CSL Limited v Hong Kong CSL Limited

CSL Limited (the opponent) opposed an application by Hong Kong CSL Limited (the applicant) to remove a trade mark from the Register of Trade Marks on the grounds of non-use. The matter was heard by Debrett Lyons, a delegate of the Registrar of Trade Marks. The opponent, a well-established Australian biopharmaceutical company, argued that the applicant had not used its trade mark in Australia during the relevant three-year period preceding the non-use application.

The primary legal issue before the delegate was whether the opponent had established that the applicant had not used the trade mark in Australia in good faith in relation to the goods and/or services to which the application related, for a continuous period of three years ending one month before the filing of the non-use application, as required by section 92(4)(b) of the relevant Act. The opponent relied on evidence comprising an Excel database, a CD-ROM concerning influenza, and another CD-ROM concerning travel health and vaccination, all of which purportedly bore the trade mark.

The delegate considered the evidence presented by both parties. While acknowledging the opponent's status as a person aggrieved and its reliance on various digital media, the delegate found that this evidence did not demonstrate use of the trade mark on the relevant goods within the specified non-use period. The delegate noted that International Class 9, in which the trade mark was registered, is a crowded class with ambiguous and overlapping goods descriptions. Ultimately, the delegate was satisfied that no use of the trade mark on the relevant goods had occurred during the non-use period.

Consequently, the delegate directed that the relevant goods be excised from registration 762353 one month from the date of the decision, subject to any appeal. The applicant was awarded costs against the opponent.