Gen-Probe Incorporated v Beckman Coulter, Inc

The powers of the Court with respect to Gen-Probe's IRDA

Protected international trade marks 15 Division 3 of Pt 17A of the TM Regulations makes provision for dealing with an IRDA, which is a request, made under Art 3ter(1) of the Madrid Protocol, for extension to Australia of the protection resulting from international registration of a trade mark: reg 17A.11. The Registrar is given the following powers under that Division: (a) Subdivision 1 of Div 3 governs the examination and acceptance of an IRDA by the Registrar. After receiving an IRDA, the Registrar must examine and report on whether it is in accordance with Div 3 and whether there are grounds for rejecting it: reg 17A.12. The Registrar must, after examination, accept the IRDA unless satisfied that it is not in accordance with Div 3 or there are grounds for rejecting it: reg 17A.24. If the Registrar accepts the IRDA as notified, the Registrar must notify the decision in the Australian Official Journal of Trade Marks stating that, unless a notice of opposition is filed, the trade mark that is the subject of the IRDA will be protected in Australia in respect of the goods or services in respect of which protection was sought. (b) Subdivisions 2 and 3 of Div 3 govern opposition proceedings in respect of an application for extension of protection and make provision for the filing of notices of intention to oppose. The grounds of opposition are those set out in ss 39 to 44, 58 to 61 and 62A of the TM Act: regs 17A.28 and 17A.34. Reg 17A.34N provides as follows: (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide: (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations); having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established. (2) Registrar must notify the International Bureau of the Registrar's decision. (c) Subdivision 4 of Div 3 governs the extension of protection to an international trade mark and defines a range of circumstances in which a trade mark that is the subject of an IRDA will become a protected international trade mark. Relevantly, reg 17A.36(2A) provides that, if the Registrar accepts an IRDA and a notice of opposition is filed and either dismissed or withdrawn, the trade mark that is the subject of the IRDA becomes a protected international trade mark after the opposition has been dismissed or withdrawn. Reg 17A.36(4) applies where an appeal is made from a decision of the Registrar in an opposition proceeding (as in this case). It provides as follows: If: (a) the Registrar accepts an IRDA; and (b) a notice of opposition to the IRDA is filed as mentioned in subregulation 17A.32(1); and (c) an appeal is made from the decision on the opposition within the appeal period, or any extension of that period; and (d) the decision on the appeal is that the trade mark that is the subject of the IRDA should be protected in Australia; the trade mark becomes a protected international trade mark, to the extent permitted by the decision on the appeal, when that decision is made. 16 If a trade mark becomes a protected international trade mark, the Registrar must notify that fact in the Australian Official Journal of Trade Marks and record that fact in the Record of International Registrations: reg 17A.37(1).

Registrar's decision with respect to Gen-Probe's IRDA 17 In the present matter, the Registrar notified her acceptance of Gen-Probe's IRDA for possible protection in the Australian Official Journal of Trade Marks on 21 December 2017, pursuant to the powers conferred by Subdiv 1 of Div 3. Subsequently, BCI filed a notice of intention to oppose under Subdiv 3. The opposition was heard by a delegate of the Registrar and, on 18 December 2019, the delegate decided to refuse protection in Australia to the OPEN ACCESS trade mark on the basis of BCI's opposition under reg 17A.34N.

Gen-Probe's appeal and the powers of the Court 18 Gen-Probe appealed the delegate's decision to refuse protection under reg 17A.34P which provides as follows: (1) Section 56 of the Act applies in relation to the Registrar's decision on the opposition as if a reference in that section: (a) to an applicant were a reference to the holder of an IRDA; and (b) to a decision under section 55 of the Act were a reference to a decision under regulation 17A.34N. (2) If an appeal is made, the Registrar must tell the International Bureau of the decision on the appeal. 19 Section 56 of the TM Act provides, relevantly, that an applicant or opponent may appeal to the Federal Court from a decision of the Registrar under s 55. Section 197 provides, relevantly, that on hearing an appeal against a decision of the Registrar, the Federal Court may, amongst other things: (a) affirm, reverse or vary the Registrar's decision or direction; and (b) give any judgment, or make any order, that, in all the circumstances, it thinks fit. 20 The Court, in exercising its powers in an appeal under s 56 is engaged in a hearing de novo and must apply the same legal criteria that the Registrar is required to apply: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [32] and [33] per French J, with whom Tamberlin J agreed.

Allowing the appeal by consent 21 It is clear from Subdivs 3 and 4 of Div 3 that a person opposing an application for extension of protection to an international trade mark before the Registrar may discontinue or withdraw the opposition at any time before a decision is made with respect to the opposition (see regs 17A.35 and 17A.36(2A)). Accordingly, BCI was entitled to discontinue or withdraw its opposition before the Registrar. If that had occurred, reg 17A.36(2A) would have applied with the effect that the OPEN ACCESS trade mark would have become a protected international trade mark (having been accepted by the Registrar under Subdiv 1 of Div 3). 22 As Gen-Probe's appeal to the Court is a hearing de novo in which the Court must apply the same legal criteria that the Registrar is required to apply, it follows that BCI is entitled to withdraw its opposition to Gen-Probe's IRDA in these appeal proceedings. The question that arises is whether, in those circumstances, the Court may make orders by consent allowing the appeal and setting aside the Registrar's decision refusing the extension of protection, or whether the Court is required to determine the appeal on the basis of the evidence that has been filed. 23 The Court has previously concluded that, where the only opposition to the registration of a trade mark is withdrawn, the parties seek orders by consent allowing the appeal and setting aside the Registrar's decision refusing registration, and the Registrar does not wish to be heard on the making of the consent orders, the orders are both within power and appropriate: see Cadbury Schweppes Plc v Effem Foods Pty Limited [2006] FCA 1267; 69 IPR 584 at [17] per Lindgren J; Societe Des Produits Nestle S.A. v Aldi Stores (A Limited Partnership) [2010] FCA 218 at [5]-[8] per Nicholas J; Suyen Corp v Americana International Ltd [2011] FCA 300 at [13] per Dodds-Streeton J; Hungry Spirit Pty Ltd ATF Hungry Spirit Trust v Fit n Fast Australia Pty Ltd [2019] FCA 1277 at [6] per Burley J. I accept the parties' submission that those decisions are a direct analogue for the present case. I therefore accept the parties' submission that the consent orders they seek, allowing the appeal and setting aside the Registrar's decision refusing the extension of protection, are both within power and appropriate. 24 I note for completeness that in a2 Milk Co Ltd v LD&D Australia Pty Ltd [2021] FCA 1515; 164 IPR 293, Bromwich J declined to make orders by consent that a trade mark proceed to registration. In that case, the Registrar had refused registration on a number of grounds. The trade mark applicant appealed the Registrar's decision and the opponent to registration ultimately withdraw its opposition and consented to orders allowing the appeal. However, the Registrar declined to provide a letter to the Court confirming that the Registrar had no objection to registration, noting, amongst other things, that the ground of opposition under s 41 of the TM Act was an absolute public interest ground not able to be answered by agreement between two traders (at [6]). In the circumstances, Bromwich J considered it necessary to determine the appeal on the evidence before the Court. The circumstances of that case differ from the present in that the Registrar has provided the Court with a letter confirming that the Registrar does not oppose the orders being sought by the parties and BCI's opposition was based on the potential for confusion with its own trade marks (not any broader public interest grounds). 25 For the purposes of reg 17A.36(4), the effect of the consent orders is that Gen-Probe's OPEN ACCESS trade mark, the subject of the IRDA, should be protected in Australia. However, it is necessary to consider the Court's power to make the further order sought by the parties amending the specification of the goods listed in the IRDA.

Amendment to the specification of goods 26 The parties seek a further order that the Registrar be directed to extend protection of Gen-Probe's IRDA in respect of the goods set out in the schedule to the orders. As noted earlier, the effect of that order is to narrow the specification of goods listed in the IRDA in respect of which protection is sought (by adding various qualifications to the specification). 27 In examining an IRDA under Subdiv 1 of Div 3, the Registrar is empowered to accept the IRDA in whole or in part: reg 17A.25(2). Further, in deciding whether to extend protection to the international trade mark, the Registrar may do so in respect of some or all of the goods or services listed in the IRDA: reg 17A.34N(1). It is implicit from those powers that the holder of the IRDA may amend the specification of goods and services listed in the IRDA in order to address objections of the Registrar or grounds of opposition. In my view, it is also implicit that the holder of the IRDA may narrow the specification as part of a resolution of an opposition proceeding in which the opposition is discontinued. 28 It follows that, in the course of an opposition appeal, the holder of the IRDA may amend the specification of goods and services listed in the IRDA in order to address grounds of opposition. The Court has the same power as the Registrar to accept such an amendment in finally determining an opposition proceeding and make orders accordingly. The existence of such power is also implicit from the terms of reg 17A.36(4) which provides that, if the decision on the appeal is that the trade mark that is the subject of the IRDA should be protected in Australia, the trade mark becomes a protected international trade mark to the extent permitted by the decision on the appeal. In the present case, I am satisfied that the amendments to the specification proposed by Gen-Probe narrow the specification and that the further order sought by the parties is both within power and appropriate.

The powers of the Court with respect to the non-use removal proceedings 29 The issues with respect to Gen-Probe's non-use removal application are more straightforward. 30 As noted above, Gen-Probe applied to the Registrar under s 92 of the TM Act to remove BCI's ACCESS trade marks from the Register for non-use. That application was referred to this Court pursuant to s 94 of the TM Act. In accordance with orders of the Court, Gen-Probe filed an interlocutory application seeking an order directing the Registrar to rectify the Register by removing, or otherwise narrowing the specifications of, BCI's ACCESS trade marks on the ground of non-use under s 101(2) of the TM Act. 31 It is uncontroversial that the parties may by consent seek the dismissal of Gen-Probe's interlocutory application with no order as to costs. 32 However, the further order sought by the parties, that the Registrar is directed to withdraw Gen-Probe's non-use removal proceedings with no direction as to costs, raises a number of questions. First, the withdrawal of a proceeding is the action of the moving party in the proceeding, not the action of the person or body determining the proceeding. Accordingly, the Registrar has no power to withdraw Gen-Probe's non-use removal proceeding. Only Gen-Probe has the power to do that. Second, in circumstances where Gen-Probe's application was referred to the Court for determination under s 94 of the TM Act, and a Court order will be made dismissing the application, it is not clear how the same proceeding will remain extant before the Registrar such that a further order is required disposing of it. 33 The further order sought by the parties appears to have arisen from a concern by the Registrar that the dismissal of Gen-Probe's interlocutory application will not finally dispose of Gen-Probe's original application to the Registrar under s 92 of the Act. In my view, that concern is unwarranted. Nevertheless, I will make a further order directing Gen-Probe to withdraw its non-use removal application. If the parties require any further order in that respect, they have liberty to apply within 7 days.

Discontinuance and costs 34 The final order sought by the parties is that the proceeding be discontinued with no order as to costs. An order that the proceeding be discontinued is inconsistent with the order that the appeal be allowed (which is a substantive order). I assume that the parties seek an order that the proceeding be otherwise discontinued with no order as to costs, and I will make an order accordingly. I certify that the preceding thirty-four (34) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice O'Bryan.