Mesoblast Inc. sought to appeal the decision in Mesoblast, Inc. v UCP Gen Pharma AG  FCA 509. However, the application to appeal was refused in this case resulting in the primary judge’s decision being upheld.
These cases highlight what parties subject to a removal action should seek to show in support of maintaining registration of a Trade Mark if use within the prescribed period cannot be obtained. Evidence of the following may assist in persuading the court to consider the owner’s private commercial interests in maintaining the registration of the subject Trade Mark:
1. The potential financial losses of the Trade Mark owner if the Trade Mark is removed;
2. The likely financial expenses to be expected in re-branding of the Trade Mark and respective advertising and regulatory expenses that the owner will be forced to incur;
3. The benefits that the Trade Mark owner will gain if the Trade Mark is to remain registered, such as the ability to release Trade Marked goods into the market sooner;
4. The unused Trade Mark will adversely affect the commercial activities of the application for removal, such as the accumulation of evidence to establish that the unused Trade Mark is preventing the applicant for removal from using the same or a similar Trade Mark in respect of its products or services; and
5. The efforts of the Trade Mark owner and its agents to use the Trade Mark, including the efforts up to the time of the hearing of the removal action.
This case illustrates the broad discretion that the Australian courts enjoy in allowing unused Trade Marks to remain on the Australian Trade Marks Office register even though they have not been used within the statutory non-use period.
The lesson for Trade Mark owners from this case and other recent decisions is that should a Trade Mark be vulnerable for removal, the owner should seek to show evidence of their private commercial interests. Other considerations that are taken into consideration by the court include evidence demonstrating the likely detrimental effects removal will have on the public; evidence showing difficulties obstructing Trade Mark use; instances of use of the Trade Mark postdating the removal application; and if relying on foreign evidence, the number of Australians who have acknowledged the presence of the Trade Mark.
If you wish to discuss any of the matters further, please do not hesitate to contact our office.