Sanofi v the Upjohn Company

This matter concerned an application by Sanofi to partially remove the trade mark "provelle" (number 553727) from the Register of Trade Marks, which is registered in the name of The Upjohn Company for pharmaceutical preparations. Sanofi sought removal in respect of all pharmaceutical preparations other than combination hormone replacement therapy packs, relying on grounds of non-use under paragraphs 92(4)(a) and 92(4)(b) of the *Trade Marks Act 1995*. The Upjohn Company opposed this application, raising several grounds, including that Sanofi was not a person aggrieved, that the original application for registration was made in good faith with an intention to use the mark, and that the mark had been used in Australia within the relevant periods.

The primary legal issues before the delegate of the Registrar of Trade Marks were whether Sanofi had standing as a "person aggrieved" to bring the removal application, whether the application complied with regulatory requirements, and, if so, whether the grounds for removal were established. Specifically, the delegate had to determine if The Upjohn Company had demonstrated an intention in good faith to use the trade mark at the time of its application, or if the trade mark had been used in Australia during the relevant three-year period preceding the removal application, as required by section 92(4) of the Act. The delegate also considered whether the registration was protected by section 234 of the Act, which provides a form of incontestability after seven years.

The delegate found that Sanofi did have standing as a person aggrieved, noting that The Upjohn Company's own evidence demonstrated that Sanofi's prior attempt to register a similar mark ("aprovel") had been successfully opposed based on the "provelle" registration, thus causing Sanofi appreciable disadvantage. The delegate also found that Sanofi's removal application complied with the procedural requirements of regulation 9.1. Crucially, the delegate determined that section 234 of the Act did not protect the "provelle" registration as it was less than seven years old at the time of the removal application. However, the delegate found in favour of The Upjohn Company on the ground of intention to use, concluding that the evidence, including the statement of use, the registration of an authorised user, and approvals from the Therapeutic Goods Administration for related products, collectively satisfied the requirement that the original application was made with a good faith intention to use the mark on pharmaceutical products.

Consequently, the delegate dismissed Sanofi's application for the partial removal of the trade mark "provelle" from the Register.