FEDERAL COURT OF AUSTRALIA
UCP Gen Pharma AG v Mesoblast, Inc [2012] FCA 210
Citation: UCP Gen Pharma AG v Mesoblast, Inc [2012] FCA 210 Parties: UCP GEN PHARMA AG v MESOBLAST, INC File number: VID 597 of 2010 Judge: JESSUP J Date of judgment: 15 March 2012 Catchwords: INTELLECTUAL PROPERTY – Trade mark – Application for removal from Register for non-use – Whether non-use occurred because of circumstances that were an obstacle to the use of the trade mark – Whether, notwithstanding non-use not by reason of obstacle, it was reasonable not to order removal of trade mark from Register. Legislation: Trade Marks Act 1995 (Cth) ss 92, 100, 101, 104 Cases cited: Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8
CA Henschke and Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42
Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 176 FCR 300
Woolly Bull Enterprises Pty Ltd v Reynolds (2001)
107 FCR 166Date of hearing: 14-16, 19 December 2011 Place: Melbourne Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 45 Counsel for the Applicant: Ms S Ryan Solicitor for the Applicant: Davies Collison Cave Law Counsel for the Respondent: Dr S Ricketson Solicitor for the Respondent: Middletons
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 597 of 2010
BETWEEN: UCP GEN PHARMA AG
Applicant
AND: MESOBLAST, INC
Respondent
JUDGE:
JESSUP J
DATE OF ORDER:
15 MARCH 2012
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
1.Registered trade mark No 590735 not be removed from the Register of Trade Marks pursuant to the application of the respondent under section 92 of the Trade Marks Act 1995 (Cth) made on 20 March 2008.
2.The respondent pay the applicant’s costs.
3.The operation of the previous order be stayed for 14 days, pending which time the parties have liberty to apply on the matter of costs.
Note:Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 597 of 2010
BETWEEN: UCP GEN PHARMA AG
Applicant
AND: MESOBLAST, INC
Respondent
JUDGE:
JESSUP J
DATE:
15 MARCH 2012
PLACE:
MELBOURNE
REASONS FOR JUDGMENT
In this proceeding, the applicant, UCP Gen Pharma AG, appeals, pursuant to s 104 of the Trade Marks Act 1995 (Cth) (“the Act”), from a decision of a delegate of the Registrar of Trade Marks under s 101 of the Act. The delegate decided to remove registered mark No. 590735 (“the applicant’s mark”) from the Register of Trade Marks under the Act upon the ground of non-user as provided for in s 92(4)(b) of the Act. The appeal is in the nature of a hearing de novo.
The provisions of s 92 that are relevant in the present case are the following:
(1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.
….
(4)An application under subsection…
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- Case
- [2012] FCA 210
- Decision Date
CaseChat Overview and Summary
The Court examined the statutory criteria for the removal of a trade mark due to non-use, as outlined in section 92 of the Trade Marks Act 1995 (Cth). It was necessary to determine whether the non-use was due to circumstances that prevented the use of the trade mark, or if other factors justified retaining the trade mark on the Register. The Court also considered the relevant principles of equity and fairness in relation to the use of trade marks, balancing the rights of the applicant to maintain exclusive use against the potential for prejudice to third parties.
After considering the evidence presented by both parties, the Court concluded that while the non-use of the trade mark was not due to circumstances that constituted an obstacle to its use, it was reasonable to keep the trade mark on the Register. The Court found that the applicant had not demonstrated that the non-use was due to circumstances that were an obstacle to use. However, the Court decided that it was equitable to maintain the registration, taking into account factors such as the potential for prejudice to third parties and the rights of the applicant. Consequently, the Court ruled that the trade mark should not be removed from the Register, and ordered that the respondent pay the applicant's costs. The operation of this order was stayed for 14 days, allowing the parties to make further applications regarding the matter of costs.
Orders
Orders of the court
1. Registered trade mark No 590735 not be removed from the Register of Trade Marks pursuant to the application of the respondent under section 92 of the Trade Marks Act 1995 (Cth) made on 20 March 2008.
2. The respondent pay the applicant’s costs.
3. The operation of the previous order be stayed for 14 days, pending which time the parties have liberty to apply on the matter of costs.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
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