Opposition by Dermavita Company (Limited Partnership) Parseghian & Partner to registration of trade mark applications 1780990 (3, 5) JUVEDERM (Figurative) and 1780999 (3) JUVEDERM (Fancy) in the name of Allergan...

This matter concerns an opposition by Dermavita Company (Limited Partnership) Parseghian & Partner to the registration of two trade mark applications, nos. 1780990 and 1780999, filed by Allergan Australia Pty Ltd. The applications sought to register the mark JUVEDERM in figurative and fancy forms, respectively, for goods and services in classes 3 and 5. The opposition was heard by Nicholas Smith, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the grounds of opposition raised by Dermavita Company were established. Specifically, the delegate considered the ground of opposition under section 62A of the *Trade Marks Act 1995* (Cth), which relates to conduct that is unscrupulous, underhanded, or unconscientious. Dermavita Company also sought to rely on a convention priority date based on a Norwegian trade mark application, but this claim had previously been rejected by a delegate in a related matter, and Dermavita Company did not present evidence or submissions to challenge that prior decision.

In reaching his decision, the delegate noted that the onus was on the Opponent to establish bad faith, a burden that is not easily met. The delegate found that Dermavita Company had failed to provide any evidence of reputation or use of the JUVEDERM mark in Australia. In contrast, there was considerable evidence of international use of the JUVEDERM mark in Australia by Allergan Australia Pty Ltd since 2008. Given the limited evidence supporting the section 62A ground and the Opponent's failure to discharge its onus, the delegate was not satisfied that Allergan Australia's decision to seek registration was made to take advantage of any reputation Dermavita Company might have had. Consequently, the delegate found that the ground of opposition under section 62A was not established.

The delegate ordered that trade mark applications nos. 1780990 and 1780999 may proceed to registration one month from the date of the decision, unless a notice of appeal was served on the Registrar, in which case registration would be deferred until the appeal was withdrawn or discontinued. The delegate also awarded costs to Allergan Australia Pty Ltd in respect of trade mark number 1780990, and reduced costs in respect of trade mark number 1780999, against Dermavita Company.