Opposition by Sandoz AG to registration of trade mark application number - [2025] ATMO 152

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Sandoz AG to registration of trade mark application number 2347045 (class 5) - ACC - in the name of Actor Pharmaceuticals Pty Ltd

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Ben Fitzpatrick of Counsel, instructed by Davies Collison Cave

Applicant: Andrew Fox Senior Counsel, instructed by Griffith Hack

Decision:

2025 ATMO 152

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 58, 60 and 62A pressed – none established – trade mark may proceed to registration.

Background

On 4 April 2023 (‘Relevant Date’) Florian Struengmann filed an application to register trade mark 2347045 under the Trade Marks Act 1995 (Cth),[1] details of which I extract below:
Priority date: 4 April 2023
Trade mark: ACC (‘Trade Mark’)
Specification: Class 5: Acids for pharmaceutical purposes; Acetates for pharmaceutical purposes; Bicarbonate of soda for pharmaceutical purposes; Effervescent pharmaceutical preparations; Effervescent dietetic preparations for pharmaceutical purposes; Effervescent analgesic pharmaceutical preparations; Pharmaceutical drugs; Pharmaceutical preparations for oral use; Pharmaceutical products; Pharmaceuticals (‘Applicant’s Goods’)
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The Trade Mark was examined under s 31 and acceptance was advertised on 5 September 2023.
On 27 September 2023, the Trade Mark was assigned from Florian Struengmann to Actor Pharmaceuticals Pty Ltd (‘Applicant’).
On 3 November 2023, Sandoz AG (‘Opponent’) filed its Notice of Intention to Oppose registration of the Trade Mark. On 4 December 2023, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). On 9 January 2024, the Applicant filed its Notice of Intention to Defend.
On 10 April 2024, the Opponent filed its Evidence in Support (‘EIS’) consisting of a joint declaration of Nicholas Foot, Head of Legal Brand Protection at Sandoz and Sebastian Trott, IP Counsel, Legal and Brand Protection at Sandoz, dated 9 April 2024 (‘Foot and Trott’) with Exhibits 1 to 95, including Confidential Exhibits 21 to 23, 34, 81 to 84, 87 to 89.
On 10 July 2024, the Applicant filed its Evidence in Answer (‘EIA’) consisting of a declaration of Florian Struengmann, dated 9 July 2024 with Annexures 1 to 16 (‘Struengmann’) and a declaration of Mark Jaggers, Chief Commercial Officer of the Applicant, dated 10 July 2024 (‘Jaggers’).
On 19 September 2024, the Opponent filed its Evidence in Reply (‘EIR’) consisting of a declaration of Nicholas Foot, dated 18 September 2024, with Exhibit NF1 (‘Foot’) and a declaration of Renee Taylor, OTC Product Manager of Sandoz Pty Limited (‘Sandoz Australia’), dated 19 September 2024, with Exhibits RT1 to RT26, including Confidential Exhibits RT2, RT5, RT15, RT18 and RT25 (‘Taylor’).
On 2 May 2025, Hearing Officer Timothy Brown heard the matter by teleconference. Ben Fitzpatrick of Counsel instructed by Davies, Collison Cave appeared for the Opponent. Andrew Fox Senior Counsel appeared on behalf of the Applicant, instructed by Griffith Hack. I have carefully reviewed the evidence, submissions and a recording of the hearing and I am now to decide the matter as a delegate of the Registrar of Trade Marks (‘Registrar’).

Evidence

EIS

The Opponent is part of the Sandoz group of companies, which deals in pharmaceuticals and medicines. The companies are held under Sandoz Group AG and includes Sandoz International GmBh, the Opponent, and Hexal AG (‘Hexal’).
Hexal was established in 1986 by Andreas and Thomas Struengmann and was held privately until 2005. Florian Struengmann is the son of Andreas Struengmann. Hexal is one of the largest providers of pharmaceuticals in Germany. The Sandoz group of companies were previously held by Novartis AG (‘Novartis’), which acquired Hexal on 7 July 2005 for over €4 Billion via a share purchase agreement (‘SPA’). A copy of the share purchase agreement is at Exhibit 20 to Foot and Trott.
The acquisition was a large undertaking which required consideration by the authorities at the European Commission. The deal proceeded and Hexal was acquired by Novartis.[2] By the SPA Hexal retained ownership of its intellectual property assets and Novartis became its parent company. The SPA also included sale of a company named Hexal Australia Pty Ltd (‘Hexal Australia’). Foot and Trott state that effectively Novartis became the ultimate owner of Hexal’s assets and Hexal was integrated into Sandoz’s company. In 2023 Sandoz was spun off from Novartis, leading to the creation of Sandoz Group AG.
[2] Foot and Trott, Exhibits 8 to 16.
Hexal’s products include one which is sold under the trade mark ACC being a cough suppressant (‘ACC Product’). The ACC Product appears to contain as a main component the mucolytic known as acetylcysteine. Foot and Trott state that despite being a party to the SPA and significant beneficiary thereof, Florian Struengmann did not seek consent or obtain permission from Hexal or the Opponent to apply for registration of the Trade Mark. The Opponent requested that Mr Struengmann voluntarily surrender or assign the application to register the Trade Mark to the Opponent. After this, Mr Struengmann assigned the Trade Mark to the Applicant. Mr Struengmann is the CEO and a director of the Applicant. The Applicant is an Australian pharmaceutical supplier of healthcare products. The Applicant is a local licensee and distributor of a product named Sinupret. The Sinupret product is said to be in direct competition with the kind of pharmaceuticals that the Opponent sells around the world, including the ACC Product.
Foot and Trott note that Mr Struengmann also filed an application for registration of the trade mark ‘tonies’ in class 28 (‘Tonies Application’). This application was assigned to a company named tonies GmBh. The tonies brand is said to be well known throughout the world with various registrations overseas. Foot and Trott state that this evidence shows a pattern of behaviour falling short of standards of reasonable and commercial behaviour.
Foot and Trott declares that since the SPA, Hexal has continued to use the Trade Mark around the world for a cough suppressant and now has distributors in 51 countries, including pharmacies and online pharmacies. Screen captures of the websites of online pharmacies in various overseas countries are extracted at Exhibits 38 to 75. There are also examples of advertising campaigns on YouTube at Exhibit 76. All of this material appears to be directed to countries other than Australia.
Foot and Trott provide information about the Opponent’s business in Australia. Relevantly, Hexal Australia was registered on 25 July 1995 and thereafter was deregistered on 9 January 2013. Hexal is said to have previously registered the plain word trade mark ‘ACC’ in Australia by trade mark number 780642 in class 5 for ‘pharmaceuticals for use as therapy for medical conditions namely acute and chronic bronchopulmonary diseases, chronic bronchitis, emphysema, asthmatic bronchitis, cystic fibrosis, sinusitis and otitis media’. This was filed on 11 December 1998 in the name of Hexal Aktiengesellschaft. Foot and Trott state there was a business decision not to renew this trade mark in 2008. On 12 August 1999 Hexal also filed trade mark application 803357 in class 5 ‘pharmaceuticals’ for ‘ACC Hexal’ which was registered in the name of Hexal Aktiengesellschaft. This trade mark was not renewed by the due date of 12 August 2009.
On 3 July 2023, the Opponent filed Australian trade mark application number 2368779 for ACC in class 5 in the name of the Hexal AG. Foot and Trott state that given the success of products sold under the ACC trade mark worldwide by the Opponent, it intends to launch its own product in 2025 and ‘despite not yet selling the ACC product into the Australian market, our Company has a significant reputation associated with the ACC Products and ACC trade mark in Australia’.[3] They state this is because of the significant number of Germans and South Africans living in Australia, countries where there is allegedly a significant reputation. Foot and Trott point to requests from people living in Australia enquiring about where they can buy products sold overseas by the Opponent under the ACC trade mark at Confidential Exhibits 81 to 84.
[3] Foot and Trott, [100].
Company records showing the revenue generated from the ‘sale of ACC products featuring the ACC trade mark and the countries in which’ they have been sold for the period of 2010 to 2023 appear at Confidential Exhibit 87 to Foot and Trott. The 2023 amounts appear at Confidential Exhibit 88. All of these are significant amounts. Marketing expenditure to advertise ACC Products which feature the ACC trade mark in Germany, Mexico, Poland, Romania, Russia and South African over the last five years appear at Confidential Exhibit 89. These are also significant amounts.
Foot and Trott also direct me to the numerous overseas registrations held by Hexal around the world for trade marks containing the word ACC in respect of class 5 goods. Other registrations held by Sandoz AG are also mentioned. A summary of those held appears at Exhibit 90 to 95.

EIA

Struengmann declares that since childhood he had breathing issues and in response to these difficulties his family developed the ACC product which was the first mucolytic agent available in Germany. He declares that this medicine was extremely effective in relieving the condition and helping him breathe more freely. Mr Struengmann declares that the Struengmann family are extremely proud of the success of the products sold under ACC and the history attached to it and that he has a personal attachment to the Trade Mark and such products.
In answer to Foot and Trott where it is stated that the decision to not renew was a business decision, Struengmann references Annexure 8. Annexure 8 is a copy of an email chain dated in November 2022 which shows that after inquiries from Mr Struengmann and a reply from Clemens von Oswald, CEO of Sandoz Australia in 1996, which states, ‘regarding ACC, we tried to approve ACC in the early stages of Hexal Australia, but the problem was that there was no originator at the time there were simply not enough of them, so the application for approval was rejected. That’s why it never came to market’.
Struengmann declares that he questions whether Sandoz had a genuine intention to use the Trade Mark at the time a later application was filed on 3 July 2023. Struengmann further states that, ‘it became clear to me that Sandoz had long since abandoned any plans or intention to pursue the ACC Product and associated trade marks in Australia and I grew concerned that the Australian public would not have access to the consumer healthcare product that saved my life’.[4] Because of these concerns and noting that the non-compete clause in the SPA ended in February 2008, Mr Struengmann decided to bring the products to Australia himself. Struengmann declares that ‘there was no obligation to seek consent or obtain permission from Hexal or Sandoz to apply to register the Trade Mark.[5]
[4] Struengmann, [24].
[5] Struengmann, [37].
Struengmann declares that on 10 November 2022, due diligence processes were commenced, including checking the Australian Register of Trade Marks (‘Register’). Following this, he states that he made the decision to pursue commercialisation and filed the application (‘Application’). Mr Struengmann expressly acknowledges that he knew the product name ACC because of his own personal history with the Trade Mark. He states that because of this personal connection he filed the Application in his personal name with the intention to license it to the Applicant. After this date, his intentions appear to have changed and he arranged an assignment to the Applicant.
Regarding Foot and Trot where they allege the Tonies Application demonstrates questionable behaviour, Struengmann declares, ‘a close working relationship with [Boxine GmbH, who is the parent company of tonies GmbH] and my family members have invested through [the Applicant’s holding company] … including Marcus Stahl, who is the founder and CEO of tonies’. At Annexure 12 is a copy of an email dated 24 September 2024 from Marcus Stahl, evidencing a positive relationship between Mr Struengmann and tonies. Additionally, at Annexure 13 is a copy of an email from Christoph Frehsee, the President of Tonies USA, dated 16 December 2023. At Annexure 16 is a joint letter from Dr Jan Middlhoff, CFO of tonies and Dr Phillip Strom, Group General Counsel & Chief Compliance Officer of tonies (‘Tonies Letter’).
Jaggers states that the declarant was the Financial Controller at Hexal Australia from 1997. Following the SPA, he was employed as a senior executive in Sandoz Australia, until he accepted overseas positions in Sandoz companies from 2006. The declarant ceased work with Sandoz in 2011. Jaggers relevantly states that, ‘I recall that Hexal Australia enquired with the [TGA] about registering the acetylcysteine product, but the feedback provided by the TGA was that it was not submissible without a clinical data package. At the time there was no clinical data package available for this product, so Hexal Australia intentionally dropped the acetylcysteine product which would have been branded under the ACC Trade Mark for the Australian market’.[6]
[6] Jaggers, [10].

EIR

Foot seeks to reply to statements made in Struengmann and Jaggers. Firstly, Foot rejects the statement that Mr Struengmann was free to commence use of the ACC trade mark after the non-compete clause in the SPA ended. Statements are also made about how I should interpret the non-compete clause in the SPA.
Foot declares that the assignment of the Application to the Applicant, which was already incorporated at the date of the filing of the Application appears to be a deliberate attempt to circumvent Struengmann’s contractual obligations.
Foot also rejects Struengmann’s assertion that Sandoz abandoned the ACC trade mark in Australia and points to an expansion of the global footprint since the acquisition of Hexal in 2005. Foot states that the timing of entry into markets is determined by a range of factors include the regulatory requirements and allocation of funding. For Australia it was necessary for Sandoz to first obtain approval from the Australian Therapeutic Goods Administration (‘TGA’). Foot declares that the ‘TGA approval is complex and, by international standards, quite stringent’.[7]
[7] Foot, [16].
Foot addresses the ‘business decision’ to allow 780642 and 803357 to lapse by stating this decision was made at a local level without input from Sandoz’s ‘Global Legal Brand Protection’ team (‘LBP’). Foot then states the current policy is that a local decision to allow a trade mark to not be renewed will be overridden if Sandoz believes that it is strategically important. Foot states that had the LBP been consulted the lapse decision would have been overridden, given the wide global footprint. Foot declares that ‘ not renewing the [780642 and 803357] in 2008/2009 did not amount to an intention by Sandoz to abandon the ACC mark in Australia’. Foot also states that the decision to put the ACC product on hold for the Australian market and not to renew was made during a period of time in which Sandoz had to make difficult decisions and prioritise certain products in Australia based on its limited budget.[8] Foot declares that there was ‘never an intention to abandon its commercial interest in launching the ACC product in the Australian market’.
[8] Foot, [18].
Taylor contains various statements about the continued interest of the Opponent in the Trade Mark and its pre-launch activities. Taylor also makes various statements which seek to refute those made in the declarations in the EIA.
Exhibits RT-1 to RT-26 to Taylor concern the activities of Sandoz Pty Ltd, including many dated before the Relevant Date. These include communications with persons in what appears to be a Sandoz related entity in South Africa, asking them about their experience in marketing the medicine, various redacted internal emails from Sandoz Pty Ltd, with the TGA and with external consultants. I refer to these further throughout these reasons where relevant.

Grounds and onus

The Opponent has the onus of establishing at least one of the nominated grounds of opposition.[9] The standard of proof is the ordinary civil standard of the balance of probabilities.[10]
[9] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[10] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) (‘Telstra’).
The SGP nominates grounds of opposition under ss 42(b), 43, 58, 59, 60 and 62A. The grounds of opposition under ss 43 and 59 were not pressed at the hearing or in the submissions and I considered them abandoned for the purposes of the opposition.
The date for the rights of the parties to be determined is the Relevant Date.

Consideration

Section 58

Section 58 provides:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
The term ‘owner’ is not defined in the Act. However, it is well established that the owner of a trade mark is the person who first uses it in Australia, or first files an application for registration of it in Australia, whichever is the earlier. This position can of course be altered by way of contractual agreements where a person has agreed to the transfer of rights to another person.
The Opponent submits that there are two avenues for establishing ownership of a trade mark under the statutory regime; these are:

(a)by earliest use of the trade mark in relation goods or services which are the same kind of thing as those the subject of an application for registration a trade mark; and
(b)the act of filing the application with a relevant intention to use the trade mark.

In asserting that a person other than the applicant is the owner of the Trade Mark the Opponent in its SGP states:
(a) the applicant for the trade mark at the Relevant Date was Florian Struengmann who subsequently assigned the Application to the Applicant. Consequently, the Applicant as at the Relevant Date was not the true owner of the Trade Mark; and
(b) by virtue of Hexal’s use of the Trade Mark in relation to the Goods prior to the Relevant, neither Actor nor Florian Struengmann is the owner of The Trade Mark.
Justice McTiernan J in Shell Co of Australia Ltd v Rohm and Haas (‘Shell’) explained:
the lodging of the application for the registration of [the trade mark] gave [the applicant] an inchoate title to that trade mark and an inchoate right to its exclusive use; the title and the right would cease if registration were refused, but if granted the title and the right would be confirmed and endure for the term of the registration. ... For a very long time it has been a fundamental principle of the legislation providing for the registration of trade marks that the lodging of an application for registration gives to the applicant certain rights in respect of the user of the trade mark of which registration is sought.[11]
[11] [1948] HCA 27, [17].
Also, in Shell Dixon J stated:
The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration.[12]
[12] Ibid [7].
In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd the Full Court of the Federal Court stated:
In either case, be it ownership by authorship and prior use or ownership by the combination of authorship, the filing of the application and an intention to use, the scheme of the legislation under both the 1995 Act and its predecessors, the Trade Marks Act 1905 (Cth) (the 1905 Act) and the Trade Marks Act 1955 (Cth) (the 1955 Act) provide for “registration of ownership not ownership by registration” (PB Foods v Malanda Dairyfoods Ltd [1999] FCA 1602; (1999) 47 IPR 47 at [78] – [80] per Carr J cited in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 at [170]).
In [Shell] at 624, a case under the 1905 Act which did not contain a definition of “applicant”, Dixon J referred to the:
well-settled general principle that the title of a mark to registration is to be determined on the state of facts existing when the application is lodged. [13]
[13] [2017] FCAFC 83, [19]-[20] (Greenwood, Jagot and Beach JJ).

The Opponent states that it acquired ownership by way of authorship and an intention to use the Trade Mark combined with the statutory action of Hexal filing the application for the trade mark. This acquisition took place by the SPA.
The Opponent also submits that ownership arises from the use of the Trade Mark which occurred in 2021 and 2023 and which occurred before the Relevant Date. The Opponent also anticipates and responds to an argument by the Applicant that it had abandoned the Trade Mark, a submission which I discuss later.
To establish ownership of the Trade Mark by use, the Opponent must show all of the following:
- a person other than the Applicant used the Trade Mark, or a trade mark with additions or alterations which do not substantially affect the identity of the Trade Mark,[14] in the course of trade in Australia; and
- the use was before the filing date of the Trade Mark, or before use of the Trade Mark by the Applicant, whichever is the earlier; and
- the use was in relation to the Applicant’s Goods or in relation to goods considered to be the same kind of thing as the Applicant’s Goods.[15]
The expression ‘use’ is not limited to the use of a tangible object and the phrase ‘in the course of trade mark’ is wide enough to cover steps necessary for the production of goods as well as the actual placement of goods on the market.[16] The parties also refer me to various decisions concerning the preparatory versus preliminary use of trade marks. This dichotomy of use of trade marks arises out of the decisions, especially since the decision of Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd.[17] The Opponent also refers me to Trade Mark Examiners’ Manual of Practice and Procedure at Part 19A.3, which concerns the activities which might constitute the use of a trade mark. In Rakman International Pty Limited v Boss Fire & Safety Pty Ltd Yates J commented that the facts in past decisions are helpful to understand the contexts which might involve use, though each case will require its own evaluative judgment.[18] The Opponent submits that the time and money devoted since 2021 is on the right side of the line for an inference to be drawn about that there has been use of the Trade Mark by a person other than the Applicant. The Opponent relies especially on the Exhibits to Taylor in seeking to demonstrate use of the Trade Mark.
[16] NSW Dairy Corp v Murray Goulbourn Co-operative Co Ltd (1989) IPR 26, 44 (Gummow J).
[17] (1987) 10 IPR 402 (McGarvie J).
[18] [2022] FCA 464, [537].
I note that there is a pattern shown in the evidence that starting in 2021, the Opponent appeared to be considering the sale in Australia of a pharmaceutical product equivalent to the ACC Product sold in other countries. This involved increasing allocation of budget for the regulatory approval activities in for example on 24 February 2023 at Confidential Exhibit RT18. An email dated 2 February 2023 concerns fees in relation to registration of ‘Acetylcysteine EFT’ and other things redacted. This is said to include consulting fees, TGA and other redacted fees. The next step for Sandoz was said to be to ‘review the fees and the business case for launching ACC products’. A meeting was apparently scheduled later for February. Confidential Exhibit RT18 includes an email from Renee Taylor to an unnamed person which notes additional funding to be allocated to an unnamed provider and that ‘we have however been given the challenge to see if based on this investment how quickly [redacted] can have the submissions ready. We would like to submit ASAP and [redacted].’ The Senior Regulatory Affairs Associate at Sandoz replied the same day stating that ‘[w]e have approved [redacted] and have requested for this project to be expedited from their end. We will learn more on timelines next week.’ Taylor states that, on 24 February 2023, ‘I sent an email to the Regulatory Affairs Associate of Sandoz Australia advising that there was approval to increase the spend for the external consultant engaged to assist with regulatory approval’.
The Applicant submits that the high level of redactions in the documents in the Exhibits to Taylor means that I should give that material little weight. I acknowledge that various activities suggest some momentum towards the development, approval and eventual launch of a product of some kind. The Opponent has allocated a moderate amount to the regulatory data and double that to the development and launch of the final product. The Opponent says that this evidence together amounts to much more than compiling a business case for launch of a product. However, a challenge for the Opponent’s evidence is that the language in communications before the Relevant Date reflects at its highest a decision to produce and review business cases, conduct a gap analysis, obtain consultancy from persons about health issues in Australian consumers and obtain preliminary consulting on TGA approvals for a pharmaceutical product. The emails for example concern ‘attached initial presentation’,[19] a ‘… cost proposal from [unnamed] for registration of Acetylcysteine Effervescent Tablets in Australia and New Zealand’,[20] and note that Sandoz had ‘approached 3 consultants… to provide quotes to assist with registration of the following ACC products…’ by 21 September 2022.[21]
[19] Exhibit RT3 (my emphasis).
[20] Exhibit RT4.
[21] Confidential Exhibit RT5.
The particular goods and the industry for those goods must be a factor in determining what is preliminary or preparatory use of a trade mark. It is well acknowledged that the development and marketing of pharmaceutical products can involve a great length of time, especially in terms of regulatory approvals.[22] A person is not able to market or sell pharmaceutical products in Australia without first obtaining TGA approval. The outcomes in decisions concerning TGA approvals and use of a trade mark, have depended on the particular circumstances and evidence. In Sterling Winthrop Pty Ltd v Herron Pharmaceuticals Pty Ltd where an owner had demonstrated successful TGA registration within the relevant period of non-use, a delegate of the Registrar held that registration under the TGA legislation was ‘a mandatory preparation for marketing pharmaceutical preparations and … must constitute use for the purposes’ of defence to an action for removal for non-use.[23] The delegate also noted that, ‘it would clearly be untenable to argue that while a [TGA] application will not establish proprietorship rights in a trade mark, the trade mark legislation cannot function to protect trade mark rights while the subject goods are under application with the [TGA]’.[24] In Eremad Pty Ltd v Portola Pharmaceuticals Inc the delegate of the Registrar concluded that while the correspondence with the TGA might reflect ongoing activity by the opponent in relation to goods proposed to be sold under the Trade Mark, it might also be open to other interpretations. The delegate focussed on the onus and added that if there had been such ongoing activity, the onus was on the removal opponent to establish this and there was no corroborated evidence of such.[25]
[22] Foot, [16]; Taylor 2, [11] and [17]-[18]. See also, Intellectual Property Laws Amendment Act 1998 (Cth) (‘Amendments Act’) which amended the Patents Act 1990 (Cth) to provide ss 70 to 77 allowing for an extension of term for pharmaceutical patents. The scheme allows patentees to apply for an extension of term of up to 5 years for a standard patent that claims a pharmaceutical substance. See also, the Explanatory Memorandum to the Amendments Act, [2].
[23] [1994] ATMO 65 (Hearing Officer Hardie).
[24] Ibid.
[25] [2018] ATMO 165, [22] (Hearing Officer Thompson).
One problem with the Opponent’s evidence regarding TGA activities is that all of the activities documented are either so redacted that I cannot ascertain their nature and extent or they appear at best preliminary in nature. As at the Relevant Date, the Opponent had not filed anything of significance with the TGA and even so was only preparing a ‘pre-submission’.[26] Another difficulty with reliance on the TGA approval activities is that the TGA process to the extent it is relevant here, appears directed at the approvals for pharmaceutical compounds; in this case apparently one involving acetylcysteine, and not the Trade Mark itself. The Opponent has provided much evidence of funding allocation which is not necessarily always actual expenditure. In many instances, the evidence only goes as far as showing that the Opponent has been considering matters such as the business case and market definition in Australia. There is otherwise no evidence or examples of any proposed packaging even of an early nature to accompany the alleged TGA activities. There is little in the way of a branding strategy or proposed marketing materials which would even suggest that the Trade Mark was resolved as being the same trade mark to be used for the goods containing acetylcysteine other than the project name for the matter as a business proposal and because the Trade Mark has been used overseas. I also characterise most if not all of the events and activities that appear in evidence leading up to the Relevant Date to be of a highly internal nature. There is not one instance of anything close to public use of the Trade Mark by a person other that the Applicant in Australia before the Relevant Date. It is also telling that the incomplete and highly redacted evidence filed in reply in Taylor and seeking to establish ownership by use, is the type of thing which should likely appear in the EIS rather than in response to an abandonment argument.
[26] Exhibit RT19.
My assessment is that at the time of filing applications 780642 and 803357, Hexal likely had an intention to use those trade marks. Trade mark 780642 is identical to the Trade Mark. Accordingly, as at the filing of 780642 on 11 December 1998, I am satisfied that Hexal was the owner of the Trade Mark. However, for the reasons above I do not consider ownership of the Trade Mark, as at the Relevant Date, to arise by the activities of the Opponent or its related entities in the period of 2021 to 2023 leading up to the Relevant Date. Nor does the ownership arise by the combination of those activities occurring in 2021 to 2023 with the filing activities concerning 780642 and 803357. The evidence does not establish any instance of the use of the Trade Mark in the course of trade by Hexal, the Opponent or an authorised user, such as another related entity in the Sandoz group of companies, in the period from 1998/1999 until the Relevant Date.
The Opponent submits that if I am satisfied that ownership of the Trade Mark was acquired via the SPA and the act of Hexal filing applications 780642 and 803357, accompanied by an intention to use, the onus should then be on the Applicant to demonstrate that there is abandonment of the rights. It submits that there are four factors relevant to the lack of a intention to abandon the rights: (1) Sandoz acquired the trade marks; (2) the difficulties of TGA and other regulatory contexts; (3) the extensive use and promotion of the Trade Mark around the word, including in 51 countries and the growth subsequent to the conclusion of the SPA; and (4) the significant investment in time and money in preparation of the launch of a product, since 2021 leading up to the Relevant Date. The Opponent submits that the controllers of Hexal rather than intending to abandon the trade mark, decided to seek later regulatory approval when circumstances had changed and notes that more than mere non-use is required to establish abandonment.
The Applicant acknowledges that abandonment, to the extent that it may be relevant to deciding this matter, requires a subjective intention to abandon trade mark rights and notes that in practice whether a trade mark owner formed an intention to abandon its trade mark is determined by inferences that may be drawn from the evidence before the decision maker.[27] The Applicant refers me to Notaras v Barcelona Pty Limited (‘Notaras’) where Robertson J noted the case was ‘not of slightness of use’, then drawing an inference of an intention to abandon the trade mark in the context of a lack of use of a trade mark for decades.[28] The Applicant submits that the doctrine of abandonment is purely a common law doctrine and that it is only relevant to situations where there has been use of a trade mark. Therefore, the Act deals with rights arising solely by the Act separately to the common law doctrine of abandonment, through non-use actions and the ongoing payment of renewal fees. By this approach the ownership of rights arising from the filing of applications combined with the intention to use the trade marks may simply cease by mere failure to renew or otherwise use those trade marks.
[27] Applicant’s Written Submissions, [31].
[28] [2019] FCA 4, [312].
In Britax Child-Care Products Pty Ltd v Takata Corporation the opponent to registration of a trade mark under s 58 argued that it remained the proprietor of a trade mark which had been removed for non-use. The delegate observed that once a trade mark registration was removed there was no longer an impediment to a subsequent applicant’s claim to registration and did not accept the argument that there was an underlying proprietorship. The mere registration did not make the opponent the owner for the purposes of the opposition.[29] I cannot ignore that whatever temporary rights arose before the Relevant Date, they did so solely based on the filing of applications with an intention to use. Thereafter, there appears to have been an intentional non-renewal of the registrations. Therefore, I do not consider a person other than the Applicant to have been the owner of the Trade Mark by the avenue of the filing of an application combined with an intention to use as at the Relevant Date.
[29] [1999] ATMO 8 (Hearing Officer T Williams). Delegates have encountered Similar circumstances and submissions in The Sunraysia Natural Beverage Company Pty Ltd v Ocean Spray Cranberries, Inc [1996] ATMO 53, [48] (Hearing Officer T Williams); Americana International Limited v Suyen Corporation [2009] ATMO 86 (Hearing Officer Irgang); and David Craig & Cathy Lin v David Traeger [2021] ATMO 33, [13] (Hearing Officer K Brown).
Whilst a core area of the Opponent’s submissions was abandonment, I note that abandonment arguably only arises as a relevant issue, as submitted by the Applicant, where there are rights stemming from the use of a trade mark in the course of trade. Here there has never been any use of the Trade Mark. There appears on the evidence to have been a conscious decision made to not renew the trade marks by the local persons responsible for business decisions regarding 780642 and 803357. Unlike Notaras where there had been some use of the trade mark followed by a hiatus, here there has been nothing close to use before 2023 by any person. The allowing of the lapsing of 780642 and 803357 is not here cured by the much later activities of what is also a different entity to Hexal. Even if I draw what might be termed a commonsense link between Hexal and other relevant entities, such as the Opponent and its related entities, amounting to relevant control, my assessment would be that before 2021 any other person who had rights extant from the SPA had since abandoned the Trade Mark. Even in the face of the continued overseas use I cannot ignore such a long period and little contextualised of inaction for Australia. Whilst Taylor attempts to explain the failure to pay the renewal fees for 780642 and 803357 by stating that a ‘business decision’ was made not to pursue the sale of ACC products in Australia because of a lack of clinical data to support an application for TGA approval, these are general and uncorroborated statements. There is little explanation or elaboration of, for example, why or how the conditions for TGA registration had changed from 1998 to 2005 and 2021 to 2023. Furthermore, if there was a continued intention to hold the trade marks for later use, such difficulties do not explain the failure to renew 780642 and 803357 which arguably would have been a potent and cost effective manner in which an owner could manifest its intention to use the Trade Mark, as opposed to abandonment, whilst not being in a position to make use of it by sale or marketing of goods because of, for example, TGA requirements.
For these reasons, I am not satisfied that a person other than the Applicant was the owner of the Trade Mark at the Relevant Date.
Accordingly, the ground of opposition under s 58 has not been established.

Section 60

The Opponent also relies upon s 60, which provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.B
A relevant ‘reputation’ for the purposes of s 60 must be established on the evidence.[30] It is for the Opponent to establish that a reputation exists as a matter of fact.[31] The word ‘reputation’ here means ‘the recognition of the [trade mark] by the public generally’.[32] The Opponent may demonstrate such a reputation by a variety of means, including quantum of sales or advertising and promotional activities.[33] Advertisements or other appearances of the other trade mark on television, radio or in magazines and newspapers may also be relevant. The required reputation is most often inferred from a high volume of sales, together with substantial advertising expenditures and other promotions.[34] Direct evidence of any consumer appreciation of a mark, which is often harder to produce, is another avenue for showing that a reputation exists.[35]
[30] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘ConAgra’).
[31] Ibid. See also, Sara Lee Corp v Bali Blue Pty Ltd [2003] ATMO 81 (Hearing Officer Skivington).
[32] McCormick & Company Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[33] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
[34] McCormick (n 32) [80].
[35] Ibid.
The Opponent in part relies on what is sometimes termed spillover reputation, including by way of the diaspora of persons from Germany and South Africa living in and travelling to Australia. This kind of argument was made in Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods where Kennet J accepted that the opponent to registration of a trade mark had a significant presence in India and a sizeable global business, though sales in Australia were small. Justice Kennet stated:
… it is possible for a trade mark to acquire a reputation in Australia as a result of business activity outside Australia (eg ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 334 (Lockhart J)). Thus, it was submitted by Aachi that members of what was termed the “Indian diaspora” in Australia (which comprises a significant number of people) were likely to be aware of the Aachi mark and its connection with a wide range of foods through their travel to or time living in India, interaction with relatives and Indian television stations that are available on the internet. However, this did not go beyond speculation; there is no evidence that allows an assessment of the extent of such exposure (let alone the extent to which the Aachi mark penetrated the consciousness of people of Indian heritage in Australia at the relevant time). Mr Isaac’s description of his business in terms such as “world-leading”, “one of the leading manufacturers and marketers of spices”, having “enormous goodwill” and “a common household name for consumers of Indian food and beverage products” cannot be given much if any weight, partly because of his very limited credibility, and partly because such descriptions are not meaningful in the absence of objective standards of measurement. At best they represent the way he sees his business. India, notoriously, is a large country with a very large population and a variety of regional cultures. It is not safe to assume that any individual brand of foodstuffs (even one associated with a relatively large business) would lodge in the memory of any significant proportion of people who have emigrated from India, visitors to India or consumers of Indian media.[36]
[36] [2023] FCA 487, [27].

Mr Fox for the Applicant also referred me to Bavaria NV v Bayerischer Brauerbund eV where Bennet J addressed an argument that a reputation in immigrants from Europe should be taken account of concerning beer in the following manner:
The evidence concerning tourism and travel does not, of itself, establish recognition by consumers in Australia of the association of “Bavaria” with beer, either by oral reference or by reference to a trade mark. The evidence does no more that form a basis from which, without more, BBA seeks to draw conclusions that Australians read such tourist guides and that those who read them or who were born in Europe or have visited Bavaria become aware of Bavaria’s reputation for beer and remember that fact so that, when they see the trade mark containing the word BAVARIA, they conclude that the beer sold under the trade mark is from Bavaria. While the tourist guides may have some relevance, neither they nor the other material on population movements, alone or together, form a sufficient basis from which to draw the conclusions that BBA seeks to draw as to the connotation that would be drawn from the trade mark by the Australian consumer (ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 346–350 per Lockhart J).[37]
[37] [2009] FCA 428, [91].
I do not accept that without more there to be a reputation in the Opponent’s mark for the purposes of s 60. In ConAgra Inc v McCain Foods (Aust) Pty Ltd Lockhart J described travel statistics as ‘a rather flimsy twig’ with which to support a case for spill-over reputation in Australia.[38] The Opponent also has failed to explain how a person would think that seeing the Trade Mark in use in Australia they would be confused or deceived into thinking that there is a connection in the course of trade mark with the goods of the Opponent or its related entities. The Opponent has not used the Trade Mark or a substantially identical trade mark in Australia. Whilst there are few enquiries made to the Opponent at Exhibits to Taylor which demonstrate that persons located in Australia have asked the Opponent about products under the ACC trade mark, I am not across the full circumstances of these enquiries and these appear to be isolated events.
[38] ConAgra (n 30) [139].
I am not satisfied that there is a relevant reputation in another trade mark in Australia. Therefore, the requirements of s 60(a) are not met by the evidence.
Accordingly, the ground of opposition under s 60 has not been established.

Section 42(b)

Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of the Trade Mark would not could be contrary to law.[39]
[39] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
The SGP and Opponent’s submissions identifies misleading and deceptive conduct mentioned in the Australian Consumer Law, which is contained in Schedule 2 to the Competition and Consumer Act 2010 (Cth) as basing the ground of opposition under s 42(b).
The Opponent submits that the central statutory question is whether a not insignificant amount of persons would be mislead or lead into error. The Opponent stresses that there is a public safety issue with health consequences if a person is confused given these are pharmaceutical goods. The Opponent again refers to evidence of a significant number of persons who have immigrated to Australia from Germany and South Africa, amounting to roughly 340,000 persons. There are enquiries by persons from South Africa who have asked about the availability of the product in Australia. The Opponent says that this is a basis for a finding that the use of the Trade Mark by the Applicant would be likely to lead people into error when seeing the product in a pharmacy or otherwise. Such people are said to be likely to think that these products are made by the same entity and trade source. The Opponent refers me to the decision of Beach J in Societe Civile et Agricole du Vieux Chateau Certan v Kreglinger (Australia) Pty Ltd discussing the notion of ‘not insignificant persons’.[40]
[40] [2024] FCA 248, [241].
I note my findings in relation to s 60. I observe that it would also likely follow that on the stricter test posited by the ACL, compared to s 60, I am not satisfied that use of the Trade Mark is likely to mislead or deceive under s 18, or amount to a false or misleading impression, for example under s 29 of the ACL. Without more I am not satisfied that a relevant section of the consuming public would likely be led into error in the manner proscribed by ss 18 or 29 of the ACL. For similar reasons, I am also not satisfied that the law of passing off would also not likely be contravened by the use of the Trade Mark. For these reasons the Opponent has not established that use of the Trade Mark would be contrary to law.
Accordingly, the ground of opposition under s 42(b) has not been established.

Section 62A

Section 62A provides that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. In considering this ground, I must determine whether, ‘in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards’.[41] This question is determined as at the Relevant Date.
[41] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [167] (Dodds-Streeton J) (‘Fry Consulting’).
In DC Comics v Cheqout Pty Ltd (‘DC Comics’), Bennett J noted that:
Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.[42]
[42] [2013] FCA 478, [62] (‘DC Comics’).
In DC Comics Bennet J also summarised past decisions and framed the relevant question as being, ‘whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards’. I especially also note the comments that it ‘is difficult to see how a person who applies to register, in his own name, a mark he has previously recognised as the property of a potential overseas principal can be said to be acting in accordance with acceptable standards of commercial behaviour’.[43] In making similar remarks, Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) referred to a decision of the United Kingdom Intellectual Property Office where an applicant had been a customer of the opponent and subsequently adopted a sign as their own trade mark and he used it in the United Kingdom. When he was challenged, the person sought to register the mark in combination with their own name. The decision maker found there was bad faith whilst prepared to accept that at the relevant date the opponent had some goodwill in the UK, despite the applicant being one of the only customers of the opponent.[44]
[43] Ibid.
[44] [2012] FCA 81 [151] (Dodds-Streeton J), referring to William Leith New Century Marquees (SRISO/018/00, UK Registry).
Both parties acknowledge that the factual scenario in this dispute is unusual. The Opponent submits the elements of this ground start with the sale of Hexal and its subsidiaries in the SPA and given the extensive use and reputation the trade mark ACC overseas, the Applicant ought to have known it should not have sought registration of the Trade Mark. The Opponent submits, and I agree, that it was clear that Mr Struegnmann was a significant financial beneficiary of the SPA. I also agree Mr Struengmann was likely aware of the Opponent’s use of ACC overseas and the existence of at one time registered trade marks 780642 and 803357. However, mere awareness of other trade marks does not mean that its conduct in filing the Application necessarily falls short of acceptable commercial standards.[45] There also appears to be added nuance here and knowledge of additional matters by Mr Struengmann at the time of filing the Application.
[45] Fry Consulting (n 41) [145]; DC Comics (n 42) [77]
I note the comments of Bennet J in DC Comics regarding the possible impugnment of the actions of persons who have acknowledged the property rights in a trade mark of another person and yet filed an application for such trade mark. However, I cannot ignore that those rights are brought about by the operation of the Act. Here, Mr Struengmann’s acknowledgement of the rights of a person other than the Applicant or himself, occurred at the conclusion of the SPA, almost 20 years before the Relevant Date. The specific terms of an agreement such as the SPA must be examined as well as the potential intersecting operation of the law of trade marks regarding any continuing and ongoing rights. The understanding of these matters may also be relevant. I note that Mr Struengmann filed the Application well after the non-compete clause in the SPA become inoperative. A reasonable and experienced trader would also expect the law of trade marks to play some role in the continuation of any relevant rights that were acknowledged by an agreement such as the SPA.
Mr Struengmann conducted due diligence by at least performing searches of the Register and noted that there were no earlier trade marks on the Register. I am also satisfied that he had observed there to have been no use of the Trade Mark in the Australian marketplace and possibly considered that any rights had been abandoned. It appears that Mr Struengmann’s own overriding assessment at the Relevant Date was that because there had been no apparent use for many years or at all, other traders were at the Relevant Date able to adopt the Trade Mark. On the evidence there appears to have been an overriding subjective belief that the Trade Mark had been abandoned as at the Relevant Date. This is not an unreasonable or legally contrived assessment, even considering his knowledge of 780642 and 80335, the SPA, the Opponent’s overseas operations and probable knowledge generally of the TGA requirements. The Opponent does not discharge its onus otherwise in this respect regarding the likely knowledge of Mr Struengmann. A trader should be able to rely on the searches of the Register and an observed extended lack of use of a trade mark in Australia by any other person as a way to clear their own ability to adopt and use a trade mark. I do not consider that a reasonable person in the position of Mr Struengmann would necessarily feel compelled to make direct inquiries with the Opponent or its related entities. A reasonable and experienced person in his position would not consider the filing of the Application in the context of such an extended period of non-use and non-renewal to be necessarily commercially underhanded.
There was some emphasis in the Opponent’s submissions on the alleged reputation in the ACC Product. Some decisions with findings of bad faith have involved circumstances where traders have sought to rely on a reputation as a springboard and so filed an application.[46] In the context of the reputation in ACC in other jurisdictions, the Opponent submits that Mr Struengmann and the Applicant seek to ride off a reputation and that Mr Struengmann’s own declaration admits this. The Opponent refers me to the statement in Struengmann that, ‘I decided to bring the ACC product to Australia myself’. The Opponent says that the ACC product is the same thing that the Struengmann family sold to Novartis by the SPA and is the same product that he says saved his life.
[46] For example, Maslyukov v Diageo Distilling Ltd [2010] RPC 21, [123] (Arnold J).
For there to be reliance on a springboard, there needs to be a reputation or good will in Australia. I note my findings as to reputation under s 60. The Opponent does not establish, for example, good will or a reputation in Australia upon which Mr Struengmann was relying, when filing the Application. Whilst the Opponent’s business overseas has strength in respect of goods sold under the ACC trade mark, I do not view the conduct of Mr Struengmann as being that of a person seeking to rely as a springboard. Mr Struengmann appears to be concerned with the offering of a product equivalent to that of the ACC Product.
The Opponent adds that the non-compete clause in the SPA is of little relevance and the Applicant’s explanation that the non-compete clause did not operate at the time of the Application does not assist the Applicant. I accept that the non-compete clause does not interfere with rights that might arise under the law of trade marks. Whilst Mr Struengmann was able to compete after the expiry of the period stipulated in the non-compete clause, his actions, including the filing of the Application, must still comply with the law of trade marks. I otherwise confirm that the SPA does not of itself contain contractual obligations, such as those concerning the disposal of Hexal and thereby its tangible and non-tangible assets for valuable consideration, which would necessarily make it improper for the Opponent to file the Application. I have also noted that the parties to the SPA and the Sandoz group of companies are highly sophisticated operators.
The Opponent also suggests that the assignment of the Trade Mark to the Applicant assists the ground under s 62A. I do not agree that the events around assignment of the Application to the Applicant add much to the ground of bad faith. I have noted the fact that the Applicant is a company of which Mr Struengmann is a director and that it has had a licensing relationship with overseas competitors of the Opponent for products with similar purposes to those of the ACC Product. I do not doubt Mr Struengmann’s explanation of these events concerning the licensing to the Applicant and change of plans, it is entirely plausible. Regarding the evidence of Tonies Application, this material in no way suggests anything that I consider evidencing a pattern of underhanded conduct and is merely speculative. The Tonies Letter and other material from senior employees tonies GmbH and Tonies USA completely refutes the allegations raised in Foot and Trott regarding the Tonies Application.
The submissions of the Opponent leave me with questions about how long another trader, including one in the position of Mr Struengmann with his knowledge and experience, should wait before adopting and using a trade mark which a competitor has never used. An initial owner who has at one time held a certain trade mark and has later sold it to another trader, only for that purchaser of the trade mark to make no use of it and not renew a registration in respect of it, does not necessarily act in a commercially underhanded manner if they adopt the trade mark once again. At the time of the SPA there was likely little if any goodwill to the Trade Mark in Australia established on the evidence. Whilst the Opponent and its predecessors are parties to the SPA, the SPA does not appear to contain terms which suggest relevant and perpetual obligations. A reasonable trader such as Mr Struengmann and the Applicant, on seeing a gap in the market might decide to fill that gap, including by adopting again a long unused, here if ever used, trade mark after conducting due diligence. The Opponent has the onus in these proceedings and it has not discharged that onus. For the reasons I have outlined, I am not satisfied that the Application was made in bad faith.
Accordingly, the ground of opposition under s 62A has not been established.

Decision and costs

Section 55(1) relevantly provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
I am not satisfied that a ground of opposition has been established. Accordingly, the Trade Mark may proceed to registration after the appeal period.
If the Registrar is served with a notice of appeal, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.
Both parties have requested costs. It is normal for costs to follow the event and the Applicant has been successful. I award costs against the Opponent under s 221 in accordance with Scheule 8 to the Regulations.

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

1 August 2025