Eremad Pty Ltd v Portola Pharmaceuticals Inc

[2018] ATMO 165

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Eremad Pty Ltd to application under section 92 of the Act by Portola Pharmaceuticals Inc to remove trade mark number 1290411 (5) - ANDEX - in the name of Eremad Pty Ltd

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Ashurst Australia Applicant: Selfmark Pty Ltd – written submissions
Decision:	2018 ATMO 165 Trade Marks Act 1995 Section 96 opposition to removal applications under sections 92(4)(a) and (b). Opponent has not shown use of the Trade Mark during the Relevant Period. No circumstances supporting exercise of the Registrar's discretion or preventing use of the Trade Mark. Opposition to removal not established – Trade Mark to be removed from the Register.

Background

1.     In these proceedings Portola Pharmaceuticals Inc (‘the Applicant’) filed an application on 20 July 2016 under subsections 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for the removal of the trade mark which appears below for all of the goods in respect of which it is registered:

Registration No:           1290411

Priority Date:               19 March 2009

Goods:Class 5: Pharmaceutical preparations; none of the aforesaid being an ant exterminator

Trade Mark:                ANDEX

(‘the Trade Mark’)

2. As allowed by section 96 of the Act, the owner of the Trade Mark, Eremad Pty Ltd, (‘the Opponent’) filed a Notice of Intention to Oppose on 28 September 2016.

3.     Thereafter, the opposition process has followed the schedule outlined below:

28 September 2016 – Opponent filed Statement of Grounds;

15 November 2016 – Applicant filed Notice of Intention to Defend;

21 January 2017 – Opponent filed Evidence in Support -

Declaration of Jonghee Kim, the director of the Opponent, made on 20 February 2017, with Annexures A to C:

2 June 2017 – Applicant filed an application for extension to serve evidence in Answer – approved on 7August 2017.

2 June 2017 – Applicant filed Part of its Evidence in Answer –

Declaration of Gerard James Skelly, Legal Practioner and Director of Selfmark Pty Ltd dated 2 June 2017 with Annexures A to H;

7 August 2017 – Applicant filed Balance of its Evidence in Answer –

Declaration of Gerard James Skelly, dated 7 August 2017 with Annexures J to M;

5 February 2018 – Applicant filed its written submissions.

4.     Both parties have been informed of their right to be heard or to make written submissions.  Neither party requested to be heard.  The Applicant, as recorded above, filed written submissions – these are by its trade mark attorney, Gerard Skelly of Selfmark Trade Mark Attorneys and Lawyers.  The Opponent has not filed written submissions.

5.     Now, in order that the Registrar may decide this matter, it has been passed to me, one of her delegates for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Principles

6. As the application for removal was filed on 20 July 2016, the relevant period for the purposes of section 92(4)(b) is the three year period ending on 20 June 2016 (‘the Relevant Period’). Further, it is convenient to discuss the issues only in terms of section 92(4)(b). As the Registrar’s delegate observed in Liliana Forza v Jaimex Nominees Pty Ltd:[1]

I note also the tendency for the grounds under ss 92(4)(a) and (b) to merge once five years have passed since the filing of an application to register, given an owner’s intention as at the filing date may come to be reflected in the actual use made of the trade mark. Often an analysis of the ground under s 92(4)(a) is otiose in view of any actual use made of a trade mark …

[1] [2016] ATMO 5 at [9].

1. I accordingly note that if the opposition to removal under section 92(4)(b) is not established there is no requirement to consider the ground under section 92(4)(a).

2. Concerning the onus in these proceedings, section 100 of the Act relevantly provides:

   100Burden on opponent to establish use of trade mark etc.

   (1)In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a)any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)to use the trade mark in Australia; or

   (ii)to authorise the use of the trade mark in Australia; or

   (iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the opposed application relates (relevant goods and/or services); or

   (b)any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or

   (c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or

3. A single bona fide use of a trade mark in the Relevant Period may be sufficient to answer an application for removal under subsection 92(4)(b): Woolly Bull Enterprises Pty Ltd v Reynolds.[2]

   [2] [2001] FCA 261; 107 FCR 166 at 172.

4. However, where a trade mark owner relies on only one, or a few, instances of alleged use, such acts ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’: Nodoz Trade Mark (‘Nodoz’).[3]

   [3] [1962] RPC 1 at 7 per Wilberforce J.

5. The decision maker may not be persuaded by evidence that is solely from the internal files of the opponent (Nodoz), or of a circumstantial nature: Trina Trade Mark. [4]

   [4] [1977] RPC 131.

6. The relevant standard of proof that the Opponent bears is on the balance of probabilities.[5] In this regard, section 101 of the Act provides that if ‘the Registrar is satisfied that the grounds on which the application [for removal] was made have been established, the Registrar may decide to remove the trade mark from the Register …’ [Stress added]

   [5] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.

7. In Blount Inc v Registrar of Trade Marks[6] Branson J observed:

   [6] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.

   Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

8. It follows that unless the Opponent evidences ‘convincing proof’ of use of the Trade Mark ‘in the course of trade’:[7]

   1.   without alterations or additions which substantially affect its identity;[8]

   2.   during the Relevant Period;

   3.   in relation to the Goods;

   to the satisfaction of the Registrar, the opposition to removal will not be established.

   [7] See section 17 of the Act: What is a trade mark?

   [8] Subsections 7(1) and 100(3)(b)(i) of the Act apply.

9. Even if the Trade Mark has not been used and opposition to removal has not been established, there remains a discretion for the Registrar to allow the Trade Mark to remain on the Register in respect of the impugned goods if satisfied it is reasonable to do so.  The Opponent again bears the onus of providing reasons as to why the Trade Mark should remain on the Register.

   Evidence

   16.     Mr Kim states that, as well as being the director of the Opponent, he is a director of Medis Pharma Pty Ltd (‘Medis’) a company that specialised in the commercialisation of generic prescription pharmaceuticals for the retail and hospital markets.

   17.     While Mr Kim states that Medis is a related entity to the Opponent and the authorised user of the ANDEX mark in Australia, these claims are not corroborated by supporting documentation.

   18.     Mr Kim goes on:

   The ANDEX mark is used by Medis in relation to a prescription only medication for the treatment of advanced breast cancer in postmenopausal women with oestrogen/progesterone-receptor-positive disease with disease progression following tamoxifen therapy.

   A stable supply of affordable generic pharmaceuticals such as the ANDEX Product is crucial to improve health care access in Australia. By corollary it is important that suppliers of generic pharmaceuticals are able to promote their products by virtue of an easily recognisable brand.

   However in Australia, a therapeutic good must either be registered or listed on the Australian Register of Therapeutic Goods (ARTG) for it to be lawfully marketed. Relevant excerpts containing further information regarding the ARTG as obtained from is attached as Annexure A.

   On 28 October 2010, following the registration of the ANDEX Mark, Medis filed an application which sought approval from the Therapeutics Goods Administration (TGA) to market the products that Medis and the Opponent intended to be sold by reference to the ANDEX Mark (ANDEX Product). A screenshot of the ARTG is attached as Annexure B.

   Since that date, Medis has undertaken exhaustive assessments of the ANDEX Product to satisfy rigorous standards of identity, strength, quality, purity and potency and to demonstrate to the TGA that the product is safe and fit for its intended purpose.

   Following an iterative process, the ANDEX Product has been registered on the ARTG.

   Indeed the effective date for the ANDEX Product is recorded on the ARTG as 31 January 2017.  A copy of the ARTG summary approving the use by Medis of the ANDEX mark is attached as Annexure C.

   The Andex Product is administered orally and contains the active ingredient anastrozole. It will be provided to consumers as a packet of 30 l mg bi-convex film-coated tablets. Each tablet will be plain on one side and be debossed with the numeral 1 on the reverse side.

   Concurrent to obtaining TGA approval, Medis has been working to commercialise the ANDEX product and to prepare for entry into the generic drug market. In particular, Medis has been monitoring changes in commercial drivers in the marketplace and has dedicated effort and time in discussing product formulation, providing quality assurance and negotiating the distribution process with a number of businesses.

   The Opponent and Medis have and remain committed to the ANDEX trade mark and it is expected that the ANDEX Product will be available for purchase by the end of this year.

   19.     There is no corroborating documentation for Mr Kim’s statement that Medis has “dedicated effort and time in discussing product formulation, providing quality assurance and negotiating the distribution process with a number of businesses”.  I will also state now that it is not explained by the Opponent why a generic pharmaceutical should be required to be tested in the manner described by Mr Kim: prima facie, a generic pharmaceutical is one which is a copy of a patent-expired pharmaceutical that has already been through the testing process.

   20.     Mr Skelly, in the Opponent’s Evidence in Answer, states:

   On 29 June 2016, I obtained a summary of the ANDEX Product registration from the Australian Register of Therapeutic Goods (“ARTG”). Now shown to me and marked Annexure A is a copy of the ARTG Summary I obtained on 29 June 2016 showing a start date[9] of 28 October 2010 with an effective date of 3 December 2012.

   [9] Annexure NB explains that “The ARTG start date is the date on which the product was added to the ARTG” and “The Effective Date is the date on which the last change to the entry came into effect”.

   21.     Mr Skelly also filed a Freedom of Information request with the TGA and the heavily redacted documents appended to his second declaration that the TGA provided to him show, in Mr Skelly’s words:

   … some activity during 2010 – 2012, with a hiatus until October 2016. There was no activity between the sponsor (Medis) and the TGA during the relevant three year non-use period. The more recent correspondence from 18 October 2016 to 20 January 2017 appears to relate to changes to the manufacturing site suitability and the specification of the active ingredient. This recent activity occurred after filing of the Removal Application and it may be inferred it was merely taken as a defensive measure to try and protect the ANDEX trade mark registration.

   22.     While the correspondence between Medis and the TGA might reflect ongoing activity by the Opponent in relation to goods proposed to be sold under the Trade Mark, it might also be open to the interpretation that Mr Skelly lays upon it.  If there had been such ongoing activity on the part of Medis, the onus is on the Opponent to establish this – this the Opponent has not done.

   23.     Annexures to Mr Skelly’s declarations also establish that other pharmaceutical companies have had no apparent delays in listing anastrozole with the TGA and on the Pharmaceutical Benefits Scheme.

   Discussion

   24.     In its Statement of Grounds and Particulars the Opponent asserts:

   1. The conditions required by section 92(4) of the Act have not been fulfilled

   (a) On the day on which the Opponent filed the application for registration of the trade mark, the Opponent had, and continues to have, an intention in good faith to use the Registered Trade Mark in Australia.

   (b) The Opponent and/or its authorised user has used and continues to use the Registered Trade Mark, or the Registered Trade Mark with additions or alterations not substantially altering its identity, in good faith in Australia in relation to the goods to which the application for removal relates before and during the relevant period and such use continues.

   (c) The Opponent accordingly rebuts the allegations made under section 92(4).

   2. The trade mark was applied for and registered by the Opponent with the bona fide intention of using the Registered Trade Mark and the Registered Trade Mark has been used in good faith.

   (a) The Opponent had an intention in good faith to use the Registered Trade Mark Mark on 19 March 2009 being the day that the Registered Trade Mark was filed. The Opponent and/or its authorised user has used and continues the use the Registered Trade Mark in Australia, or the Registered Trade Mark with additions or alterations not substantially altering its identity in connection with the registered goods including in securing registration from the Australian Therapeutics Goods Administration of a prescription pharmaceutical bearing the Registered Trade Mark.

   The trade mark was applied for and registered by the Opponent with the bona fide intention of authorising the use of the Registered Trade Mark and the Trade Mark has been used in good faith in Australia.

   (a) The Opponent had an intention in good faith to authorise use of the Registered Trade Mark on 19 March 2009 being the date on which the application for registration of the trade mark was filed. The authorised user has used and continues the use the Registered Trade Mark in Australia, or the Registered Trade Mark with additions or alterations not substantially altering its identity in connection with the registered goods including in securing registration from the Australian Therapeutics Goods Administration of a prescription pharmaceutical bearing the Registered Trade Mark.

   4. The Trade Mark had been used by the Opponent or an authorised user in good faith in respect of the goods for which the Trade Mark is registered, within the period of three years ending one month before the day on which the Removal Application was filed.

   (a) The Opponent has used or authorised use of the Registered Trade Mark, or the Registered Trade Mark with additions or alterations not substantially altering its identity, in good faith in Australia in relation to the goods to which the application for removal relates during the three-year period ending one month before the date of the removal application.

   5. Registrar should exercise discretion in Opponent's favour by virtue of the circumstances surrounding the use and registration of the Registered Mark.

   (a) In addition to using and authorising use of the Registered Trade Mark, the Opponent and/or its authorised user has secured registration from the Australian Therapeutics Goods Administration (TGA) of a prescription pharmaceutical bearing the Registered Trade Mark.

   (b) Once a product is registered by the TGA, the presentation and name of new products is evaluated to ensure that the new product is clearly distinguishable from existing products in order to reduce the possibility of confusion among consumers.

   (c) Any use of the Registered Trade Mark by a third party would therefore constitute a deliberate attempt to trade off the Opponent's valuable reputation and goodwill in the Registered Trade Mark as well as the TGA registration that is inextricably linked to the Registered Trade Mark. The Opponent requires the Registered Trade Mark to remain registered for the goods to enable it to use the Registered Trade Mark and to prevent the use and registration of substantially identical or deceptively similar marks by third parties in relation to similar goods, in order to prevent confusion and deception arising.

   (d) It is in the private interest of the Opponent and in the public interest that the Registrar should exercise her discretion to refuse to remove the Registered Trade Mark.

   Having regard to any one or more of the foregoing grounds or otherwise in the exercise of her discretion, the Registrar should determine the matter by:

   1.        rejecting and dismissing the removal application entirely;

   2. deciding that the Registered Trade Mark should not be removed from the Register;

   3.        awarding costs to the Opponent.

   25. Section 92 of the Act relevantly provides:

   92Application for removal of trade mark from Register etc.

   (1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

   (2)The application:

   (a)must be in accordance with the regulations; and

   (b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

   (3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

   Note:For prescribed court see section 190.

   (4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

   (a)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)to use the trade mark in Australia; or

   (ii)to authorise the use of the trade mark in Australia; or

   (iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

   (iv)has not used the trade mark in Australia; or

   (v)has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

   (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)used the trade mark in Australia; or

   (ii)used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   26.     I observe that the application for removal has been made in accordance with the regulations and that the Registrar has not been informed of an action concerning the Trade Mark in a prescribed court.

   27.     The Opponent’s evidence does not reveal any corroborated use of the Trade Mark within the Relevant Period.

   28. The Opponent has not, therefore, established its opposition to the application under section 92 of the Act.

   Discretion

   29. Section 101 of the Act relevantly provides:

   101Determination of opposed application—general

   […]

   (3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

   30.     As the Registrar’s delegate stated in Metropolitan Investment Group Pty Ltd v Autumnpaper Limited:[10]

   [10] 2018 ATMO 163 at [32].

   As indicated above, section 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

   a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[11]

   [11] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

   Her Honour also noted:

   By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[12]

   While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited,[13] Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[14] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[15] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[16]

   [12] Ibid [171]-[172].

   [13] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934.

   [14] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [15] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [16] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

   31.     Some factors which may be taken into account when considering whether it is reasonable for the Registrar to exercise her discretion were referred to by Bennett J in Pioneer to be if:[17]

   othere had been no abandonment of the trade mark;

   othe registered proprietors of the mark still had a residual reputation in the mark;

   othere had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;

   othe applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

   othe registered proprietors were not aware of the applicant’s sales under the mark.

   [17] Op cit at [169].

   32.     Whilst acknowledging that the above list is not exhaustive, I find that none of the above circumstances emerge from the Opponent’s evidence.

   33.     In further considering whether the exercise of the Registrar’s discretion is reasonable in the circumstances before me I note the following:

   ·    The lack of documentation of the nature of the relationship between the Opponent and Medis and the absence of corroboration of the asserted authorised user agreement between those entities;

   ·    The absence of documentation and corroboration of the Opponent’s/Medis’s  “exhaustive assessments of the ANDEX Product to satisfy rigorous standards of identity, strength, quality, purity and potency and to demonstrate to the TGA that the product is safe and fit for its intended purpose”;

   ·    The absence of documentation and corroboration that the Opponent/Medis was (during and/or after the relevant period) “discussing product formulation, providing quality assurance and negotiating the distribution process with a number of businesses”; and that

   ·    Removal of the Trade Mark from the Register will not result in confusion or deception as the Trade Mark has never been publically used.

   34.     In circumstances where the Opponent’s arguments for the exercise of the Registrar’s discretion are largely based upon unsupported assertions, it is not (in my consideration) appropriate to exercise the Registrar’s discretion in favour of the Opponent.

   Decision

   35. Section 101 of the Act relevantly provides:

   101Determination of opposed application—general

   (1)Subject to subsection (3) and to section 102, if:

   (a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b)the Registrar is satisfied that the grounds on which the application was made have been established;

   the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

   36.     The grounds on which the application for removal was made have been established: the Opponent has not established its opposition to the removal of the Trade Mark from the Register.

   37.     Accordingly, I decide to remove registration 1290411 from the Register for all of the goods for which it is registered.  In the event of an appeal from this decision, the registration will not be removed until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that order.

   Costs

   38. The Applicant sought its costs in the event that the application for removal was successful: costs usually follow the event and there is no reason to deviate from that practice here. I award costs against the Opponent at the official scale set out at Schedule 8 to the Trade Marks Regulations 1995.

   Iain Campbell Thompson
   Hearing Officer
   Trade Marks Hearings
   8 October 2018