UCP Gen Pharma AG v Mesoblast, Inc

REASONS FOR JUDGMENT 1 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. 2 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 (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. 3 On 20 March 2008, the respondent, Mesoblast, Inc (then called "Angioblast Systems Incorporated") applied for the removal of the applicant's mark from the Register. The three-year period referred to in s 92(4)(b) was, therefore, between 20 February 2005 and 20 February 2008. It is common ground that the applicant's mark was not used in Australia at any time during this period. 4 In support of its case that, notwithstanding the statutory period of non-user, the applicant's mark should remain on the Register, the applicant relied on two provisions of the Act. First, it relied on s 100(1)(c) and 100(3)(c) of the Act, which provide as follows: 100(1) In any proceedings relating to an opposed application, it is for the opponent to rebut: …. (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services. …. 100(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. The effect of these provisions (in which a party in the position of the applicant is referred to as the "opponent") is that, notwithstanding non-user in fact, the applicant is entitled to make good the contrary proposition by establishing, under s 100(3)(c), that the non-user occurred because of circumstances that were an obstacle to the use of the mark during that period. 5 Secondly, and in the alternative, the applicant relied on s 101(3) of the Act, which provides as follows: (3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established. The applicant's case was that, even if it were not held that the non-user occurred because of circumstances that were an obstacle to the use of the applicant's mark within the meaning of s 100(3)(c), the court should still, in the exercise of its discretion, allow the mark to remain on the Register. 6 A pharmaceutical agent for use in the prophylaxis and treatment of venous thrombosis for hip and knee operations, desirudin, was developed in Switzerland in the early 1980's by Plantorgan Werk Heinrich GE Christensen KG ("Plantorgan"). In May 1981, Plantorgan licensed its rights in respect of desirudin to Ciba-Geigy AG ("Ciba-Geigy"). In June 1987, Plantorgan transferred all its intellectual property rights for the gene technological manufacturing activity of desirudin to the applicant. 7 The name under which desirudin would be marketed as a pharmaceutical product (except in the USA) was to be "REVASC". An application for the registration of that word as a trade mark in Australia was made in the name of Ciba-Geigy in November 1992. Registration was granted in January 1995. It is the applicant's mark. REVASC was approved under the Gene Technology Act 2000 (Cth) in October 1996 (that was the way the matter was put both in the evidence and in the parties' submissions - the chronological oddity is probably to be explained by reference to the deeming provisions in s 190 of that Act as enacted in 2000) and under the Therapeutic Goods Act 1989 (Cth) ("the TG Act") in November 1996. However, at this stage, REVASC as a product had not been introduced to the market in Australia or, it would seem, anywhere in the world. Indeed, desirudin itself had not yet been commercially manufactured. 8 In 1996, Ciba-Geigy undertook a merger with another company, from which the resulting new company was Novartis International AG ("Novartis"). Novartis therefore held the rights in relation to REVASC that were previously held by Ciba-Geigy. In June 1998 Novartis sub-licensed the rights which it had under licence from the applicant to Rhone-Poulenc-Rohrer, Inc ("Rhone-Poulenc"). Novartis was to manufacture desirudin and to supply all of Rhone-Poulenc's requirements in that regard up to 150 kg annually. Intellectual property rights, including the applicant's mark and the REVASC mark elsewhere (except in the USA) were the subject of an exclusive licence to Rhone-Poulenc. 9 By the late 1990's, it seems (the actual timing and details were not clearly disclosed on the evidence), Novartis had reached the stage of manufacturing desirudin, and REVASC was launched by Rhone-Poulenc as a product in Germany, France, the UK and some other countries. Nothing happened, however, in respect of Australia. 10 In 1998 Rhone-Poulenc merged with Hoechst AG ("Hoechst") to form Aventis SA ("Aventis"). However, as the result of proceedings in the Federal Trade Commission in the USA in January 2000, Aventis was obliged to divest itself of REVASC. This meant that Novartis had, in effect, lost its sub-licensee for the marketing of REVASC. Whether or not associated with that, the fact is (and it was not dealt with very clearly in the evidence) that Novartis decided not to continue with the product at all. In 2002, Novartis produced the last of the batches of REVASC at its manufacturing facility at Basel and, in July of that year, Novartis and Rhone-Poulenc, now an "affiliate" of the Aventis group, entered into an agreement to terminate the sub-licence with effect from 31 December 2002, subsequently extended to 31 December 2003. In May of the same year, the licence of May 1981 was terminated by agreement as between the applicant and Novartis. The termination was to have effect from December 2002, subsequently extended to 30 June 2003. 11 On 23 December 2003, the applicant granted to Canyon Pharmaceuticals Inc ("Canyon") the exclusive licence to manufacture, use and sell desirudin/REVASC, including patents, know-how and trade marks. As to the latter, the grant included an exclusive licence of the applicant's right, title and interest in the registered mark "REVASC", subject to the applicant's right to monitor the quality of goods sold under those marks. At the time the applicant's mark in Australia was still registered in the name of Novartis, and, as it happens, continued to be so registered until 20 February 2006, when it was assigned to the applicant. The agreement between the applicant and Canyon was terminated with effect from 1 January 2010, and a like agreement entered into between the applicant and Canyon's holding company, Canyon AG (to which I shall hereafter refer also as "Canyon", without discrimination). It was not suggested that anything turned on this re-arrangement, which appears to have been done as a matter of convenience, and to carry no consequences of present relevance. 12 Having secured the rights referred to in the previous paragraph, Canyon commenced to negotiate with Novartis for access to the facility previously used to manufacture desirudin, and to the small but essential group of skilled workers with the relevant experience in the production process. These parties - by companies which I assume were associated in some relevant way, Canyon Pharmaceuticals AG, and Novartis Pharma AG and to which I shall also refer as "Canyon" and "Novartis" respectively - signed a letter of intent on 14 September 2004 regarding the acquisition by Canyon of Novartis's desirudin production plant in Basel. Pursuant to that letter of intent, on 9 February 2005, but effective from 1 January 2005, these parties executed what was described as a "consulting services agreement" ("the CSA"). 13 The term of the CSA was for 12 months commencing on 1 January 2005. Canyon was to acquire from Novartis certain services "relating to the start-up and ramp-up" of the Basel plant. Novartis was to "allocate appropriately skilled employees to provide the services". Canyon was to have access to the plant in anticipation of the formal transfer of the plant from Novartis to Canyon, which was a member of a suite of agreements intended to give effect to the permanent acquisition by Canyon of the wherewithal to manufacture desirudin. The CSA provided for a consulting fee to be paid by Canyon to Novartis, to be paid by unequal monthly instalments on the first day of each month in 2005. 14 The CSA provided for either party to exercise a power of termination on 30 days' notice. By letter to Canyon dated 29 July 2005, Novartis gave notice of the termination of the agreement, effective on 31 August 2005. It appears that the reason for this notice was Canyon's failure to make payments which were said to be due, and to comply in various respects with what were, in Novartis' contention at least, certain obligations which arose under the letter of intent of 14 September 2004. As a result of discussions between the parties in August, Novartis agreed to extend the termination date to 30 September 2005, and to continue the CSA to 1 December 2005 if certain payments were made by Canyon. These provisions were set out in a letter from Novartis to Canyon dated 23 August 2005, which was not part of the applicant's original affidavit evidence. In October 2005, Canyon and Novartis executed other agreements, including what was described as an "Umbrella Agreement" with respect of the transfer of the Basel manufacturing plant to Canyon. 15 Although the documentary evidence upon which the previous paragraph of these reasons is based was tendered by the applicant, that occurred towards the end of its case, and well after the witness who had given evidence of the events in question had concluded his evidence. That witness, Dr Ernst Schweizer, said only (in his affidavit) that "Novartis withdrew its assistance commitment", and (in his oral evidence): You see, the discussions started in 2004 and beginning of 2005 agreement was signed and agreement was that Canyon can buy an old manufacturing building from Novartis for SwF5 million. And the second part of the deal was that Novartis will make available the team to produce Revasc for six to eight weeks each year … and the problem was that within 2005 Novartis acquired Chiron and then something very unlucky happened; Novartis said, "Sorry, you can have the building but we can't give you the team." Canyon had already started to renovate the building because an FDA inspection was planned and when then Canyon learned that the team was not available the whole thing blowed up because it was impossible for Canyon to hire a team of different experts within reasonable time. When asked whether there had been a question as to whether Novartis was legally entitled to withdraw, Dr Schweizer (who had previously been employed by a Novartis company) said: [T]hat was a big question, but, … I must say that is always the case: what will a small company of a few people do against a big company. I, coming from Novartis, I was terribly disappointed of the behaviour of my colleagues at Novartis. Dr Schweizer made no reference to any suggestion that Canyon may have been in default under the CSA, to Novartis's allegations in the regard, or to the matters to which I have referred in para 14 above. 16 It is established that Novartis (to use Dr Schweizer's term) "withdrew" from the CSA, but the document - assuming there was one - by which that withdrawal was done was not placed into evidence by the applicant. For a party which asks the court to find that Canyon's conduct apropos the withdrawal was wholly benign, that is not a satisfactory situation. The matters to which I have referred at para 14 above give rise to the clearest of inferences that Canyon was in default under the CSA, at least in the contention of Novartis. The matters referred to called for an explanation. Canyon was, and is, in the evidentiary camp of the applicant. Dr Schweizer was, and remains, a close associate and friend of the owner of the applicant, Uwe Christensen. Counsel for the applicant stressed to me that her client had come into possession of the documentary material relevant to the CSA only late in the piece. This was, it seems, as a result of a notice to produce served by the respondent. That may be so, but it leaves the applicant in the position of a party which chose to lead evidence of a significant event without reference to the documents which lay at the centre of it. 17 In the circumstances, I am not prepared to hold that the withdrawal of Novartis from the CSA occurred without default on the part of Canyon. 18 Having lost its arrangements with Novartis, Canyon set about trying to find an alternative manufacturing facility for desirudin. After some unproductive negotiations with a Swiss company, ultimately an agreement was entered into on 22 December 2006 (but effective as of 1 October 2006) between Canyon and Boehringer Ingelheim Austria GmbH ("Boehringer"). The services to be provided by Boehringer were set out in an appendix to the agreement which was not placed into evidence, but the agreement itself described them as "services for process transfer and optimisation, implementation and manufacture" of desirudin. Manufacturing was to occur, and subsequently did occur, in Boehringer's new plant in Vienna. 19 Over the next three years or thereabouts, steps were taken to produce the desirudin-based pharmaceutical which would be marketed as REVASC. Establishing the manufacturing process itself, and gathering a workforce with the necessary expertise, were no simple matters. Dr Schweizer explained a deal of this in his evidence, but it does not need to be laid out here. Another company at a different location (Wasserburg in Germany), incorporated the desirudin into the physical product that would be marketed - vials and manmitol ampules. A company in the Canyon group packaged and labelled REVASC for the European market. Yet another company prepared pre-filled syringes of REVASC for the US market (albeit that the product was there to be labelled "IPRIVASK"). During this period, Canyon oversaw a number of manufacturing process improvements, which themselves required new regulatory applications to be made in the US and Europe. By the end of 2009, the product was available for sale in those markets. It seems that the first commercial "launch" of the product was in Germany in October 2009. this was followed by a launch in the USA (under the name "IPRIVASK") in March/April 2010. 20 By agreement made on 8 January 2009, Canyon made an interim agreement with Polartechnics, Ltd ("Polartechnics") of Erskinville, NSW, for Polartechnics to assume overall responsibility for transferring the marketing authorisation for REVASC from Sanofi-Aventis to Polartechnics in the territory of Australia and New Zealand. This was said to be "with the long-term objective of launching the product … throughout the territory". Canyon was to supply REVASC, and Polartechnics was to perform a range of functions necessary to have the product approved by the regulatory authorities, and to carry out "the exploitation and distribution functions in the capacity of a service provider" and other functions. 21 Unfortunately, Polartechnics encountered financial difficulties and was placed under external administration on 10 February 2010. So Canyon terminated the agreement of 8 January 2009. A new agreement was entered into with RxConnect Pty Ltd ("RxConnect") of Abbotsford, Victoria, on 30 April 2010. With the co-operation of Polartechnics, RxConnect secured the transfer to itself of the REVASC registration on the Australian Register of Therapeutic Goods maintained under the TG Act. 22 The arrangement with RxConnect was, however, a temporary expedient while Canyon sought a new Australian distributor to replace Polartechnics. The company ultimately appointed was Emerge Health Pty Ltd ("Emerge") of Hawthorn, Victoria. Emerge was appointed as the new Australian marketing authorisation holder, distributor and sponsor of REVASC on 2 December 2010. Sponsorship of the product under the TG Act was transferred to Emerge. Before it agreed with Canyon to undertake this sponsorship, Emerge met with a number of medical specialists with a view to gauging their interest in the drug. 23 By March 2011, Emerge had secured Good Manufacturing Practice certificates from the Therapeutic Goods Administration ("the TGA") for four of the five industrial sites involved in the manufacture, preparation and packaging of REVASC. By August 2011, it had received such certification in respect of the fifth site. This permitted Emerge to update the REVASC product information and consumer medicine information, and the updated versions were uploaded onto the TGA website. Emerge also re-contacted the specialists who had expressed an interest in REVASC and alerted them to the imminent launch of REVASC in Australia. 24 REVASC was included on the Emerge product lists published in June 2011. These lists are distributed monthly to 130 recipients, including hospitals, pharmacies, medical practitioners and orthopaedic surgeons. In June 2011, Emerge made arrangements to include REVASC in a suite of medical software known as "Medical Director". More than 17,000 general practitioners and 1400 specialists subscribe to Medical Director. 25 On 20 October 2011, Emerge received 40 units of REVASC from Canyon. As at the date of the trial of this proceeding, this stock remained in store. It seems that REVASC has not yet been commercially launched in this country. 26 The leading authority in this court with respect to s 100(3)(c) is Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166. In that case, Drummond J took the view that the words "an obstacle to the use of the trade mark by the registered owner" suggested that the circumstances referred to "must arise from or comprise events external to the registered owner in the sense of not having being brought about by the voluntary act of the owner" (107 FCR at 180 [48]). His Honour went further, to express the view that the circumstances also needed to be "of a trading nature" (107 FCR at 181 [49]). Having given consideration to the extrinsic materials which he was permitted to consult under s 15AB of the Acts Interpretation Act 1901 (Cth), Drummond J said (107 FCR at 182 [54]-[55]): It is apparent from these extrinsic materials that s 100(3)(c) was not intended by the Parliament to provide a defence to an attack on a registered trade mark for non-use on any grounds, including grounds entirely personal to the trade mark owner that do not bear any trading character, so long only as they do not arise from the voluntary actions of the owner. 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 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. Compare Re James Crean & Son Ltd's Trade Mark at 162. 27 Counsel for the applicant submitted that there had been no use of the applicant's mark in Australia over the three-year period which is relevant in this case because of a number of circumstances. She went back to the requirement placed upon Aventis to divest itself of the desirudin product in 2000, which, she submitted, effectively led to the winding down and eventual discontinuation of the production of REVASC. However, this occurred well before the commencement of the three-year period presently of interest, and, although I do not exclude the possibility, in an appropriate case, of circumstances arising prior to the commencement of such a period amounting to an obstacle to use within the period, the present is not, in my opinion, such a case. Substantially because of the time interval involved, I am not persuaded that the causal connection to which Drummond J referred exists between the need for Aventis to divest itself of REVASC and the applicant's failure to use the applicant's mark in the period commencing on 20 February 2005. 28 It was next submitted on behalf of the applicant that Novartis's withdrawal from the CSA in late 2005 constituted a circumstance which was an obstacle within the meaning of s 100(3)(c). I have not, however, found as fact that this withdrawal occurred without default on the part of Canyon (the entity by which, or under the authority of which, the applicant's mark would be used in Australia, if it were to be used at all). Although the evidence is not sufficient to permit me to make a categorical finding as to the circumstances in which the CSA came to an end, the applicant carries the onus of proof in relevant respects, and I am not persuaded that those events amounted to anything more than the inability of Canyon (the applicant's alter ego for present purposes) so to arrange its affairs as to secure the manufacture of the pharmaceutical product that would become REVASC. 29 Counsel for the applicant next submitted that it took until the end of 2006 to find an alternative manufacturer for desirudin, and from then until 2009 to transfer the manufacturing know-how from Novartis to Boehringer, to develop a suitable manufacturing facility and improved manufacturing processes, and to register Boehringer with the relevant authorities in Europe. It will be apparent that these submissions really take the matter no further for the applicant. Essentially, they involve no more than an identification of the steps inevitably required to produce a new pharmaceutical product. The position in which the applicant found itself was, on one view, the inevitable result of its decision, many years previously, to secure trade mark registration in Australia well in advance of it having the wherewithal to manufacture the product to which the mark would be applied. These matters are not, in my view, circumstances of the kind referred to in s 100(3)(c). 30 Counsel for the applicant mentioned other travails of the applicant, outside Australia, in bringing REVASC to the market subsequent to the making of its new arrangements with Boehringer. Neither individually nor in combination, however, did they amount to obstacles of the kind referred to in s 100(3)(c). 31 For the above reasons, I am not persuaded that the non-use of the applicant's mark in the three-year period commencing on 20 February 2005 arose because of circumstances that were an obstacle to the use of the mark during that period. 32 I turn next to the general discretion invested in the court by s 101(3) of the Act. This discretion has been described as "broad" (CA Henschke and Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 73 [72]), and as "not limited" (Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 176 FCR 300, 334 [173]). Like any undirected statutory discretion, however, it must be exercised conformably with the objects of the statute under which it arises. 33 As it happens, some guidance on the approach to be taken under s 101(3) has recently been given by the Full Court in Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, to which I was referred by the parties after I had reserved judgment. Their Honours emphasised that the question which arises under the subsection is as stated, namely, whether it is reasonable not to remove the trade mark from the Register, notwithstanding that it had not been used during the statutory period (at [28]). Their Honours accepted (against the facts of the particular case) that it was relevant to ask whether removal of the mark from the Register would lead to deception or confusion (at [31]). Their Honours confirmed that public interest considerations were proper to be taken into account in the exercise of the discretion, but accepted that the private interests of traders also might be considered in an appropriate case. They said (at [38]): The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion. Their Honours accepted that, although the situation existing at the end of the statutory period was relevant, the position had to be assessed as at the time when the discretion came to be exercised. User since the end of the statutory period might be taken into account, at least where that user was "in good faith, and not colourable" (at [41]). Their Honours also accepted that the owner's intention to use the mark, and not to abandon it, was proper to be taken into account in an appropriate case (at [43]). 34 The Full Court did not suggest that these observations covered the whole field with respect to the considerations that arise in the context of the exercise of the discretion for which s 101(3) provides. Rather, they reflected the issues, and the dynamics, of the case that was before it. Nonetheless, their Honours' treatment of the subject is of some assistance in the resolution of the question arising in the present case. 35 Looking at the matter as at the end of the statutory period in the present case, it could not be said that there was any outward indication of an intention to use the applicant's mark in Australia. But that was not because of any decision to abandon the mark; nor was it because the applicant, through Canyon, had simply lost whatever interest in the use of the mark was implicit in its original registration. Although I have rejected the applicant's case under s 100(3)(c), it cannot be gainsaid that, over a period of some years, Canyon had demonstrated a determination to bring desirudin to the market. Not specifically the Australian market as such, but I consider it be reasonable for Canyon to have taken the approach that the establishment of REVASC in Europe should be given priority. The point is that this is not a case in which the product to which the applicant's mark would be applied was well-established and commonly used elsewhere. Rather, I must recognise that the manufacture of the product itself was in the course of development and that, as we have seen, was not without its challenges (albeit not "obstacles"). 36 The present position - that obtaining as I exercise my discretion under s 101(3) - is one in which I must recognise the reality that REVASC now exists as a pharmaceutical product being traded under that name in Europe, and that Canyon, through Emerge, has made all the necessary arrangements, and secured all the necessary approvals, for the imminent launch of the product in Australia. Although these steps were taken subsequent to the filing of the respondent's application under s 92 of the Act, they were genuine, and not merely token, steps. In the words of the Full Court in Austin Nichols, they were taken in good faith, and not colourably. They bespeak not only the intention to use the mark, but the commitment of resources by Canyon and those with whom it has contracted to bring REVASC to the market in Australia. 37 It is also, in my opinion, relevant that REVASC is, of its nature, of interest to a very narrow, specialised, market. The evidence justifies the conclusion that it is medical professionals concerned with hip and knee operations who might be most interested in REVASC. The applicant led evidence of references to REVASC, by name, in many professional journals available to these specialists in Australia. As counsel for the respondent stressed, particularly when cross-examining the relevant witness, these references were generally singletons buried in the footnotes. But they were there nonetheless, and I should not presume that they could not be of interest to a specialised readership. Likewise, in its pre-launch preparations for REVASC, Emerge has opened up lines of communication with practitioners in the relevant area of surgery. They have been informed of the imminent release of REVASC and will, inferentially, be keeping an eye out for it with a view to considering the incorporation of it into their various practices. 38 From the perspective of the public interest, the s 101(3) scales are fairly evenly balanced. The applicant's mark has not, even to the date upon which I reserved judgment, been used in Australia. There is, therefore, a negligible, if any, prospect that anyone will be deceived or confused by the removal of the mark from the Register. Further, it clearly being in the public interest to keep the Register free of marks that bear no relevance to actual trade in goods or services, there is, on one view at least, every reason to pause before arriving at the positive conclusion that it would be reasonable not to remove the mark from the Register. On another view, however, this consideration underlies s 92(4)(b) itself, and is reflected in the direction in which the onus of proof, and of persuasion, lies under ss 100(3)(c) and 101(3). Those provisions allow for a mark which has not been used to be allowed to remain on the Register in the circumstances to which they refer, and effect must be given to their terms. 39 On the other hand, if there is some detriment to the public interest from allowing the applicant's mark to remain on the Register, it is not, in my view, in size or nature a matter of real, practical, concern. There is neither evidence nor suggestion that any other trader desires to use the mark, or anything similar to it. Neither does any member of the public - consumer or professional - stand to be adversely affected if the mark were to be allowed to remain on the Register. Further, if the process under s 92(4)(b) is to be seen as an exercise in good housekeeping, the applicant's mark, being an artefact which is about to be brought into use, would naturally be retained on the shelf rather than dispatched to waste. 40 It is the private interests of the applicant and its proxies - Canyon and Emerge - that stand to derive the most obvious benefit from any decision the court makes that the mark should be allowed to remain on the Register. These interests are proper to be taken into account. Indeed, as the Full Court observed in Austin Nichols, the accommodation of the private interests of trade mark owners seems to be the very point of the discretion arising under s 101(3). In all of the facts of the present case, I have not been able to discern a single circumstance which would cause the court to pause before giving recognition to the reality to which I referred in para 36 above. The respondent's case was not based on any suggestion that its own interests would be detrimentally affected if the mark were to be allowed to remain on the Register. There is no apparent prejudice, or risk of prejudice, to the private interests of any other person. 41 If the applicant's mark were to be removed from the Register, the applicant (and here I include also those by whom REVASC would be distributed in Australia) would seem to have a choice, either to press ahead with its existing arrangements to bring REVASC on to the market as such without the protection provided by registration, to re-brand the product in the way its licensee was obliged to do in the USA or to withdraw from the Australian scene altogether. Each of these outcomes would be obviously detrimental to the applicant. None would deliver any corresponding benefit to any other person. Although the applicant has the onus of proof and of persuasion under s 101(3), I fail to perceive any countervailing justification for the exercise of the court's discretion adversely to the applicant. 42 I also take into account the fact that, if the applicant's mark is allowed to remain on the Register, that need not be the end of the matter for all time. Should it transpire, contrary to all present indications, that the mark is not used in Australia, either the respondent or some other interested party could make application again under s 92(4) by reference to the circumstances existing at the time. 43 For the reasons set out above, I am satisfied that it is reasonable that the applicant's mark not be removed from the Register. 44 In his decision in favour of the respondent of 1 July 2010, the delegate said: 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. There was an appeal within one month, on 21 July 2010. In the circumstances, the direction conditionally made by the delegate did not come into effect. The only order now required is that the applicant's mark not be removed from the Register pursuant to the respondent's application under s 92 made on 20 March 2008. 45 I shall order the respondent to pay the applicant's costs, but, lest there be some circumstance of which I am unaware that might bear upon the proper costs order to be made in the circumstances, I shall stay the operation of that order for 14 days, and give the parties liberty to apply. I certify that the preceding forty-five (45) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jessup.