North v Cool Dynamics Refrigeration Pty Ltd [2026] FCA 235

1. On 16 September 2021, Mr North filed an application with IP Australia for registration of the Mark under the Trade Marks Act.
2. On 17 May 2022, Cool Dynamics filed a notice of intention to oppose the application. The opposition was advanced on several alternative bases, in particular ss 42(b), 44, 58, 58A, 60 and 60A of the Trade Marks Act. Mr North filed a notice of intention to defend his application on 25 July 2022.
3. In her decision of 24 June 2024, the Delegate found that Cool Dynamics had successfully established a ground of opposition under s 44 of the Trade Marks Act. In short, the Delegate considered the Mark to be deceptively similar to Cool Dynamics' prior registered trade mark, "Thermfresh" (the Prior Mark). The Delegate also rejected Mr North's claim that the application should in any event be granted on the basis of honest concurrent use under s 44(3) of the Trade Marks Act, finding that Mr North had acted in "blatant disregard" of the Prior Mark.
4. It is relevant that, at the parties' direction, the application was decided by the Delegate without an oral hearing. Notwithstanding that direction, the Delegate observed that Mr North, unlike Cool Dynamics, did not file any written submissions. As it transpired, unbeknown to the Delegate, Mr North did not receive the invitation to make written submissions. It would appear that this occurred as a consequence of the fact that in January 2024, Mr North changed his residence. His previous residential address was the address he had nominated to receive mail from IP Australia. Although he put in place some arrangements for the forwarding of mail, nothing from IP Australia was received by him. This also meant that Mr North did not receive the letter from IP Australia providing notice of the Delegate's decision. As a result, Mr North deposes to first becoming aware of the decision on 3 September 2024, when he received a copy of the taxing of the costs of his application's dismissal said to be owed to the opponent. He says further that, immediately upon becoming aware of the Delegate's decision, he contacted IP Australia and began preparing the present application. However, since he is not a legal practitioner, he encountered some difficulties in doing so, particularly with filing documents via the Commonwealth Courts Portal.
5. Eventually, the present application for an extension of time in which to appeal was filed, albeit sometime later, on 2 June 2025.

1. As mentioned, this application is made pursuant to r 34.25 of the Rules, which provides that:

34.25 Application for extension of time to file notice of appeal

(1) A person who wants to apply for an extension of time within which to file a notice of appeal mentioned in rule 34.24 must file an application for an extension of time, in accordance with Form 67.

(2) The application may be made during or after the period mentioned in rule 34.24.

(3) The application must be accompanied by:

(a) an affidavit stating the following:

(i) briefly but specifically, the facts on which the application relies; and

(ii) why the notice of appeal was not filed within time; and

(iii) the nature of the appeal; and

(iv) the questions involved; and

(b) a draft notice of appeal that complies with rule 34.24.

(4) The applicant must, at least 14 days before the day fixed for the directions hearing, serve a copy of the application and the accompanying documents on:

(a) the Commissioner; and

(b) each interested person.

1. It is well-established that the discretion created by r 34.25 is exercised by the Court having regard to various factors, such as, relevantly, (a) the length of and reasons for the delay, (b) any prejudice caused to the respondent or other persons arising out of the delay, and (c) the merits of the proposed appeal: Quach v Registrar of Trade Marks (No 2) [2026] FCA 57 [16] - [17]; Donzenac Pty Ltd v MCV Enviroworks Pty Ltd [2015] FCA 361 [44] (Donzenac). Of those factors, the third is said to be most significant, as it is accepted that an extension of time, however small, ought not be granted to permit a meritless appeal to proceed: see SZQCZ v Minister for Immigration & Citizenship [2012] FCA 91 [23].

1. As mentioned (see supra [6]), the delay in filing the appeal was caused by Mr North being unaware of the Delegate's decision, owing to his change of residence. However, it should be noted that the Court was provided with little information as to what occurred between 3 September 2024, when Mr North became aware of the Delegate's decision, and 2 June 2025, when this application was filed. Nevertheless, in the absence of any opposition, and any argument to the effect that Mr North acted in a dilatory manner, the explanations offered by Mr North for his delay are sufficient. This is particularly so given he was, at the time, acting without the assistance of a legal practitioner and thus ought to be afforded some leniency.

Prejudice to the respondent if leave is granted

1. The next factor concerns the prejudice, if any, to the respondent, arising out of the delay. Mr North asserts, unopposed, that no prejudice has been or will be suffered by Cool Dynamics because it has never used the Prior Mark and ceased doing business many years ago.
2. In support of this submission, Mr North deposes that the Prior Mark was previously owned by his father from 1981 until 2011, when his father's business was sold to a company known as Prime ARC. That same year, Cool Dynamics purchased the Prior Mark from Prime ARC for $10,000 when the latter entered liquidation. However, following an industrial incident, Cool Dynamics ceased trading and as such has not used the Prior Mark since acquiring it.
3. In the absence of any opposition, these facts demonstrate that Cool Dynamics are not likely to suffer any prejudice as a result of an extension of time being granted.
4. Moreover, as mentioned, Cool Dynamics has shown disinterest in this application and the proposed appeal. It chooses not to attend the Court to defend its position, and that probably reinforces the view that no prejudice will be suffered by it.

1. The third, and slightly more difficult, matter for consideration is whether the proposed appeal is of sufficient merit so as to warrant an extension of time. Here, Mr North bears the onus of demonstrating that there is at least an arguable question alive in relation to his proposed grounds of appeal: Donzenac [62].
2. Mr North has proposed three grounds of appeal, each of which stems from the fact that he was unaware of the opportunity to make written submissions. The first asserts that those circumstances amount to a denial of natural justice. Such an argument is somewhat dubious, given it is likely IP Australia simply provided notice to the addresses (either email or postal) which had been provided to it. This was not a case in which IP Australia had deliberately or negligently failed to communicate to Mr North his right to make written submissions. As such, that ground is not likely to present an arguable question.
3. Mr North's second and third proposed grounds of appeal provide a more substantial basis on which it might be shown that the decision of the Delegate was in error. Though not abundantly clear, by these grounds Mr North appears to contend that the Delegate erred in finding that (a) the Mark was deceptively similar to the Prior Mark, and (b) no honest concurrent use had occurred under s 44(3) of the Trade Marks Act.
4. It is possible that, given the absence of any written submissions by Mr North on these questions, the Delegate might have decided them in error. To that end, the unchallenged evidence before the Court is that Mr North was using the Mark and has done so for some time, while conversely, the Prior Mark has not been used at all by Cool Dynamics. In the absence of evidence and submissions by Cool Dynamics to the contrary, these circumstances give rise to a real question as to whether the Delegate was correct to conclude that any use of the Mark by Mr North would be deceptively similar to Cool Dynamics' use of the Prior Mark. Similarly, a question may also arise as to whether the Delegate was correct to find that Mr North acted in "blatant disregard" of the Prior Mark. His knowledge of the lack of use by Cool Dynamics of the Prior Mark might, on one view, tend towards a conclusion that he acted honestly in using the Mark.
5. Those arguments may be somewhat hopeful, but they are not fanciful, and as such, there is at least some arguable case to be advanced on an appeal.

1. In the circumstances, the application for an extension of time in which to appeal should be allowed. In circumstances where it is clear the proposed notice of appeal requires some attention, the order of the Court is that time be extended to a date three weeks from the hearing of this application.

1. In the absence of any submissions to the contrary, the applicant's costs of this application will be the applicant's costs in the appeal.

1. These are the amended and revised reasons for judgment given on 20 February 2026. Whilst the reasons given above refine and develop those that were delivered ex tempore, the substance of what was said that day has not been changed nor has any other material change been made.

I certify that the preceding twenty-two (22) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Derrington.