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TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS
WITH REASONS
Re: Opposition by UCP Gen Pharma AG to application under section 92 of the
Act by Anglioblast Systems Incorporated to remove trade mark number
590735(5) - REVASC - in the name of UCP Gen Pharma AG
DELEGATE: Iain Thompson
REPRESENTATION: Opponent: Chris Round of Middletons
Applicant: Fiona Brittain of Davies Collison Cave
DECISION: 2010 ATMO 53
S92 proceedings – non-use conceded, subsection 100(3)(c) (obstacles
to use) not established by the evidence.
Registration to be removed.
Costs awarded against UCP
Background
1. In this matter Anglioblast Systems Incorporated („Angioblast‟) has applied under
subsections 92(4)(a) and (b) of the Trade Marks Act 1995 („the Act‟) for the removal
from the Register of Trade Marks of registration 590735, details of which appear
below:
Registration No: 590735
Owner: UCP Gen Pharma AG („UCP‟)
Priority Date: 18 November 1992
Goods: Pharmaceutical preparations
Trade Mark: REVASC („the trade mark‟)
2. UCP has opposed the application for removal, conceding that it (or an authorised
user) has not used the trade mark and relying on subsection 100(3)(c) alleging that the
non-use was because of circumstances that were an obstacle to the use of the trade
mark.
3. UCP has filed evidence in support of its opposition to removal. Anglioblast has not
filed evidence in answer.
4. The matter came before me in Melbourne, as a delegate of the Registrar of Trade
Marks on 15 April 2010 to hear the submissions of the parties. Fiona Brittain of
Davies Collison Cave represented UCP and Chris Round of Middletons represented
Angioblast.
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The Evidence
5. The evidence in support of the opposition to removal comprises a declaration by
Christine Faye Lowe, a solicitor of Davies Collison Cave, and a further declaration by
Dr Werner Kinzebach, a partner of the German firm of trade mark attorneys for UCP.
Ms Lowe provides the information that the product sold under the trade mark is a
patented pharmaceutical used in the treatment of venous thrombosis – an information
sheet about the product is exhibited to her declaration. An active constituent of the
product is genetically derived and has had approval for use under the Gene
Technology Act 2000, and under the Therapeutic Goods Act 1989 in 1996. (As a
matter of interest, the product is chemically nearly identical to the anticoagulant
produced by leeches).
6. Dr Werner Kinzebach attests to a chain of ownership and appointment of an
authorised user of the trade mark since 2002 when certain intellectual property was
divested from Ceiba-Geigy though various companies to UCP. A company called
Canyon Pharmaceuticals, Inc („Canyon‟) now has the world-wide license for the trade
marks and other intellectual property associated with the pharmaceutical.
7. Since the trade mark was divested, Canyon has had no manufacturing plant for the
product which requires specialist plant/installations for its synthesis. If my
understanding of this evidence is correct, a plant should have become available for
the manufacture of the goods in 2009.
8. On 8 January 2009, Canyon gave a marketing authorization to Polartechnics Ltd, of
Alexandria, New South Wales. While it was anticipated by UCP that Polartechnics
Ltd would introduce the pharmaceutical into Australia during 2009, it is my
understanding from Mr Round‟s submissions (with which Ms Brittain did not
disagree) it is a matter of public record that this company is now in liquidation.
Submissions
9. A précis of Ms Brittain‟s submissions is that the history of the trade mark shows that
the non-use was because of circumstances that were an obstacle to the use of the trade
mark – namely that a factory to make the goods was not available to the licensee.
The factors which prevented the use of the trade mark were, Ms Brittain submitted,
external to the owner of the trade mark and was the lack of a manufacturing plant for
the goods. In correspondence, following the hearing, Ms Brittain offered to restrict
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the specification of goods to 'pharmaceutical preparations for the prophylaxis and
treatment of venous thrombosis'. There is a risk for a party in proceedings before the
Registrar of Trade Marks that any correspondence filed after a hearing will not be
taken into account by the Hearing Officer if it is considered that reliance upon it will
prejudice proceedings or deny the other party natural justice or procedural fairness.
10. Mr Round submitted that UCP has not established that the circumstances claimed to
be an obstacle to use of the REVASC trade mark during the relevant non-use period
were sufficient to rebut the allegation of non-use. He submitted that no evidence was
filed by UCP that suggested that it used the trade mark in relation to any
'pharmaceutical products,' much less in relation to 'pharmaceutical preparations for
the prophylaxis and treatment of venous thrombosis'.
Discussion
11. There is no evidence or argument before me in terms of subsection 92(4)(a), and (for
the sake of completeness) I find that this ground has not been established.
12. Subsection 92(4)(b) provides, within the context of section 92:
92 Application for removal of trade mark from Register etc.
(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.
(2) The application:
(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or services in respect
of which the trade mark may be, or is, registered.
(3) An application may not be made to the Registrar under subsection (1) if an
action concerning the trade mark is pending in a prescribed court, but the person
may apply to the court for an order directing the Registrar to remove the trade
mark from the Register.
(4) An application under subsection (1) or (3) (non-use application) may be made
on either or both of the following grounds, and on no other grounds:
[…]
(b) that the trade mark has remained registered for a continuous period
of 3 years ending one month before the day on which the non-use
application is filed, and, at no time during that period, the person who
was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application
relates.
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Note 1: For file and month see section 6.
Note 2: If non-use of a trade mark has been established in a particular place or export market,
then instead of the trade mark being removed from the Register, conditions or
limitations may be imposed under section 102 on the registration of the trade mark so
that its registration does not extend to that place or export market.
13. Although the non-use is conceded by UCP, subsection 92(4)(b) is still relevant as it
establishes the non-use period during which UCP alleges the non-use was because of
circumstances that were an obstacle to the use of the trade mark. The non-use
application was filed on 20 March 2008. The non-use period is therefore between 20
February 2005 and 20 February 2008.
14. Section 100 of the Act relevantly provides:
(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the
allegation that the trade mark has not, at any time during the period referred to in
that paragraph, been used, or been used in good faith, by its registered owner in
relation to the relevant goods and/or services if:
[…]
(c) the opponent has established that the trade mark was not used by its
registered owner in relation to those goods and/or services during that
period because of circumstances (whether affecting traders generally or
only the registered owner of the trade mark) that were an obstacle to the
use of the trade mark during that period.
15. In terms of section 100(1) of the Act the onus is on the opponent to rebut the
allegation of non-use. I should be satisfied on the balance of probabilities that the
opponent has established that the trade mark was not used by its registered owner in
relation to pharmaceuticals during the period between 20 February 2005 and 20
February 2008 because of circumstances (whether affecting traders generally or only
the registered owner of the trade mark) that were an obstacle to the use of the trade
mark during that period.
16. I am not satisfied that UCP‟s evidence establishes its opposition to removal for three
reasons.
17. Firstly, the evidence in support of the opposition to removal does not provide the
detail necessary for me to gain an accurate and reliable „picture‟ of the circumstances
which UCP says have prevented it from using the trade mark. There was, for
example, a factory or facility being built for the manufacture of the pharmaceutical. I
have no certainty when or whether construction of this facility commenced, where it
was to be built or exactly what its nature is – this facility could potentially be a
substantial installation or as small as a room. I have no idea. At one end of the scale,
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a requirement for a large installation to be built might go some way to explaining that
the circumstances prevented the use of the trade mark. However, if the installation is
small, it would not. Thus the level of detail provided to me does not discharge the
onus which is on UCP.
18. Secondly, the evidence is not well supported and might best be characterized as a
series of assertions – in particular by the German trade mark attorney. While, in trade
mark proceedings, Hearing Officers will frequently accept declarations at face value,
here I have the largely unsupported declaration of Dr Werner Kinzebach who, I
understand does not work for UCP directly but is their German trade mark attorney.
Clearly, such declarations by third parties should be very well supported by
corroborating exhibits if they are to be afforded weight. I do not consider that, while
the onus is quite clearly on UCP to establish its opposition to removal, this evidence
can be accorded much weight. I am not asserting that declarations must be made by
people intimately involved in the running of the party involved – however, where
declarations are made by third parties, and the onus lies upon the party to establish its
position, there should be corroborating material of high probative value. This is a
situation where one party is not arguing even slight use in order to maintain its
registration but is relying upon a set of alleged circumstances which are said to have
prevented that use – the probative weight of evidence in such a situation, in particular
from third parties, should be high: Nodoz Trade Mark [1962] RPC 1.
19. Thirdly, if the evidence was of greater probative weight, it is not obvious that the
circumstances adverted to by UCP did prevent use of the trade mark. It is surprising
that if Ciba-Geigy did not want to manufacture the pharmaceutical under contract,
and Canyon was having obvious difficulty since 2002, another licensee company
(other than Canyon or an authorized user appointed by Canyon) could not be found
by UCP which would; or another authorized user of the trade mark could be sought
out by Canyon who actually had the capacity to make the product and use the trade
mark. The situation appears to me to be in some way analogous to that in Woolly Bull
Enterprises Pty Ltd v Reynolds [2001] FCA 261 where Drummond J said:
In my opinion, circumstances within s 100(3)(c) will only exist when
events arise that are capable of disrupting trade in the area of commercial
activity in which goods bearing the registered owner‟s mark are traded.
For the statutory excuse to be made out, those circumstances must cause
(in a practical business sense) non-use of the particular mark by the
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owner, whether or not they have an impact on any persons other than the
owner of that mark who are also involved in that same area of commercial
activity. There must be a causal link shown between the relevant
circumstances and the mark‟s non-use. This requirement arises from the
fact that s 100(3)(c) creates an excuse only where the mark has not been
used by the registered owner “because of” circumstances etc. It will not
assist the opponent to removal to show the existence of an impediment to
use of the kind referred to in s 100(3)(c) if he does not also establish that,
but for that impediment, he would have used the mark. Cf In re James
Crean & Son Ld’s Trade Mark at 162. [stress added]
20. It has not been established by UCP that there is a causal link between the
circumstances it adverts to and the lack of its use of the trade mark – as I have
observed, it has not fully explained why the goods could not be made under contract
or alternatively, some other authorised user of the trade mark could not be found.
21. I therefore find that UCP has not established to my satisfaction that the trade mark
was not used by UCP in relation to „pharmaceutical preparations‟ during the period
between 20 February 2005 and 20 February 2008 because of circumstances (whether
affecting traders generally or only UCP) that were an obstacle to the use of the trade
mark during that period.
Decision
22. Section 101 of the Act relevantly provides:
101 Determination of opposed application—general
(1) Subject to subsection (3) and to section 102, if:
(a) the proceedings relating to an opposed application have not been
discontinued or dismissed; and
(b) the Registrar is satisfied that the grounds on which the application was
made have been established;
the Registrar may decide to remove the trade mark from the Register in respect
of any or all of the goods and/or services to which the application relates.
23. If there is no appeal from my decision within one month of the date of this decision, I
direct that the trade mark be removed from the register for all of the goods for which
it is registered. If this decision is appealed, the disposition of the registration should
be in accordance with the Court‟s order or direction.
Costs
24. Angioblast is entitled to its costs at the official scale which I award against UCP.
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Iain Thompson
Hearing Officer
Trade Marks Hearings
01 July2010
