ASEP Healthcare Ltd v Multigate Medical Products Pty Ltd [2015] ATMO 24

Multigate Medical filed a trade mark application for TourniTape Logo (shown below) in relation to surgical and medical goods in Class 10.  That application was opposed by ASEP.

ASEP is an UK based company that holds several patents worldwide for an adhesive strip, offered for sale under the trade mark TourniStrip.  Multigate Medical was the exclusive distributor of TourniStrip goods in Australia.  The agreement between the parties was ended by ASEP due to a lack of sales made by Multigate Medical in 2012.

The Hearing Officer noted that the use of the trade mark TourniStrip by Multigate (on behalf of ASEP) during the period of the agreement (2011-2012) appeared to be the only use of the trade mark in Australia and was not significant enough to warrant further consideration under section 60.

As ASEP was unable to establish the required level of use to trigger section 60, it was also unable to establish the required level of use for misleading or deceptive conduct to be considered under section 42(b).

On section 58, ASEP argued that the prior use of TourniStrip represented prior use of a substantially identical trade mark to the applied for TourniTape trade mark.  The Hearing Officer concluded that the respective trade marks were not substantially identical as, whilst sharing, a common prefix, the prefixes are well known to carry some direct meaning in relation to the goods involved, and the overall trade marks were not so similar as to be considered substantially identical.

The final ground of opposition pursued by ASEP was that Multigate Medical filed its application in bad faith (section 62A).  The Hearing Officer’s view was that there was a suggestion of bad faith, but, on balance, a finding of bad faith could not be supported.  Primarily, this seems to have been due to the Hearing Officer noting that the applicant filed its trade mark application several days after the agreement between the parties had ended.

The opposition failed on all grounds and the TourniTape trade mark is to proceed to registration.

To view the Office decision, click here.