Abbott Laboratories v Perkin Elmer Corporation

Abbott Laboratories (the opponent) opposed the registration of four trade mark applications (numbers 749561-749564) by Perkin Elmer Corporation (the applicant), which comprised the word mark ABI PRISM and the word and device mark ABI PRISM and DEVICE. These applications related to computer hardware and software for life science research, including DNA sequencing. The opponent contended that the applicant's marks were not capable of distinguishing the goods, that their use would be contrary to law, and that they were substantially identical or deceptively similar to the opponent's registered trade marks and unregistered use of the mark PRISM in relation to diagnostic reagents and instruments. The opposition was heard by a delegate of the Registrar of Trade Marks.

The delegate was required to determine whether the applicant's trade marks were inherently capable of distinguishing the goods, whether their use would be contrary to law under section 42 of the Trade Marks Act 1995, and whether they were substantially identical or deceptively similar to the opponent's marks under section 44 of the Act. The delegate also considered an application by the applicant to introduce further evidence at a late stage of the proceedings.

The delegate refused the applicant's request to introduce further evidence, finding that it could have been obtained earlier and was not relevant to the determination of rights as at the filing date of the applications. Regarding the grounds of opposition, the delegate found that the applicant's trade marks were inherently capable of distinguishing the goods under section 41 of the Act, as the examiner had initially found and the opponent had not provided sufficient evidence to disturb this finding. The delegate also found that the use of the applicant's marks would not be contrary to law under section 42, as there was no evidence of conduct that was misleading or deceptive or likely to mislead or deceive, which is a higher threshold than deceptive similarity. The delegate did not proceed to consider the section 44 ground as the opposition had not succeeded on the earlier grounds.

Consequently, the opposition was dismissed, and the trade mark applications were allowed to proceed to registration. Costs were awarded against the opponent.