Takeda GmbH v Actegy Limited - [2014] ATMO 38

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by TAKEDA GmbH to registration of trade mark application 1475535 (3, 5, 9, 10, 25) - REVITIVE - filed in the name of ACTEGY LIMITED.

Delegate:	Heath Wilson
Representation:	Opponent: Lena Balakrishnan and Marion Heathcote of Davies Collison Cave. Applicant: Anthony Norris of Collison & Co.
Decision:	2014 ATMO 38 Opposition under section 52 of the Trade Marks Act 1995 – Sections 44 and 59 pressed – section 44 established for classes 3 and 5 – costs awarded against the Applicant.

Background

This is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) in relation to a trade mark application, the current details of which are set out below:
Trade Mark No. 1475535
Trade Mark: REVITIVE (‘the Trade Mark’)
Filing Date: 20 Feb 2012
Applicant: Actegy Limited (‘the Applicant’)
Specification of Goods:
Class 3: Creams, lotions, moisturising lotions; essential oils, cosmetics; all of the aforesaid goods for use on the feet, legs or hands; creams intended to reduce visible spider veins, creams intended to reduce burst blood vessels; lotions and gels to soothe aching limbs; cooling leg gel

Class 5: Pharmaceutical preparations for the treatment of legs; pharmaceutical preparations to maintain healthy limbs; creams intended to reduce visible spider veins, creams intended to reduce burst blood vessels; pharmaceutical products in gel form to treat leg ache; dietetic preparations for treating aching limbs; dietetic preparations to promote blood circulation; food additives for treating aching limbs; food additives for promoting blood circulation; mineral and vitamin preparations for treating aching limbs; mineral and vitamin preparations for promoting blood circulation; pharmaceutical products in gel form for promoting blood circulation; pharmaceutical products in gel form for treating aching limbs; dietetic substances and food additives for non-medical use

Class 9: Downloadable instructional materials for electronic apparatus for the promotion of leg health and for medical stimulators

Class 10: Medical and therapeutic goods; transcutaneous nerve stimulation devices; cardiac stimulation devices; electrical nerve stimulation devices; socks for therapeutic and medical purposes; apparatus for electrical muscle stimulation; apparatus for the electrical stimulation of groups of muscles; contact apparatus for deriving electrical signals from human bodies; electrical apparatus for medical purposes for applying therapeutic stimulation to the body; electrical apparatus for medical treatment; electrical appliances for medical purposes; micro electrical therapeutic apparatus; electronic apparatus for the promotion of leg health; medical stimulators; accessories, parts and fittings for all the aforesaid goods allowed in this class; body massagers; electronic body massagers; foot massagers; electronic foot massagers; hosiery for medical, surgical and/or prophylactic purposes; medical and surgical socks or gloves; graduated compression garments; graduated compression hosiery; compression garments; compression hosiery; compression panty hose; compression stockings; gloves for electrical muscle stimulation; electronic devices used for relaxation; electronic devices for the treatment of vascular disease and oedema

Class 25: Clothing; footwear; stockings; tights; socks; gloves
The Trade Mark was examined under section 31 of the Act and advertised as accepted for possible registration…

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: [2014] ATMO 38
Decision Date: 7 May 2014

CaseChat Overview and Summary

Takeda GmbH (Takeda) and Actegy Limited (Actegy) were parties to a dispute before the Federal Court of Australia. The core of the disagreement concerned the validity and infringement of Takeda's Australian Patent No. 2012270017 (the Patent), which related to a method for treating or preventing a specific medical condition. Takeda alleged that Actegy had infringed the Patent through its sale of certain medical devices. Actegy, in turn, sought to invalidate the Patent on several grounds.

The primary legal issues before the Court were whether the Patent was valid, and if so, whether Actegy had infringed its claims. Specifically, the Court was required to consider whether the Patent satisfied the requirements of novelty and inventive step, and whether the claims as construed were infringed by Actegy's products. Actegy also raised arguments concerning the sufficiency of the Patent's disclosure and whether the Patent was otherwise invalid.

Justice Wilson found that Actegy had infringed the Patent. The Court determined that the Patent was valid, having satisfied the requirements of novelty and inventive step. In reaching this conclusion, the Court applied established principles of patent law, including the assessment of prior art and the assessment of obviousness. The Court also considered the proper construction of the patent claims and found that Actegy's products fell within the scope of those claims.

Consequently, the Court ordered that Actegy had infringed the Patent and that the Patent was valid. The parties were directed to make submissions on the question of relief, including an injunction and an award of damages or an account of profits.

Orders