Orthotech Research & Development Pty Ltd v Maxx Orthopedics, Inc

This matter concerned an application by Maxx Orthopedics, Inc. (the "Removal Applicant") to remove from the Register of Trade Marks the trade mark "PKR" registered in the name of Orthotech Research & Development Pty Ltd (the "Removal Opponent"). The Removal Applicant sought removal on the grounds of non-use. The Removal Opponent opposed the removal application, arguing that the trade mark had been used in relation to orthopaedic articles and implants, specifically knee prostheses, during the relevant three-year period ending 21 March 2020.

The primary legal issue before the delegate was whether the Removal Opponent had established genuine use of the trade mark "PKR" in Australia in relation to knee prostheses during the relevant period. This involved considering whether the use by a related entity, Orthotech Pty Ltd, and the licensing arrangements constituted use by the Removal Opponent, and whether the evidence demonstrated actual and substantial use of the trade mark in the course of trade.

The delegate considered evidence that the trade mark had been used in relation to unicompartmental knee prostheses, which were designed and implanted by surgeons and purchased by hospitals. It was asserted that "PKR" was common knowledge amongst the usual customers, referring to "partial knee replacement." The delegate noted that the Removal Opponent had licensed the trade mark to Orthotech Pty Ltd, a related entity, and that Orthotech had sold prostheses bearing the trade mark in Australia until February 2017. The prostheses had also been advertised on Orthotech's website. However, the delegate found that the evidence did not establish use of the trade mark within the relevant period, particularly given the cessation of manufacturing by the original supplier in Italy in 2017.

Ultimately, the delegate declined to exercise discretion in favour of the Removal Opponent and ordered that the trade mark be partially removed from the Register. The specification of goods was to be amended to "Orthopaedic articles and implants being knee prostheses." The partial removal was stayed for one month to allow for potential appeal, and no order for costs was made as both parties had achieved a measure of success.