Eremad Pty Ltd v Portola Pharmaceuticals Inc

This matter concerned an application by Eremad Pty Ltd (the Applicant) to remove the trade mark "ANDEX" from the Register, brought before the Registrar of Trade Marks. Portola Pharmaceuticals Inc (the Opponent) opposed this application. The dispute centred on whether the Opponent had used the trade mark in Australia in relation to the registered goods during the relevant period, as required by the *Trade Marks Act 1995* (Cth).

The primary legal issues before the Registrar were whether the grounds for removal under section 92 of the *Trade Marks Act 1995* had been established, specifically concerning the non-use of the trade mark, and, if so, whether the Registrar should exercise discretion under section 101 of the Act to allow the trade mark to remain on the Register. The Opponent asserted that it had a bona fide intention to use the mark and that its authorised user, Medis Pharma Pty Ltd, had used the mark in securing registration for a pharmaceutical product with the Therapeutic Goods Administration (TGA).

The Registrar found that the Opponent had not provided sufficient corroborated evidence of use of the ANDEX trade mark within the relevant three-year period preceding the removal application. While the Opponent presented evidence of Medis Pharma Pty Ltd's efforts to obtain TGA approval for a product named "ANDEX Product," this evidence lacked the necessary corroboration and did not establish actual use of the trade mark in the marketplace. Consequently, the grounds for removal under section 92 were established. The Registrar also considered the discretionary power under section 101(3) to allow the mark to remain on the Register if reasonable, but found that the Opponent's arguments for exercising this discretion were largely based on unsupported assertions, particularly regarding the relationship between the Opponent and Medis, and the lack of evidence of commercialisation efforts.

Accordingly, the Registrar decided to remove the ANDEX trade mark registration from the Register for all goods for which it was registered. The Registrar also awarded costs to the Applicant.