UCP Gen Pharma AG v Mesoblast, Inc [2012] FCA 210

UCP Gen Pharma AG v Mesoblast, Inc [2012] FCA 210

Although the applicant's mark had not been used in Australia during the relevant period and the alleged obstacles were not established for s 100(3)(c), the court exercised discretion under s 101(3) to refuse removal, finding it reasonable in view of the genuine post-period preparations to market the product in Australia, the lack of prejudice to others, and the public and private interests involved.

Parties
Applicant: UCP Gen Pharma AG; Respondent: Mesoblast, Inc
Jurisdiction
Australia
Judgment Date
15 March 2012
Procedural Posture
Appeal Under Trade Marks Act 1995 (cth) S 104 / Judgment After Hearing De Novo
Outcome
Application for removal of trade mark refused; applicant's mark to remain on Register.
Legal Topics
Trade Marks, Non Use Removal Applications, Discretion to Retain Unused Marks
Intellectual Property Trade Marks Non Use Removal Applications Discretion to Retain Unused Marks

Case Brief

Summary, issues, holding and outcome

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Parties

UCP Gen Pharma AG

Applicant

Mesoblast, Inc

Respondent

Procedural Posture

Appeal Under Trade Marks Act 1995 (cth) S 104 / Judgment After Hearing De Novo

Legal Issues

  1. 1 Whether registered trade mark No 590735 should be removed from the Register for non-use under s 92(4)(b) of the Trade Marks Act 1995 (Cth)
  2. 2 Whether non-use occurred because of circumstances that were an obstacle to use under s 100(3)(c)
  3. 3 Whether, in any event, the court should exercise discretion under s 101(3) not to remove the mark

Ratio Decidendi

Although the applicant's mark had not been used in Australia during the relevant period and the alleged obstacles were not established for s 100(3)(c), the court exercised discretion under s 101(3) to refuse removal, finding it reasonable in view of the genuine post-period preparations to market the product in Australia, the lack of prejudice to others, and the public and private interests involved.

Court Disposition

Application for removal of trade mark refused; applicant's mark to remain on Register.

Orders

  • Registered trade mark No 590735 not removed from the Register of Trade Marks pursuant to the application under s 92 of the Trade Marks Act 1995 (Cth).
  • Respondent to pay applicant's costs.