Trade Mark News & Information

Trademark Lawyer Sydney – Federal Court – OPEN ACCESS Appeal

Gen-Probe Incorporated v Beckman Coulter, Inc [2022] FCA 194 (8 March 2022)

Successful appeal (by consent)  by Gen-Probe from a Registrar’s decision refusing registration of its application for trademark registration of OPEN ACCESS filed on 30 August 2017 for various diagnostic goods in classes 1, 5, 9 and 10.

Before the Registrar, the opponent relied on its prior use and registration of the trade marks ACCESS and ACCESS 2 for similar laboratory diagnostic goods and prevailed under the s60 reputation ground.

Gen-Probe subsequently sought removal of Beckman Coulter’s trademark registrations for ACCESS in classes 1, 5 and 10 on the ground of non-use and the removal applications were referred to the Court as part of the appeal.

The appeal and removal applications were heard in May 2021 but the parties, in December 2021, informed the Court that they were in advanced settlement negotiations and anticipated consent orders will be filed to resolve the proceedings. The Registrar did not wish to be heard and O/Bryan J approved the consent orders with no order as to costs. These orders, inter-alia, allowed the appeal with Gen-Probe’s OPEN ACCESS trade mark proceeding to protection for an amended specification, and the non-use removal applications being withdrawn.