Decisions of the Registrar of Trade Marks regarding International Registrations designating Australia (IRDAs) can be appealed to the Federal Court, and the Court has the same powers in relation to IRDAs as it has for national applications.
In Gen-Probe Incorporated v Beckman Coulter, Inc  FCA 194, Gen-Probe had designated Australia in their IR for OPEN ACCESS. This was accepted by the Registrar, but then opposed by BCI on the basis of its earlier registrations for the mark ACCESS and its reputation in that mark. The Registrar found in favour of BCI on s.60 grounds, that is, that BCI’s reputation in its marks was such that use of OPEN ACCESS by Gen-Probe was likely to deceive or cause confusion.
Gen-Probe appealed the decision to the Federal Court. BCI counter-claimed that the Registrar should also have rejected the IRDA under s.44 (based on their prior registrations) and s. 42(b) (based on claims that use of OPEN ACCESS would breach the Australian Consumer Law). Gen-Probe then sought to remove the BCI registrations for non-use and the non-use action was referred to the Court for hearing along with the appeal.
The Court heard the parties’ submissions, but before a decision was issued, the parties reached an agreement and provided the Court with proposed consent orders allowing the appeal in relation to a restricted range of goods and services, and directing that the non-use action be withdrawn. The Court requested submissions from the parties regarding its power to make the requested consent orders in relation to an IRDA.
The Court noted that reg.17A.34P states that s.56 applies to IRDAs and allows for an appeal from an opposition to such an application, just as it does for a national application. Under s.56, the Court must apply the same legal criteria as the Registrar, and this includes provisions allowing an opponent to withdraw an opposition against an IRDA at any time before a decision is made. Because the Court’s hearing is de novo, it followed that BCI could withdraw its opposition in the appeal proceedings. Following precedent established in several cases relating to appeals on national applications, the Court found that the making of consent orders was generally appropriate for IRDAs, just as it was for national cases.