North v Cool Dynamics Refrigeration Pty Ltd

This case started as a trade mark opposition over the proposed mark “CTS Thermfresh”. Joshua North wanted to register that mark. Cool Dynamics Refrigeration Pty Ltd opposed the application, relying on its earlier registered mark “Thermfresh”. A delegate of the Registrar of Trade Marks refused Mr North’s application on 24 June 2024, finding that the marks were deceptively similar for the purposes of section 44 of the Trade Marks Act 1995 (Cth).

But the Federal Court decision at [2026] FCA 235 was not the final appeal on those trade mark issues. It was a procedural application asking the Court to extend the time for filing and serving a notice of appeal. That distinction is central to reading the case properly. The Court was not finally deciding whether Mr North should win registration. It was deciding whether he should be allowed to bring his appeal late.

The commercial story is straightforward. Mr North said he changed residence in January 2024, did not receive key correspondence from IP Australia, missed the chance to file written submissions before the delegate, and did not receive notice of the delegate’s decision. He said he only learned of the refusal on 3 September 2024 when he received a costs-related document. He then tried to prepare the court application himself, but encountered difficulties, including with the Commonwealth Courts Portal. The extension application was filed on 2 June 2025.

Cool Dynamics did not contest the extension application. Its legal representatives told the Court it intended to play no part in the proceeding, and it did not appear. That did not mean Mr North automatically won. He still had to satisfy the Court that there was a sufficient explanation for the delay, that the respondent would not be prejudiced, and that the proposed appeal had at least some arguable merit.

The timeline in the judgment is important. Mr North filed his trade mark application on 16 September 2021. Cool Dynamics filed a notice of intention to oppose on 17 May 2022. The opposition relied on several grounds, including sections 42(b), 44, 58, 58A, 60 and 60A of the Trade Marks Act. Mr North filed a notice of intention to defend on 25 July 2022.

The matter was then set to be decided without an oral hearing, at the parties’ direction. In that kind of process, written submissions can be critical because they may be the main way a party explains the factual and legal basis of its position. The delegate later noted that Cool Dynamics filed written submissions but Mr North did not.

According to the evidence accepted on the extension application, Mr North did not receive the invitation to make written submissions because he had changed residence in January 2024 and his previous residential address remained the nominated address for IP Australia correspondence. He had put in place some mail forwarding arrangements, but nothing from IP Australia was received by him. The same problem meant he also did not receive the letter notifying him of the delegate’s decision.

On 24 June 2024, the delegate refused the application. The delegate found that “CTS Thermfresh” was deceptively similar to Cool Dynamics’ prior registered mark “Thermfresh”. The delegate also rejected Mr North’s claim that the mark should nevertheless be accepted on the basis of honest concurrent use under section 44(3), finding that he had acted in “blatant disregard” of the prior mark.

Mr North said he first became aware of the decision on 3 September 2024, when he received a copy of the taxing of costs relating to the dismissal of his application. He said he immediately contacted IP Australia and began preparing the present application. The Court recorded that he was not a legal practitioner and had difficulty filing documents through the Commonwealth Courts Portal. Even so, there was a substantial period between 3 September 2024 and 2 June 2025, when the extension application was finally filed. The Court expressly noted that it had been given little information about that period.

The immediate issue was whether the Court should extend time under rule 34.25 of the Federal Court Rules 2011 (Cth) so Mr North could file and serve a notice of appeal from the delegate’s decision. The Court said the discretion under that rule is exercised by considering factors such as the length of and reasons for the delay, any prejudice to the respondent or others, and the merits of the proposed appeal.

The judgment emphasises that the merits factor is especially significant. The Court referred to authority saying that an extension of time should not be granted merely to allow a meritless appeal to proceed. So Mr North needed to do more than explain why he was late. He also had to show that his proposed appeal raised at least an arguable question.

That is an important practical point for businesses. If you miss an appeal deadline in a trade mark matter, the Court will not simply ask whether there was a good excuse. It will also ask whether there is enough substance in the proposed appeal to justify reopening the process. In other words, an extension application is a gateway step. It is not the final appeal, but it still requires the applicant to identify real issues worth hearing.

The Court also had to consider the procedural context. Because the matter before the delegate had been decided on the papers and Mr North said he had missed the invitation to make written submissions, his proposed appeal grounds were framed around the possibility that the delegate had decided key issues without the benefit of his arguments. That did not automatically establish error, but it was relevant to whether the proposed appeal was arguable.

Derrington J granted the extension of time. The Court extended the period for filing and serving the notice of appeal to 13 March 2026, allowed Mr North to amend his proposed notice of appeal before filing, listed the matter for case management on 31 March 2026, and ordered that costs of the extension application be costs in the appeal.

On the explanation for delay, the Court accepted that the delay was caused by Mr North being unaware of the delegate’s decision because of his change of residence and the failure of correspondence from IP Australia to reach him. The Court did, however, expressly note a weakness in the evidence: there was little information about what happened between 3 September 2024, when Mr North said he became aware of the decision, and 2 June 2025, when the extension application was filed. Even so, in the absence of opposition and any argument that he had acted in a dilatory way, the Court held that the explanations offered were sufficient. The Court also said some leniency was appropriate because he had been acting without legal representation.

On prejudice, the Court accepted Mr North’s unopposed evidence that Cool Dynamics had never used the prior mark and had ceased doing business many years earlier. Mr North said the prior mark had previously been owned by his father from 1981 until 2011, when his father’s business was sold to Prime ARC, and that Cool Dynamics later purchased the prior mark from Prime ARC for $10,000 when Prime ARC entered liquidation. He also said Cool Dynamics ceased trading after an industrial incident and had not used the prior mark since acquiring it. In the absence of opposition, the Court accepted that these facts showed Cool Dynamics was not likely to suffer prejudice if time were extended.

The Court also treated Cool Dynamics’ non-participation as relevant. It had indicated that it would play no part in the application and chose not to attend to defend its position. The judge said that probably reinforced the view that no prejudice would be suffered.

On the merits, the Court drew a distinction between the proposed grounds. The first proposed ground, framed as a denial of natural justice because Mr North had not known about the opportunity to make written submissions, was described as somewhat dubious. The Court said this was likely a case where IP Australia had simply sent notices to the addresses provided, rather than a case of deliberate or negligent failure to communicate. That ground was therefore not likely to present an arguable question.

The second and third proposed grounds were stronger. The Court understood them as contending that the delegate erred in finding that the mark was deceptively similar to the prior mark and in finding that there had been no honest concurrent use under section 44(3). The Court said it was possible that, given the absence of written submissions from Mr North on those questions, the delegate might have decided them in error. The unchallenged evidence before the Court was that Mr North had been using the mark for some time, while Cool Dynamics had not used the prior mark at all. In the absence of evidence and submissions from Cool Dynamics to the contrary, those circumstances raised a real question about whether the delegate was correct on deceptive similarity and on the conclusion that Mr North had acted in “blatant disregard” of the prior mark.

The Court described those arguments as perhaps hopeful, but not fanciful. That was enough for the extension application. The Court did not decide that Mr North would succeed on appeal. It decided only that there was at least some arguable case to be advanced.

For business owners, the first lesson is procedural discipline. A trade mark opposition can be lost, or at least badly complicated, by missed correspondence and missed submissions. Here, the Court was prepared to help because the explanation was accepted and the proposed appeal was arguable. But the judgment also shows how much trouble can flow from a simple contact-detail problem. A change of address in January 2024 led to missed submissions, a missed decision, a costs issue, and then a separate Federal Court application just to restore the chance to appeal.

The second lesson is that a decision on the papers is still a serious hearing process. If there is no oral hearing, written submissions may be the main opportunity to explain your use of the mark, the commercial background, and any legal arguments such as honest concurrent use. Businesses should not treat a paper-based process as lower risk or less important.

The third lesson is to be careful about what this case does and does not say about trade mark rights. The Court did not hold that non-use by the owner of an earlier mark automatically defeats an opposition. Nor did it hold that Mr North had established honest concurrent use. It only held that those issues were arguable enough to justify allowing a late appeal to proceed. Businesses should avoid over-reading the case as a final statement on section 44 disputes.

The fourth lesson is that self-representation creates practical risk. The Court gave some leniency because Mr North was not a legal practitioner and had difficulty with filing systems. But leniency has limits. The Court still noted the lack of detail about the period between September 2024 and June 2025. A different case, especially one with an active opponent or weaker merits, might not receive the same result.

The fifth lesson is evidence management. The Court was influenced by unchallenged evidence that Mr North had used his mark for some time and that Cool Dynamics had not used the prior mark. If your business is in a trade mark dispute, keep records of first use, ongoing use, branding materials, invoices, website captures, packaging, and any facts relevant to honesty of adoption. Those materials may matter both before IP Australia and on any appeal.

This judgment is useful because it shows the kinds of facts the Court will look at in a missed-deadline application. The Court wanted to know what caused the delay, whether the respondent would be harmed by an extension, and whether the proposed appeal had enough substance to justify further proceedings.

On delay, the key documents and conduct were the change of residence, the nominated address for IP Australia mail, the absence of written submissions before the delegate, the later receipt of a costs document, and the eventual filing of the extension application. The Court accepted the broad explanation, but it also highlighted the gap in detail between 3 September 2024 and 2 June 2025. That is a reminder that businesses should keep a clear chronology once a problem is discovered.

On prejudice, the Court relied on unopposed evidence about the history of the prior mark and Cool Dynamics’ alleged non-use and cessation of trading. In a contested case, a respondent might challenge those assertions. Businesses should therefore be cautious about assuming that unopposed evidence in a procedural application will necessarily carry the same weight in a fully contested appeal or other proceeding.

On merits, the Court looked at the proposed notice of appeal and the factual context. It was not enough for Mr North to say he had missed correspondence. He needed to identify arguable errors in the delegate’s reasoning. The Court was not persuaded by the natural justice ground, but it was prepared to accept that the deceptive similarity and honest concurrent use issues were open enough to justify an appeal.

For businesses, the practical message is that documents and conduct after a missed deadline matter almost as much as the original trade mark dispute. Keep copies of notices, address updates, emails, portal screenshots, and any evidence showing when you became aware of a decision and what you did next. If you need to ask for more time, that chronology may become central.

Is this a win on the trade mark itself? No. It is a win on the procedural question of extra time to appeal.

Does the case mean courts excuse long delays if someone is self-represented? No. Self-representation may attract some leniency, but the Court still expects a sufficient explanation and an arguable appeal.

Does missing written submissions automatically create a natural justice argument? Not on this judgment. The Court thought that proposed ground was doubtful because the issue appeared to arise from notices being sent to the addresses provided, rather than any deliberate or negligent failure by IP Australia.

Can non-use of an earlier mark help an applicant? It may be relevant, and it was relevant here to arguability and prejudice, but this judgment does not say non-use automatically resolves a section 44 opposition.

What should a business do first after learning it missed a decision? Record the date you became aware of it, gather the correspondence history, update contact details, and get immediate advice on whether an appeal or extension application is available.

This page is based on the Federal Court of Australia decision North v Cool Dynamics Refrigeration Pty Ltd [2026] FCA 235. The judgment states that the judgment was given on 20 February 2026 and the reasons were published on 9 March 2026. The Court was dealing with an application under rule 34.25 of the Federal Court Rules 2011 (Cth) for an extension of time to appeal from a delegate’s trade mark opposition decision.

The judgment itself says the reasons are amended and revised reasons for judgment given on 20 February 2026, refining and developing ex tempore reasons without changing their substance. Because the decision is procedural, any broader statement about the final registrability of “CTS Thermfresh” or the final rights of the parties should be checked against the appeal and any later developments.