Valo Therapeutics Oy - [2023] ATMO 105

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Proposed revocation of acceptance of trade mark application number 2303960 for VALOTX in classes 1, 5, 10, 40, 42 and 44 - in the name of Valo Therapeutics Oy.

Delegate: Debrett G. Lyons

Representation: Applicant: Written submissions from IP Solved (ANZ) Pty Ltd

Decision: 2023 ATMO 105
Trade Marks Act 1995: proceedings under sections 38 of the Act – acceptance revoked – application returned to examination.
Background

In these proceedings under the Trade Marks Act 1995 (‘the Act’) Valo Therapeutics Oy (‘the Holder’) made application 2303960 on 21 April 2022 for the extension of protection to Australia of International Registration No. 1686416 for the trade mark VALOTX (‘Trade Mark’) in classes 1, 5, 10, 40, 42 and 44 (‘the IRDA’).
The IRDA was examined as mandated by section 31 of the Act and accepted by a delegate of the Registrar of Trade Marks after which it was advertised as accepted in the Australian Official Journal of Trade Marks on 7 October 2022.
Thereafter, as a result of correspondence received from a third party on 28 November 2022, a delegate of the Registrar of Trade Marks (‘the Examiner’) issued a Notice dated 5 December 2022 proposing to revoke acceptance of the Trade Mark under section 44 of the Act (‘NOIR’). In the NOIR the Examiner stated that:
“… it has now come to my attention that the IRDA should not have been accepted. At the time of examination, the following marks existed on the register with an earlier priority date to your IRDA:
2148869    VALO
2148890    VALO + device
2148938    VALO HEALTH
Your trade mark VALOTX is the combination of VALO and TX, where TX is short hand for therapeutics or treatment, both of which carry a descriptive meaning in relation to the goods/services claimed. The addition of TX does not alter the distinctive VALO element sufficiently to differentiate it from the above earlier marks.
Additionally, the goods/services you have claimed are the same as or are similar to those claimed in the earlier marks. Therefore, having taken into account all the circumstances that existed when the IRDA was accepted, it is considered reasonable to revoke the acceptance in accordance with regulation 17A.27 of the Trade Marks Regulations 1995.
The Applicant was given two months from the date of the NOIR to provide submissions responding to the proposed revocation or to apply to be heard. The Applicant requested a hearing by way of written submissions. Those submissions were received from Mr Kenneth McInnes of IP Solved (ANZ) Pty Ltd and acting as a delegate of the Registrar of Trade Marks I have made this decision based on those submissions and the earlier Office records.
Section 38
Regulation 17A.27 of the Trade Marks Regulations 1995 brings section 38 of the Act into play. It relevantly provides:
38Revocation of acceptance
(1)Before a trade mark is registered, the Registrar may revoke the acceptance of the application…

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.

Continue reading Valo Therapeutics Oy

Details

AGLC: Valo Therapeutics Oy [2023] ATMO 105
Case: [2023] ATMO 105
Decision Date: 3 August 2023

CaseChat Overview and Summary

This decision concerns an application for revocation of acceptance of a trade mark application by Valo Therapeutics Oy (the applicant) against the Australian Trade Marks Office (the respondent). The dispute arose from the acceptance of the trade mark application, which the applicant sought to have revoked.

The primary legal issue before the Hearing Officer was whether the acceptance of the trade mark application should be revoked, pursuant to section 38 of the *Trade Marks Act 1995* (Cth). This required a determination of whether the first limb of section 38 was established, and if so, whether revocation was reasonable.

The Hearing Officer found that the first limb of section 38 was established, necessitating consideration of reasonableness. Applying the reasoning from *Henkel AG & Co KGaA* [2015] ATMO 13, the Hearing Officer determined that revocation was reasonable. This reasoning emphasised the importance of maintaining the integrity of the Office's examination processes and allowing valid grounds for rejection to be raised. The Hearing Officer concluded that it was in the best interests of both the applicant and potential opponents for the application to be returned to examination.

Consequently, the Hearing Officer ordered the revocation of the acceptance of the trade mark application. As a result, the application is to be taken to have never been accepted and will be returned to the Registrar for examination and reporting under section 31, with sections 33 and 34 to apply accordingly.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

The first limb of section 38 is established and so I am required by section 38(1)(b) to consider whether revocation is reasonable. I find that it is reasonable. I see nothing suggesting otherwise and to the limited extent that perhaps some small number of the expansive goods or services claimed by the IRDA may escape conflict under section 44, I am satisfied by the reasoning of the delegate in Henkel AG & Co KGaA.[7] where it was said that:Arguably, it is in the best interests of the [applicant], as well as its potential opponent, that the [applications] be returned to, and tested by, the appropriate examination processes which have hitherto been omitted. They may then proceed, should this ultimately prove necessary, to the escalation of argument and expense associated with the adversarial forum of opposition. …Finally, it is an important public interest, and therefore also a relevant circumstance in this matter that, wherever possible, the proper examination processes of the Office are consistently maintained. Revocation of acceptance of the [applications], allowing the valid ground for rejection to be raised, will serve that interest.[7] [2015] ATMO 13.Decision I am satisfied, in terms of section 38(1) of the Act, that the IRDA should not have been accepted and that it is reasonable to revoke its acceptance. Section 38(2) of the Act provides:If the Registrar revokes the acceptance:(a) the application is taken to have never been accepted; and(b) the Registrar must examine, and report on, the application necessary under section 31; and(c) sections 33 and 34 again apply in relation to the application. Accordingly, the IRDA will be returned to examination.Debrett LyonsHearing OfficerOppositions and Hearings3 August 2023APPENDIX AClass 1: Chemical and biological agents for scientific and research use; antioxidants for use in the manufacture of pharmaceuticals; animal albumen [raw material]; collagen for industrial purposes; antioxidants for use in manufacture; biochemical catalysts; chemical preparations for scientific purposes, other than for medical or veterinary use; protein [raw material]; preparations of microorganisms, other than for medical and veterinary use; biological preparations, other than for medical or veterinary purposes; diagnostic preparations, other than for medical or veterinary purposes.

Ratio Decidendi

Legal Principle Established

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Delegate:	Debrett G. Lyons
Representation:	Applicant: Written submissions from IP Solved (ANZ) Pty Ltd
Decision:	2023 ATMO 105 **Trade Marks Act 1995: proceedings under sections 38 of the Act – acceptance revoked – application returned to examination.**