Gen-Probe Incorporated v Beckman Coulter, Inc  FCA 194
Appeal from decision of Registrar of Trade Marks refusing extension to Australia of protection for an international registration – non-use application – hearing of appeal and removal application completed and judgment reserved – parties agreed to settle the proceeding – consent orders – power of the Court
Justice O’Bryan held that he had power to dismiss, by consent, an appeal and referred non-use application from the Registrar of Trade Marks. His Honour also held that it was appropriate to do so given the Registrar did not wish to be heard on the dismissal and given there was no absolute public policy ground objection to grant of the trade mark, such as a section 41 attack (lack of capacity to distinguish). Notably, his Honour was not concerned that there was a section 42(b) attack on the mark (use of the mark would be contrary to law). His Honour considered it was appropriate to dismiss the proceedings, even though the trial had been heard with judgment reserved.
This proceeding concerned Gen-Probe Incorporated’s International Registration for the trade mark OPEN ACCESS and Gen-Probe’s request under the Madrid Protocol (the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks) for extension to Australia of the protection resulting from the international registration. The Registrar of Trade Marks had refused extension to Australia, having decided that Beckman Coulter, Inc had established a ground of opposition under section 60 of the Trade Marks Act 1995 (Cth) on the basis of the reputation of its registered Australian trade marks for ACCESS.
Gen-Probe appealed the Registrar’s decision to the Federal Court. Beckman Coulter then advanced contentions that the delegate’s decision should be affirmed on additional grounds, namely section 44 of the Act (substantially identical or deceptively similar marks), and on the basis of section 42(b) of the Act (use of the mark OPEN ACCESS would be contrary to the Australian Consumer Law).
Gen Probe had separately applied to the Registrar under section 92 of the Act to remove Beckman Coulter’s ACCESS trade marks from the Register for non-use. This matter was referred to the Court by the Registrar under section 94 of the Act, and the Court ordered that the non-use application be heard and determined by the Court as part of the appeal proceeding.
After the Court had heard the appeal and non-use application, and before judgment was delivered, the parties settled both matters and sought to have orders made by consent allowing Gen-Probe’s appeal, narrowing Gen-Probe’s International trade mark specification, dismissing the non-use application, and directing the Registrar to withdraw Gen-Probe’s non-use removal action.
The question for the Court was whether it had power to make the orders sought by consent and, if so, whether those orders were appropriate.
In relation to the opposition to Gen-Probe’s International registration, the Court noted that earlier decisions of the Federal Court had 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 consent orders, the orders sought are within the power of the Court to make and may be appropriate. In this case, the only opposition was by BCI and the Registrar had provided a letter to the Court confirming that the Registrar did not oppose the orders being sought.
Justice O’Bryan noted that this case was different to that in a2 Milk Co Ltd v LD&D Australia Pty Ltd  FCA 1515 where Bromwich J declined to make orders by consent that a trade mark proceed to registration. In the a2 Milk case, the opposition was based on a number of grounds, including section 41 (the opposed mark was not capable of distinguishing), which was an absolute public interest ground of opposition, which was not to be answered by agreement between two traders. Furthermore, in contrast to the case before Justice O’Bryan, in a2 Milk the Registrar had declined to provide the Court with a letter confirming no objection to the making of the orders. The authors note that, while section 41 was not raised against the Gen Probe mark, section 42(b) (which prohibits the registration of marks the use of which would be contrary to law) was in issue and it might be said that there was also a public interest in not allowing the mark to proceed to registration if its use would be unlawful. The answer to that might lie in the fact that, if such use is unlawful, it could be restrained by a court on the application of any party pursuant to the Australian Consumer Law.
The Court also concluded that it had the power to narrow the specification of the international registration and that it could make an order by consent dismissing Gen-Probe’s application seeking removal of BCI’s mark for non-use. However, O’Bryan J held that there was no basis to order the Registrar to withdraw Gen-Probe’s non-use removal proceeding. Logically, only Gen-Probe could withdraw its application. However, the Court did have power to direct it to do so, and made an order accordingly.