Sustainable Agriculture & Food Enterprises Pty Ltd v Samaritan Pharmaceuticals Inc

This matter concerned an application by Sustainable Agriculture & Food Enterprises Pty Ltd (SAFE) to remove trade mark registration number 793333 from the register, held by Samaritan Pharmaceuticals Inc (SP). SAFE alleged that SP had not used the trade mark in Australia for a continuous period of three years ending one month before the application for removal was filed. The hearing was conducted by Debrett Lyons, a delegate of the Registrar of Trade Marks, in Brisbane.

The primary legal issue before the delegate was whether SP had made use of the registered trade mark during the relevant period, or whether the mark used by SP, NUTRACELL SAMARITAN, constituted use of the registered trade mark with additions or alterations that did not substantially affect its identity, as permitted by section 100(3)(a) of the relevant legislation. A secondary issue arose regarding the nature of the goods in respect of which the mark was used, with SAFE arguing that the use was only in relation to cosmetic creams and lotions, not pharmaceutical products.

The delegate considered the onus on the trade mark owner to rebut an allegation of non-use, referencing case law such as *Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd* and *Anheuser-Busch Inc v Budejovick[yacute] Budvar, Národní Podnik*. The delegate found that the use of NUTRACELL SAMARITAN, when viewed objectively and as it would be understood by consumers, was a composite mark where NUTRACELL identified the company and SAMARITAN functioned as a trade mark to distinguish the bottled water products. The delegate concluded that SAMARITAN was used as a trade mark to distinguish the bottled water products of SP from those of other traders, acting as a "badge of origin," and was not merely descriptive. The delegate also noted that even if there were grounds for removal, it would be a proper exercise of discretion to allow the mark to remain on the register.

Consequently, the delegate ordered that trade mark registration number 793333 was to remain on the register and ordered SAFE to pay SP's costs.