Gen-Probe Incorporated v Beckman Coulter, Inc

• Jurisdiction: Australia Federal only
• Judgment Date: 08 March 2022
• Neutral Citation: [2022] FCA 194
• Date: 08 March 2022
• Court: Federal Court

Federal Court of Australia

Gen-Probe Incorporated v Beckman Coulter, Inc [2022] FCA 194

Appeal from:	Beckman Coulter, Inc v Gen-Probe Incorporated. [2019] ATMO 182
File number:	VID 45 of 2020
Judgment of:	O'BRYAN J
Date of judgment:	8 March 2022
Catchwords:	INTELLECTUAL PROPERTY – appeal from decision of Registrar of Trade Marks refusing extension to Australia of protection for the trade mark OPEN ACCESS resulting from international registration under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks – application by the appellant seeking order directing the Registrar to rectify the Register by removing, or otherwise narrowing the specifications of, the respondent’s trade mark ACCESS on the ground of non-use under s 101(2) of the Trade Marks Act 1995 (Cth) – where hearing of the appeal and removal application completed and judgment reserved – where parties agreed to settle the proceeding and provided the Court with consent orders post-hearing – consideration of Court’s power to make the orders sought by consent – orders made by consent allowing appeal and dismissing interlocutory application
Legislation:	Trade Marks Act 1995 (Cth) ss 42(b), 44, 56, 92, 94, 189 Trade Marks Regulations 1995 (Cth) regs 17A.11, 17A.12, 17A.24, 17A.25, 17A.28, 17A.34, 17A.34P, 17A.34N, 17A.35, 17A.36, 17A.37 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (27 June 1989) Arts 2, 3ter1
Cases cited:	a2 Milk Co Ltd v LD&D Australia Pty Ltd[2021] FCA 1515; 164 IPR 293 Cadbury Schweppes Plc v Effem Foods Pty Limited [2006] FCA 1267; 69 IPR 584 Hungry Spirit Pty Ltd ATF Hungry Spirit Trust v Fit n Fast Australia Pty Ltd[2019] FCA 1277 Registrar of Trade Marks v Woolworths Ltd(1999) 93 FCR 365 Societe Des Produits Nestle S.A. v Aldi Stores (A Limited Partnership) [2010] FCA 218 Suyen Corp v Americana International Ltd[2011] FCA 300
Division:	General Division
Registry:	Victoria
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	34
Date of last submission:	4 March 2022
Date of hearing:	Determined on the papers
Counsel for the Appellant:	Mr C. Smith
Solicitor for the Appellant:	King & Wood Mallesons
Counsel for the Respondent:	Mr A. D. B. Fox SC
Solicitor for the Respondent:	Chryslegal Pty Ltd

ORDERS

		VID 45 of 2020
BETWEEN:	GEN-PROBE INCORPORATED Appellant
AND:	BECKMAN COULTER, INC Respondent

order made by:	O'BRYAN J
DATE OF ORDER:	8 MARCH 2022

THE COURT NOTES THAT:

The Registrar of Trade Marks has been contacted by the parties in respect of the orders proposed below and has advised that she does not wish to be heard.

THE COURT ORDERS BY CONSENT THAT:

1. The appellant’s appeal constituted by its notice of appeal filed 28 January 2020 be allowed.

2. The decision of the Registrar of Trade Marks dated 18 December 2019 (Beckman Coulter, Inc v Gen-Probe Incorporated.[2019] ATMO 182) refusing to extend to Australia the protection resulting from the international registration of the trade mark OPEN ACCESS, being the subject of the appellant’s International Registration Designating Australia no. 1880980, is set aside.

3. The Registrar of Trade Marks is directed to extend to Australia the protection resulting from the international registration of the trade mark OPEN ACCESS, being the subject of the appellant’s International Registration Designating Australia no. 1880980, in respect of the goods set out in the Schedule to these orders.

4. The appellant’s interlocutory application filed on 16 February 2021 is dismissed with no order as to costs.

5. The appellant is directed to withdraw its application made to the Registrar under s 92 of the Trade Marks Act 1995 (Cth) seeking the removal for non-use of the respondent’s Australian trade mark registrations nos. 571344, 571345 and 571346.

6. The proceedings are otherwise discontinued with no order as to costs.

Schedule

IRDA no. 1880980 for OPEN ACCESS

Class 1: Nucleic acids, chemical reagents and buffers for use in automated in vitro diagnostic specimen analyzer instruments for performing nucleic acid amplification reactions for the detection and assay of nucleic acids for research use; cartridges and containers sold prefilled primarily with lyophilized and liquid reagents for performing nucleic acid amplification reactions for the detection and assay of nucleic acids for research use primarily directed to laboratories for use by laboratory technicians

Class 5: Nucleic acids, chemical reagents and buffers for use in automated in vitro diagnostic specimen analyzer instruments for performing nucleic acid amplification reactions for the detection and assay of nucleic acids for medical diagnostic use in connection with laboratory developed tests; cartridges and containers sold prefilled primarily with lyophilized and liquid reagents for performing nucleic acid amplification reactions for the detection and assay of nucleic acids for medical diagnostic use in connection with laboratory developed tests primarily directed to laboratories for use by laboratory technicians

Class 9: Parts for automated in vitro diagnostic specimen analyzer instrument for performing nucleic acid amplification reactions, for the detection and assay of nucleic acids, all for laboratory use in connection with laboratory developed tests; computer software for the organization and analysis of specimen test data in connection with laboratory developed tests and to configure and control the operation of instrument system for performing in vitro nucleic acid amplification reactions for diagnostic specimen analysis; none of the foregoing measuring electrical resistance

Class 10: Parts for automated in vitro diagnostic specimen analyzer instrument for performing nucleic acid amplification reactions, for the detection and assay of nucleic acids, all for medical diagnostic use in connection with laboratory developed tests; none of the foregoing measuring electrical resistance

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

O’BRYAN J:

Introduction

1. This proceeding concerns International Registration 1370198 with the World Intellectual Property Organisation (WIPO) of the trade mark OPEN ACCESS in classes 1, 5, 9 and 10 held by the appellant (Gen-Probe) and Gen-Probe’s request, under Art 3ter(1) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (27 June 1989) (Madrid Protocol), for extension to Australia of the protection resulting from the international registration (such request being International Registration Designating Australia 1880980 (the IRDA)). The goods in respect of which protection was sought were as follows:

Class 1: Nucleic acids, chemical reagents and buffers for use with automated in vitro diagnostic specimen analyzer instruments for detection and assay of...