no active Australian trading during the relevant period, the case is automatically lost. This judgment shows the position can be more nuanced, although the Court did not finally decide the point here. It referred to authority that actual operation of a restaurant in Australia is not the only possible way to show use in relation to services, and that objective commitment to use may matter.

But the strongest practical point remains procedural. Monsoon’s decision not to contest the appeal was central. If Monsoon had fully prosecuted the appeal, the Court may have had to decide the substantive non-use issues directly. Business owners should therefore be cautious about reading too much into the outcome beyond the specific circumstances recorded in the judgment.

The delegate’s decision was made on 17 February 2025. The deadline to appeal was 10 March 2025. The extension application and draft notice of appeal were filed on 26 March 2025. The hearing took place on 24 July 2025. Judgment and orders were delivered on 11 August 2025.

The published reasons also show that any issue of costs was to be determined later on the papers if the parties could not agree. This page therefore does not state a final costs result.