Sterling Winthrop Pty Ltd v Herron Pharmaceuticals Pty Ltd

This matter concerned an application by Sterling Winthrop Pty Ltd to remove the trade mark registration number A488194, for the word PARAMOL, from the Register of Trade Marks. The registered proprietor of the mark was Herron Pharmaceuticals Pty Ltd. Sterling Winthrop sought removal under subsection 23(1)(b) of the Trade Marks Act, alleging that for a continuous period of not less than three years prior to the application, there had been no use in good faith of the trade mark in relation to pharmaceuticals and analgesics by the registered proprietor. The relevant period for non-use was from 23 June 1990 to 23 June 1993. The hearing was conducted by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether to admit further evidence filed by Sterling Winthrop shortly before the hearing, and whether Sterling Winthrop had established locus standi as a "person aggrieved" entitled to bring the removal application. Sterling Winthrop also sought to establish a prima facie case of non-use of the trade mark.

The delegate considered the admissibility of a second declaration from Ms Karen Leanne James, filed by Sterling Winthrop. While acknowledging that the usual procedure for adducing further evidence under regulation 47 required a formal application, the delegate, drawing on principles from cases such as *Studio SrL v Buying Systems (Aust) Pty Ltd* and *Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd*, decided to admit the evidence. The delegate reasoned that in the context of a de novo hearing, it was preferable to have substantive issues fully investigated, and the second declaration served to clarify ambiguities in the first, thereby avoiding potential misinterpretation and an unsatisfactory outcome. However, the delegate found that Sterling Winthrop had failed to establish locus standi. Sterling Winthrop attempted to rely on its registered trade marks, including PANADOL, to demonstrate it was a person aggrieved, but this evidence was introduced too late and without proper notice to Herron Pharmaceuticals, thus denying natural justice. The delegate concluded that without sufficient evidence establishing Sterling Winthrop as a person aggrieved, the removal application must fail.

Although the delegate found Sterling Winthrop lacked locus standi, for completeness, the delegate considered the substantive issue of use. Sterling Winthrop’s evidence suggested that PARAMOL tablets were not yet on the market, as registration under the Therapeutic Goods Act was obtained on 20 October 1992. However, the delegate, referencing *Murray Goulburn Co-operative Co. Limited v The New South Wales Dairy Corporation*, held that the steps taken to obtain Therapeutic Goods Administration registration constituted "use" in the course of trade for the purposes of section 23. Therefore, even if locus standi had been established, the removal application would have been dismissed on the grounds that there was no prima facie case of non-use. The application for removal was refused on the basis that Sterling Winthrop had not established it was a person aggrieved. Sterling Winthrop was ordered to pay Herron Pharmaceuticals' costs.