Morzone Pharmaceuticals Pty Ltd v Avidity Biosciences Inc

Morzone Pharmaceuticals Pty Ltd (the Opponent) opposed an application by Avidity Biosciences Inc (the Applicant) for the partial removal of a registered trade mark under section 96 of the *Trade Marks Act 1995* (Cth). The Applicant sought removal of the registration for certain goods on the basis that the trade mark had not been used in relation to those goods and there were no circumstances that constituted an obstacle to its use. The matter was heard by Hearing Officer Tracey Berger.

The primary legal issue before the Hearing Officer was whether to exercise discretion to retain the registration for the goods in question, despite the lack of use. This involved considering the interests of the trade mark owner, the applicant for removal, and the public interest. The Opponent contended that the trade mark had a reputation, had not been abandoned, had been used for relevant goods during the relevant period, and that restricting the registration would cause deception or confusion.

The Hearing Officer found that while the Opponent had not abandoned the trade mark and its goods had been available for many years, turnover figures were modest and recent advertising and publicity were limited. Consequently, the Opponent had not established a widespread reputation in the trade mark for pharmaceutical preparations. The Hearing Officer concluded that the partial removal of the trade mark would not significantly affect the Opponent's business, as it would retain protection for the homeopathic preparations for which the mark had been used. Balancing the public interest in maintaining the integrity of the Register against the likelihood of public deception or confusion, the Hearing Officer determined that there was no real risk of deception or confusion if the registration was restricted to exclude pharmaceutical preparations other than homeopathic preparations.

Accordingly, the Hearing Officer directed that the specification of goods for the registered trade mark be amended to "pharmaceutical preparations, namely homoeopathic preparations for infants and adults; dietetic substances adapted for medical use and food for babies." No costs were awarded due to the amendment of the removal application after the filing of evidence.