Pelago Bioscience AB - [2025] ATMO 83

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReInternational Registration 1650284 - Australian Trade Mark Application number 2411704 (1, 5, 42) - PISA - in the name of Pelago Bioscience AB.

Delegate: Nicholas Smith

Representation: Holder: Written submissions by Addisons Lawyers

Decision: 2025 ATMO 83
Regulation 17A.24: final decision on examination – consideration of section 41 of the Trade Marks Act 1995 –trade mark has no inherent adaptation to distinguish – no evidence of use provided – extension of protection refused
Background

On 17 November 2023, Pelago Bioscience AB (‘Holder’) applied to extend protection to Australia of International Registration 1650284 under the provisions of the Trade Marks Act 1995 (‘Act’) and Trade Marks Regulations 1995 (‘Regulations’). Such an application is referred to as an International Registration Designating Australia (‘IRDA’). The current details of the IRDA appear below:

Application No.:

2411704

International Reg.

1650284

Filing Date:

17 November 2023

Priority Date

17 November 2023

Goods and Services: Class 1: Chemical compositions and materials for use in science; biochemicals for in vitro and in vivo scientific use; diagnostic preparations for scientific or research use; in-vivo diagnostic reagents for scientific use; tagged antibodies for scientific use; polymers for use in the analysis of proteins; reagents for scientific purposes; compositions for scientific use in the preparation of culture media; substances for laboratory use; testing reagents for scientific use; universal reagents for automated test systems [laboratory]; universal reagents for automated test systems [scientific]; substances for scientific use; enzymes for scientific purposes; enzymes [other than for medical use] in detecting proteins; proteins for detecting antibodies [other than for medical use]; proteins for use in science; protein [raw material]; chemical substances for impregnation into membranes to separate proteins from liquids; enzymes [other than for medical use] for measuring proteins; chemical substances for analysis in laboratories; none of the aforesaid as being for 'Pisa Syndrome'.
Class 5: Enzymes for medical purposes; diagnostic biomarker reagents for medical purposes; diagnostic chemical reagents for medical use; diagnostic preparations for medical or veterinary purposes; diagnostic testing materials for medical use; diagnostic reagents for medical use; indicators for medical diagnosis; chemical reagents for medical or veterinary purposes; chemical test reagents [medical]; chemical test reagents [veterinary]; reagents for analytical purposes [for medical purposes]; reagents for use in analysis [for medical purposes]; reagents for in-vitro laboratory use [for medical purposes]; reagents and media for medical and veterinary diagnostic purposes; none of the aforesaid as being for 'Pisa Syndrome'.
Class 42: Services of a chemical and/or biological laboratory; research and development services in the field of chemistry; laboratory testing; laboratory analysis in the field of chemistry; laboratory services; analytical laboratory services; scientific laboratory services; biological laboratory services; testing of pharmaceuticals; analysis of human tissues for medical research; research on the subject of pharmaceuticals; research and development of vaccines and medicines; conducting early evaluations in the field of new pharmaceuticals; medical research; biological research, clinical research and medical…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2025] ATMO 83
Decision Date: 14 May 2025

CaseChat Overview and Summary

This decision concerns an application by Pelago Bioscience AB for an International Registration Designating Australia (IRDA). The Hearing Officer, Nicholas Smith, was tasked with determining whether to accept or reject the IRDA.

The central legal issue before the Hearing Officer was whether the IRDA should be rejected under section 41 of the *Trade Marks Act 1995* (Cth). This section pertains to the distinctiveness of trade marks, requiring them to be inherently adapted to distinguish the applicant's goods or services.

The Hearing Officer found that the trade mark was not inherently adapted to distinguish the goods and services for which it was sought, and crucially, there was no evidence of use presented. Consequently, the Hearing Officer was satisfied that grounds for rejection existed under section 41(3) of the Act. Applying regulation 17A.24, which mandates rejection when grounds for doing so are established, the Hearing Officer rejected the IRDA. The Hearing Officer also directed that if a notice of appeal were filed within one month, the disposition of the IRDA would be in accordance with the Court's subsequent direction or order.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

As the Trade Mark is not to any extent inherently adapted to distinguish the Holder’s Goods and Services and there is no evidence of use, the IRDA must be rejected under s 41 of the Act.Decision Regulation 17A.24 provides:17A.24Final decision on examination(1)The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:(a)it is not in accordance with this Division; or(b)there are grounds for rejecting it.(2)The Registrar may accept the IRDA subject to conditions or limitations.(3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:(a)it is not in accordance with this Division; or(b)there are grounds for rejecting it, in whole or in part. I am satisfied that there is a ground for rejecting the IRDA under s 41(3) of the Act. I must reject the IRDA in accordance with reg 17A.24 which I now do. If, however, the Registrar is served with a notice of appeal within one month of the date of this decision, I direct that the disposition of the IRDA be in accordance with the Court’s direction or order.Nicholas SmithHearing OfficerOppositions and Hearings14 May 2025

Ratio Decidendi

Legal Principle Established

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Delegate:	Nicholas Smith
Representation:	Holder: Written submissions by Addisons Lawyers
Decision:	2025 ATMO 83 Regulation 17A.24: final decision on examination – consideration of section 41 of the Trade Marks Act 1995 –trade mark has no inherent adaptation to distinguish – no evidence of use provided – extension of protection refused

Application No.:	2411704
International Reg.	1650284
Filing Date:	17 November 2023
Priority Date	17 November 2023
Goods and Services:	Class 1: Chemical compositions and materials for use in science; biochemicals for in vitro and in vivo scientific use; diagnostic preparations for scientific or research use; in-vivo diagnostic reagents for scientific use; tagged antibodies for scientific use; polymers for use in the analysis of proteins; reagents for scientific purposes; compositions for scientific use in the preparation of culture media; substances for laboratory use; testing reagents for scientific use; universal reagents for automated test systems [laboratory]; universal reagents for automated test systems [scientific]; substances for scientific use; enzymes for scientific purposes; enzymes [other than for medical use] in detecting proteins; proteins for detecting antibodies [other than for medical use]; proteins for use in science; protein [raw material]; chemical substances for impregnation into membranes to separate proteins from liquids; enzymes [other than for medical use] for measuring proteins; chemical substances for analysis in laboratories; none of the aforesaid as being for 'Pisa Syndrome'. Class 5: Enzymes for medical purposes; diagnostic biomarker reagents for medical purposes; diagnostic chemical reagents for medical use; diagnostic preparations for medical or veterinary purposes; diagnostic testing materials for medical use; diagnostic reagents for medical use; indicators for medical diagnosis; chemical reagents for medical or veterinary purposes; chemical test reagents [medical]; chemical test reagents [veterinary]; reagents for analytical purposes [for medical purposes]; reagents for use in analysis [for medical purposes]; reagents for in-vitro laboratory use [for medical purposes]; reagents and media for medical and veterinary diagnostic purposes; none of the aforesaid as being for 'Pisa Syndrome'. Class 42: Services of a chemical and/or biological laboratory; research and development services in the field of chemistry; laboratory testing; laboratory analysis in the field of chemistry; laboratory services; analytical laboratory services; scientific laboratory services; biological laboratory services; testing of pharmaceuticals; analysis of human tissues for medical research; research on the subject of pharmaceuticals; research and development of vaccines and medicines; conducting early evaluations in the field of new pharmaceuticals; medical research; biological research, clinical research and medical…