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Winner Winner Restaurant Dinner! Against all odds, non-use action successfully defended

Joel Masterson

Joel Masterson

In late July, IPSANZ hosted an excellent seminar given by Shauna Ross and Melissa McGrath, both barristers from Nigel Bowen Chambers in Sydney. The topic was a review of IP Australia’s trade mark decisions in the previous six months.

This included a review of the state of the non-use world. The stats? 26 applications run to a hearing. All 26 were at least partially successful. Basically, no mark is safe.

The decision maker has a discretion under s 101(3) of the Australian Trade Marks Act to allow a trade mark to remain on the register even if it hasn’t been used. These stats tell us that this was never exercised in favour of the trade mark owner in the six-month sample.

Some might say that this just reflects the fact that non-use applicants get a pretty good look at the likely result before they defend oppositions to an expensive hearing. They only run with the good ones. Others might say that the house always wins.

But here’s a case where the punter beat the casino. This trade mark owner got an extension of time to file an appeal to the Federal Court of Australia against a decision by IP Australia to remove his registration. That was a minor miracle in its own right – EOT applicants went 2 for 7 during the six months. He then won the substantive appeal. In doing so, he convinced the court to exercise the discretion I mentioned in his favour.

Cash in those chips young man, and get out of here.

What happened?

Our punter was the owner of the KAYAL trade mark registered for restaurant services. IP Australia had ordered the removal of the registration on the basis that it had not been used in Australia during the relevant three-year period ending 12 April 2023. For context, that period began a month after COVID lockdowns took effect in Australia.

First, the applicant needed an extension of time to file his appeal – he was late. He attributed the delay to travel commitments and communication issues with his trade mark attorneys, compounded by a public holiday and the need to engage solicitors to file the appeal. The respondent, who had initiated the non-use application, did not contest the relief sought, and IP Australia did not intervene.

Who won and why?

The applicant was successful in every way. The Court granted the extension of time to file the appeal, noting the short delay, the applicant’s reasonable explanation, and the absence of any prejudice to the respondent. On the substantive issue, the Court allowed the appeal and set aside the delegate’s decision, permitting the trade mark to remain registered. The Court’s reasoning:

  • The respondent, as the moving party in the non-use application, did not contest the appeal.
  • The Registrar did not oppose or seek to intervene.
  • The Court was satisfied there was no “self-evident reason” not to reverse the delegate’s decision, a standard drawn from prior case law.
  • Evidence showed the applicant had entered into franchise agreements in Australia and operated restaurants under the trade mark overseas, indicating a commitment to use the mark in Australia.
  • COVID lockdowns were recognised as significant obstacles to the use of the trade mark during the relevant period.
  • The Court exercised its discretion under s 101(3), finding it reasonable to allow the trade mark to remain registered in light of the pandemic, franchise activities, and subsequent use of the mark in Victoria.

Take-home points

  • It’s possible to get extensions of time for appeals in trade mark matters where delays are short, explained, and cause no prejudice.
  • In non-use proceedings, the applicant for removal doesn’t bear the onus of proof, but it puts itself in a weak position if it doesn’t prosecute its application, even on appeal.
  • The s 101(3) discretion isn’t dead, and trade mark owners should continue flogging this living horse – particularly where external circumstances have impeded use, and where there is evidence of genuine intent to use the mark.
  • Franchise arrangements and preparatory steps towards use in Australia may support the retention of a registration, even if actual use has not commenced during the relevant period

For those interested, the case citation is Thomas v Monsoon Group Pty Ltd [2025] FCA 911

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George is amazing. She can translate the impenetrable legal jargon of a publishing contract with seamless clarity and has a vast knowledge of publishing. She has negotiated on my behalf, producing outstanding results leaving me with more time to get on with the creative stuff. Her personal encouragement and commitment to the arts is all part of ensuring the best outcome for the artist.
Sue deGennaro - Children’s book illustrator
George represented me in my copyright case against Target Australia. A genuine David versus Goliath moment. Mostly individual artists do not have the capital to run a case like this and it was George’s steady, calm and generous approach that steered me through. She is professional in her engagement but also down to earth, super organised and diligent in her research and attention to detail.
Jon Campbell – Artist
George has provided me with outstanding, practical and effective legal advice. George has written copyright and commission agreements, subcontractor agreements, engaged in contract negotiations and successfully negotiated a number of copyright infringement settlements within Australia and internationally. George’s advice, guidance and professionalism has been invaluable to my artistic practice and I look forward to working with her for many years to come.
Esther Stewart – Artist
The most important things for me with an external lawyer are trust, honesty and the courage to tell me what I need to hear even if it’s not what I want to hear. Joel ticks all of those boxes. He also has the ability to understand needs across a variety of different businesses and sectors, he’s responsive and last but not least, I enjoy working with Joel. I’d recommend him to anyone looking for an Australian IP lawyer.
Ron Fuchs, Managing Director, FH Distribution, Singapore
We like Joel because we were able to form a good relationship with him quickly in the early days – he is easy to work with and we get on well. He gives us good advice and always helps us find a solution to whatever we need. And he’s fast and responsive – that’s really important to us because we constantly come up with new ideas for restaurant names and want to protect them quickly.
David Loh and Louis Kuo, Melbourne restaurateurs
We engaged George to represent us in a trade mark dispute in the Federal Court after she was referred to us by a TM attorney. In all of our dealings, George was always trustworthy and professional. She provided clear legal advice and strategy that considered our values and desired outcomes. George was engaged and responsive in the process alongside us at all times in a highly organised and timely manner. We highly recommend her.
Eva Nikias – Owner, La Siréne Brewing Co.
Joel understands retail and how IP fits into our business. I would recommend him to any other retailer who is looking for common sense guidance when it comes to protecting their IP and defending themselves against outside threats. Joel has gone to a lot of trouble to understand our business and its priorities, risks and people. I know that I can count on him to deliver clear and concise advice, whether it’s to our senior management, buyers or back-end staff.
Leigh Gratzer, General Counsel, Spotlight Group
Joel is the sort of external lawyer every in-house lawyer wants. I trust him not only to get the answer right, but to explain it in a way that stakeholders will understand. I also know that when I contact Joel he will be responsive, fast and cost effective. And I like him personally too.
Jessica Ransley, Legal Counsel, Spotlight Group
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