Gen-Probe Incorporated v Beckman Coulter, Inc

Link copied
Case Copied 20 min read

FEDERAL COURT OF AUSTRALIA

Gen-Probe Incorporated v Beckman Coulter, Inc [2022] FCA 194 

Appeal from: Beckman Coulter, Inc v Gen-Probe Incorporated. [2019] ATMO 182
File number: VID 45 of 2020
Judgment of: O'BRYAN J
Date of judgment: 8 March 2022
Catchwords: INTELLECTUAL PROPERTY –  appeal from decision of Registrar of Trade Marks refusing extension to Australia of protection for the trade mark OPEN ACCESS resulting from international registration under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks – application by the appellant seeking order directing the Registrar to rectify the Register by removing, or otherwise narrowing the specifications of, the respondent’s trade mark ACCESS on the ground of non-use under s 101(2) of the Trade Marks Act 1995 (Cth) – where hearing of the appeal and removal application completed and judgment reserved – where parties agreed to settle the proceeding and provided the Court with consent orders post-hearing – consideration of Court’s power to make the orders sought by consent – orders made by consent allowing appeal and dismissing interlocutory application
Legislation:

Trade Marks Act 1995 (Cth) ss 42(b), 44, 56, 92, 94, 189

Trade Marks Regulations 1995 (Cth) regs 17A.11, 17A.12, 17A.24, 17A.25, 17A.28, 17A.34, 17A.34P, 17A.34N, 17A.35, 17A.36, 17A.37

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (27 June 1989) Arts 2, 3ter1   
Cases cited:

a2 Milk Co Ltd v LD&D Australia Pty Ltd [2021] FCA 1515; 164 IPR 293

Cadbury Schweppes Plc v Effem Foods Pty Limited [2006] FCA 1267; 69 IPR 584

Hungry Spirit Pty Ltd ATF Hungry Spirit Trust v Fit n Fast Australia Pty Ltd [2019] FCA 1277

Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365

Societe Des Produits Nestle S.A. v Aldi Stores (A Limited Partnership) [2010] FCA 218

Suyen Corp v Americana International Ltd [2011] FCA 300

Division: General Division
Registry: Victoria
National Practice Area: Intellectual Property
Sub-area: Trade Marks
Number of paragraphs: 34
Date of last submission: 4 March 2022
Date of hearing: Determined on the papers
Counsel for the Appellant: Mr C. Smith
Solicitor for the Appellant: King & Wood Mallesons
Counsel for the Respondent: Mr A. D. B. Fox SC
Solicitor for the Respondent: Chryslegal Pty Ltd

ORDERS

VID 45 of 2020
BETWEEN:

GEN-PROBE INCORPORATED

Appellant
AND:

BECKMAN COULTER, INC

Respondent

ORDER MADE BY:

O'BRYAN J

DATE OF ORDER:

8 MARCH 2022

THE COURT NOTES THAT:

The Registrar of Trade Marks has been contacted by the parties in respect of the orders proposed below and has advised that she does not wish to be heard.

THE COURT ORDERS BY CONSENT THAT:

1.The appellant’s appeal constituted by its notice of appeal filed 28 January 2020 be allowed.

2.The decision of the Registrar of Trade Marks dated 18 December 2019 (Beckman Coulter, Inc v Gen-Probe Incorporated. [2019] ATMO 182) refusing to extend to Australia the protection resulting from the international registration of the trade mark OPEN ACCESS, being the subject of the appellant’s…

CaseChat AU logo

Keep reading for free

Create a free CaseChat account to read Gen-Probe Incorporated v Beckman Coulter, Inc and more:

  • Read every judgment in full
  • Ask AI and get answers linked to paragraphs
  • See how each paragraph was cited in later cases
  • Download judgments as PDF or Word
Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details
Case
[2022] FCA 194
Decision Date

CaseChat Overview and Summary

In the matter of Gen-Probe Incorporated v Beckman Coulter, Inc, the primary dispute centred around the refusal by the Registrar of Trade Marks to extend protection to Gen-Probe's international trade mark "OPEN ACCESS" in Australia. Beckman Coulter, Inc opposed the extension, leading to a judicial review in the Federal Court of Australia. The core legal issues the court had to address were whether the Registrar's decision to refuse protection could be appealed and if the opposition could be withdrawn during the appeal process. Additionally, the court had to determine if it could make orders by consent that allowed the appeal and dismissed the interlocutory application, given that the parties had settled post-hearing.

The Federal Court of Australia engaged in a de novo review of the Registrar’s decision, meaning the court had to apply the same legal criteria as the Registrar. The court found that since the opposition to the international registration of the trade mark could have been withdrawn at any time before a decision was made, it could also be withdrawn during the appeal process. This interpretation aligned with the regulatory framework that permitted the discontinuation or withdrawal of opposition before the Registrar’s decision. Consequently, the court concluded that it had the discretion to make orders by consent that allowed the appeal and dismissed the interlocutory application, reflecting the parties' agreement post-hearing.

In its decision, the court held that it was within its jurisdiction to make the orders sought by consent, allowing the appeal and dismissing the interlocutory application. This decision was based on the understanding that the opposition could be withdrawn during the appeal, similar to how it could be withdrawn before a decision by the Registrar. The court emphasised that its power to make orders by consent was not restricted by the need to determine the appeal based solely on the evidence filed, provided the parties had reached a settlement.

The final orders made by the court allowed the appeal, dismissed the interlocutory application, and effectively recognised the consent settlement between the parties. This outcome not only resolved the immediate dispute but also provided clarity on the procedural aspects of trade mark oppositions in the context of international registrations.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

If a trade mark becomes a protected international trade mark, the Registrar must notify that fact in the Australian Official Journal of Trade Marks and record that fact in the Record of International Registrations: reg 17A.37(1). Registrar’s decision with respect to Gen-Probe’s IRDA In the present matter, the Registrar notified her acceptance of Gen-Probe’s IRDA for possible protection in the Australian Official Journal of Trade Marks on 21 December 2017, pursuant to the powers conferred by Subdiv 1 of Div 3. Subsequently, BCI filed a notice of intention to oppose under Subdiv 3. The opposition was heard by a delegate of the Registrar and, on 18 December 2019, the delegate decided to refuse protection in Australia to the OPEN ACCESS trade mark on the basis of BCI’s opposition under reg 17A.34N.Gen-Probe’s appeal and the powers of the Court Gen-Probe appealed the delegate’s decision to refuse protection under reg 17A.34P which provides as follows:(1) Section 56 of the Act applies in relation to the Registrar’s decision on the opposition as if a reference in that section:(a) to an applicant were a reference to the holder of an IRDA; and(b) to a decision under section 55 of the Act were a reference to a decision under regulation 17A.34N.(2) If an appeal is made, the Registrar must tell the International Bureau of the decision on the appeal. Section 56 of the TM Act provides, relevantly, that an applicant or opponent may appeal to the Federal Court from a decision of the Registrar under s 55. Section 197 provides, relevantly, that on hearing an appeal against a decision of the Registrar, the Federal Court may, amongst other things:(a)affirm, reverse or vary the Registrar’s decision or direction; and(b)give any judgment, or make any order, that, in all the circumstances, it thinks fit. The Court, in exercising its powers in an appeal under s 56 is engaged in a hearing de novo and must apply the same legal criteria that the Registrar is required to apply: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [32] and [33] per French J, with whom Tamberlin J agreed. Allowing the appeal by consent It is clear from Subdivs 3 and 4 of Div 3 that a person opposing an application for extension of protection to an international trade mark before the Registrar may discontinue or withdraw the opposition at any time before a decision is made with respect to the opposition (see regs 17A.35 and 17A.36(2A)). Accordingly, BCI was entitled to discontinue or withdraw its opposition before the Registrar. If that had occurred, reg 17A.36(2A) would have applied with the effect that the OPEN ACCESS trade mark would have become a protected international trade mark (having been accepted by the Registrar under Subdiv 1 of Div 3). As Gen-Probe’s appeal to the Court is a hearing de novo in which the Court must apply the same legal criteria that the Registrar is required to apply, it follows that BCI is entitled to withdraw its opposition to Gen-Probe’s IRDA in these appeal proceedings. The question that arises is whether, in those circumstances, the Court may make orders by consent allowing the appeal and setting aside the Registrar’s decision refusing the extension of protection, or whether the Court is required to determine the appeal on the basis of the evidence that has been filed.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.