Objection by Beckman Coulter Inc to referral of applications for removal of its trade marks 571344, 571345 and 571346 – ACCESS – classes 1, 5,10 - by GEN-PROBE INCORPORATED to the de novo appeal Federal Court...
[2021] ATMO 3
•15 January 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Objection by Beckman Coulter Inc to referral of applications for removal of its trade marks 571344, 571345 and 571346 – ACCESS – classes 1, 5,10 - by GEN-PROBE INCORPORATED to the de novo appeal Federal Court Proceeding VID 45/2020 in respect of IRDA 1880980 (IR 1370198) for the trade mark OPEN ACCESS.
Delegate: | M Cooper |
Representation: | Opponent: Andrew Fox of counsel instructed by Chrysiliou IP Applicant: Craig Smith of counsel instructed by King & Wood Mallesons |
Decision: | 2021 ATMO 3 Trade Marks Act 1995 (Cth) – objection to referral of non-use removal applications for trade marks 571344, 571345 and 571346 to the Federal Court. Applications to be referred. |
Background
This matter concerns an application by Gen-Probe Incorporated (‘Applicant’) on 12 October 2020 under s 94 of the Trade Marks Act 1995 (Cth) (‘the Act’) to refer to the Federal Court its applications for removal for non-use (‘removal applications’) of Australian registered trade marks 571344, 571345 and 571346 (‘Opponent’s marks’). The Applicant seeks that these removal applications be heard with its appeal (‘the appeal’)[1], commenced on 30 January 2020, against the Registrar’s decision refusing the extension of protection to Australia of its international registration IR 1370198, allocated Australian trade mark number 1880980. That decision, of 18 December 2019, found Beckman-Coulter Inc (‘the Opponent’) had established its s 60 opposition ground. The Opponent had also particularised ss 42(b), 43 and 44 grounds of opposition. It has maintained the ss 42, 44 and 60 grounds in the appeal.
[1] Gen-Probe Incorporated v Beckman Coulter Inc. Federal Court proceedings VID 45 of 2020.
On 17 November 2020, the Opponent advised its objection to the referral. After further correspondence and communication between the Registrar and the parties, on 25 November, the Registrar advised them that it proposed to refer the removal applications to the Federal Court. On 9 December 2020, the Opponent advised that it opposed the referral and sought a hearing. In accordance with s 203 of the Act, a hearing was scheduled and on 22 December 2020 I heard the matter as delegate of the Registrar.
Both parties filed submissions prior to the hearing, attaching a transcript of the appeal case management proceedings held in the Federal Court on 11 December 2020.
Mr. Craig Smith of counsel appeared at the video hearing for the Applicant, instructed by Bill Ladas with Sarah Huang of King & Wood Mallesons. Mr. Andrew Fox of counsel appeared for the Opponent instructed by Kerry Chrysiliou of Chrysiliou IP.
Submissions
Opponent/Objector
In summary, in objecting to the referral, the Opponent submitted that the Applicant’s significant delay in filing the removal applications, having been made ‘on the eve of the trial’, caused it significant prejudice because the compressed timetable did not give it sufficient time to prepare and present its case. The Applicant had provided no explanation for its delay in filing the removal applications, having been aware for two years and seven months of the Opponent’s reliance on the Opponent’s marks in its opposition and the appeal. It also contended that the Applicant was unfairly advantaged strategically because it was using these removal applications ‘as a vehicle for overcoming one of the three opposition grounds advanced by [the Opponent] in the Court proceeding’. The Opponent further submitted that the referral would accrue a benefit only to the Applicant. This was said to constitute a ‘strong brake on the exercise of discretion’ because the Registrar should not act to one party’s disadvantage. It further contended that there would be no unfairness to the Applicant should the removal applications proceed in the ordinary course before the Registrar.
The Opponent also submitted that the removal applications will not affect the result of the appeal and there is no pertinent overlap in the evidence. The proceedings are said to be different, have different factual bases and require different factual inquiries. Specifically, relying on various authorities, particularly E & J Gallo Winery v Lion Nathan Australia Pty Ltd[2], the Opponent submitted that a successful removal application can only operate to remove trade marks prospectively. It follows that, even if the removal applications are successful, they could have no impact on the assessment of the opposition grounds in the appeal, given the relevant date for the assessment of the rights of the parties in that matter is 6 March 2017. Any referral to the Court is therefore said to be a ‘futile exercise and a waste of Court time and resources’.
[2] [2009] FCAFC 27 [63]-[64].
At the hearing, the Opponent also noted that there is no urgency to the removal applications. There is no issue of infringement and no reason for the Applicant to cease using its trade mark.
The Opponent further referred to the Applicant’s submissions as to the administrative efficiencies and cost savings said to be achieved by a referral, submitting that there would only be time savings. The Opponent did not accept that maintaining the removal applications with the Registrar would inevitably incur additional costs or that, even if they were incurred, they would be significant. It noted that the Court has not suggested it cannot accommodate any variations to the timetable. The Opponent accepts some delay and contended that Applicant’s reference to the likely prospect of appeal from the Registrar’s decision on the removal applications is not a relevant consideration in deciding whether to exercise the discretion to refer.
Responding to the Applicant’s references to and reliance on the Court’s comments in transcript, the Opponent noted the Court’s emphasis that its comments should not be considered to pre-empt or affect the Registrar’s decision on the referral[3].
[3] Transcript page 6 lines 21-31.
Applicant’s submissions
The Applicant rejected the Opponent’s contention that it was disadvantaged by the referral of the removal applications to the Federal Court, submitting that it is to the advantage of both parties to have one hearing for both applications, not just in time but also in resources. It disputed the Opponent’s statement that it had filed the removal and referral applications on the ‘eve of trial’, noting it had been 5 months before the scheduled commencement of the appeal trial. It submitted that a referral would avoid significant time and costs for both parties, as well as it being a more efficient use of the Registrar’s and the Court’s time and resources to hear the two matters together. It contended this served the public interest in ‘efficiency in the administration of justice’ which is a relevant factor in the exercise of the Registrar’s discretion. In addition, it submitted that the evidence the Opponent needs to respond to the removal applications is within its own records and it should be relatively simple to gather and put on at short notice.
The Applicant also claimed that ‘[i]t is not to the advantage of either party or the adjudicating authorities for the same issues to be considered before IP Australia, and then again before the Court in the likely event the decision is appealed. Rather, we respectfully submit that this is precisely the type of matter which the legislature intended to be captured in the Registrar’s discretion under section 94 of the Trade Marks Act.’ Furthermore, having the removal applications determined by the Court ‘will allow the parties to prepare evidence and develop submissions in respect of all aspects of this matter at one point in time, rather than progressing the matter through two separate processes.’
In relation to the relevance of the removal applications to the appeal, the Applicant accepted the different nature of the inquiries however it maintained that the s 44 opposition ground connects the two matters and the Opponent’s submissions in relation to the applicable assessment dates rely ‘on a proposition of law that is unsettled at best.’ Relying on previous decisions of the Registrar[4] and referring to a pertinent article[5], it submitted that the operation of s 44 is prospective ‘such that the outcome of a non-use action is decisive’ and joining the two matters would accordingly ‘be most efficient to the conduct of these matters.’
[4] iGuard Pty Ltd v iGuard Australia Pty Ltd [2018] ATMO 91 (8 June 2018); Omega SA (Omega AG) (Omega Ltd.) v Mark Robinson and Brenda Robinson [2012] ATMO 92 (17 October 2012).
[5] Handler, M and Burrell, R ‘Zombie Marks? Ceased registrations, failed applications and citation objections under s 44 of the Trade Marks Act’ (2013) 23 Australian Intellectual Property Journal 206.
The Applicant further submitted that, even if this position was incorrect, the Court may consider that ‘the outcome of the non-use applications give rise to ‘other circumstances’ that satisfy it that our client’s trade mark application…. should be accepted for registration under section 44(3)(b) of the Trade Marks Act.’ Accordingly, the Applicant submitted, it is appropriate for the Court to consider the removal applications and the appeal together.
At the hearing the Applicant referred to the transcript of the case management hearing in which it noted that the Court indicated that, if the removal applications came to the Court, it ‘would be minded’ to deal with them and the appeal ‘as part of a single controversy’[6]. The Applicant also noted that the Court indicated, if the referral is not made, it would adjourn the appeal proceedings until the removal applications were determined[7]. The Applicant contended that this demonstrates the Court’s acceptance of the relevance of the removal applications to the appeal and acknowledgment of the delay if they are initially dealt with by the Registrar. The Applicant, noting both matters were likely to elicit expert evidence, also submitted that the adversarial examination of the evidence in the Court would allow for it to be thoroughly tested.
[6] Transcript 11 December 2020 page 6 lines 23-31
[7] Transcript 11 December 2020 page 14 lines 16-19
Legislation
Section 94 of the Act provides as follows:
Referral to court
If:
(a) an application has been made to the Registrar under subsection 92(1); and
(b) the Registrar is of the opinion that the matter should be decided by a prescribed court;
the Registrar may refer the matter to such a court and the court may hear and determine the matter as if an application had been made to it under subsection 92(3).
The Applicant submitted that s 92(3) was not applicable and, absent any argument from the Opponent, in the circumstances, I am not persuaded otherwise.
Consideration
The s 94 discretion is broadly expressed and there appear to be no previous decisions providing guidance as to its exercise. The parties were unable to direct me to any authorities which have considered the exercise of the discretion in s 94. The Opponent referred me to Uniglobe Holdings v Uniglobe Travel [8] which briefly traversed, among other things, the s 94 predecessor provision s 23(6) in the Trade Marks Act 1955 (Cth). As acknowledged by the Opponent, that matter had only briefly discussed whether the removal applications filed by an applicant should be referred to the Federal Court. In those proceedings the opponent was pursuing an infringement action against the applicant and the applicant had cross-claimed that the opponent had not complied with s 52 of the Trade Practices Act 1975 (Cth). The Registrar concluded only that ‘[m]atters raised in the cross-claim include matters that would fall to be determined by the Registrar under the s 23 application. It is therefore appropriate that the application in terms of s 23 to remove the marks from the register be referred to the Federal Court.’[9] That is, the determination of the issue was resolved solely by reference to the relevance of the removal applications to the Federal Court proceedings already on foot.
[8] (1988)11 IPR 658.
[9] Ibid [661].
I was also referred to Cadbury UK Ltd v Registrar of Trade Marks[10] however it is of limited authority given it concerned the Registrar’s exercise of discretion to suspend proceedings. It was decided primarily on the basis that the delegate’s decision suspending proceedings for an indefinite period ‘amounted to a denial of natural justice and a refusal by the delegate to perform her duty to hear and determine those proceedings.’[11] Of relevance is the comment by the Court of the overriding duty of fairness owed by a decision-maker when exercising a discretion.
[10] [2008] FCA 1126.
[11] Ibid [16].
In relation to a s 94 application, I have had regard to the Trade Marks Office Manual of Practice and Procedure (‘the Manual’), in particular, Part 48 paragraph 2.4 which states:
2.4 Referral to a court
If the Registrar considers it appropriate, an application made to her may be referred to a prescribed court and the court may then hear and determine the matter. In general terms, this may be done if a matter concerning the trade mark registration is commenced in a prescribed court and the applicant (and an opponent, if any) request(s) that the non-use application should be referred to the court. A non-use application may also be referred if it has been opposed and either the applicant or the opponent unilaterally requests referral. In the latter case the Registrar will consider the arguments of the parties before deciding on such a course.
While I have had regard to the above policy, I note the words of s 94 require only that the Registrar ‘is of the opinion’ that the matter should be referred[12]. The section contains no express limitations. It is therefore a broad discretion of which it might be said, similarly to s 101(3) discretion also in Part 9, it is ‘only limited by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act’.[13] Pertinently, as the Court observed in Austin Nichols:
The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners.[14]
[12] The words of the section also do not require that the removal application has been opposed however, given the operation of s 97, any referral would otherwise be moot.
[13] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8 [35] (‘Austin Nichols’).
[14] Ibid [39].
In considering the prejudice or disadvantage to the Opponent caused by the Applicant’s delay in filing the removal applications, concurrently seeking their referral to the Federal Court, I accept that the delay has been insufficiently explained. Nevertheless, whether the Applicant may have been strategically advantaged by introducing a new legal issue through these delayed applications, is not a relevant consideration in the assessment of disadvantage. As the Court observed in transcript, what is relevant is whether it results in ‘some unfairness in the conduct of the litigation’.[15] In this context, I note that the filing was some 5 months before the scheduled trial in the appeal and the compressed timetable then proposed by the Applicant appears to no longer be in issue. At the case management hearing the Court expressed flexibility in its proposed rescheduling of matters should the matter be referred.[16] Consequently, I consider that any disadvantage or prejudice to the Opponent in this regard is mitigated and the weight of this consideration as a factor in considering whether to refer the matter to the Federal Court is diminished.
[15] Transcript 11 December 2020 page 10 lines 31-44.
[16] Transcript 11 December 2020 page 14 lines 22-25.
In relation to the Applicant’s time and costs submissions, I accept that retaining the removal proceedings with the Registrar will cause delay in the disposition of the appeal as the Court has indicated it will adjourn it until the outcome of those proceedings[17]. Therefore, further delays and additional costs in these proceedings appear inevitable if the non-use removal applications are not referred. While the Opponent has indicated it is not concerned by these factors, when considered with the public interest in the efficient administration of the justice, they are factors which weigh in favour of the exercise of the discretion to refer the removal applications to the Federal Court.
[17] Transcript 11 December 2020 page 14 lines 16-19.
As noted above, the Opponent also contends that the non-use removal applications should not be referred because they are of no relevance and have no bearing on the appeal. On the contrary, the Applicant submits they are directly relevant because the outcomes have a direct bearing on the s 44 opposition grounds raised in the appeal. I note Dodds-Streeton J’s comments Chia Khim Lee Food Industries Pte Ltd v Red Bull GmbH (No.1),[18] an interlocutory application concerning an appeal by an applicant against the Registrar’s rejection of its trade mark under s 44. The Court was considering whether to strike out a ground of appeal referring to the applicant’s later non-use removal application in respect of the trade mark the basis for the s 44 rejection. The parties raised similar legal arguments to those foreshadowed in this appeal regarding the relevant date for the assessment of the rights of the parties under s 44 and the operative date of any removal of the opponent’s mark. In declining to strike out the ground, Dodds-Streeton J was satisfied that it ‘constituted a point of law’ and ‘a determination that it was unarguable in isolation from other issues, appeared inappropriate.’[19] Further, in considering whether the Applicant’s arguments in this respect had a reasonable prospect of success, she said it was ‘reasonably arguable’ and observed as follows:
no Full Court or indeed single judge has comprehensively assessed and unequivocally rejected the detailed arguments now advanced by Chia Khim on the specific point; those arguments are not insubstantial and are supported by a number of decisions of hearing officers; I was not satisfied that the point of law on which ground 2 depended should be struck out.[20]
[18] [2012] FCA 1184
[19] Ibid [65] and [70].
[20] Ibid [84]-[86].
Although an interlocutory decision, I consider Her Honour’s comments authoritative in this regard and I give them significant weight as supporting the relevance of the matters raised in the Applicant’s removal applications to the appeal and the referral of them to the Federal Court for determination with the appeal. While not placing undue weight on the Court’s comments in transcript in this regard, I also note it appears to have accepted their relevance to the appeal.[21]
[21] Transcript 11 December 2020 page 13 lines 39-41.
Overall, having carefully considered the parties’ submissions, I am not satisfied that either party will be relevantly disadvantaged by the referral. Conversely I consider the inevitable additional time and costs involved in retaining the removal applications for decision by the Registrar, the relevance of the removal applications to the appeal and the significant point of law that this consideration entails, are factors which outweigh concerns raised by the Opponent’s objection.
In balancing the parties’ interests with that of the public interest in the efficient administration of justice and the integrity of the Register, I am of the opinion the removal applications should be referred.
Decision
For all the above reasons, I am of the opinion the removal applications made by the Applicant under s 92(1) of the Act for removal of the Opponent’s marks from the Register should be referred to the Federal Court under s 94 of the Act.
Mary-Ann Cooper
Hearing Officer
Delegate of the Registrar of Trade Marks
15 January 2021
6
0