Beckman Coulter, Inc. v Cplus Biotech Pty Ltd

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TRADE MARKS ACT 1995



DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Beckman Coulter, Inc. to registration of trade mark application 2333593 (9,10) – CYTOPHEX – in the name of CPLUS BIOTECH PTY LTD.

Delegate: Nicholas Smith
Representation: Opponent: Davies Collison Cave Pty Ltd
Applicant: Legalvision ILP Pty Ltd
Decision: 2025 ATMO 53
Trade Marks Act 1995 (Cth) - section 52 opposition: s 44 considered – ground established – registration refused

Background

  1. This decision concerns an opposition brought by Beckman Coulter, Inc. (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of CPLUS BIOTECH PTY LTD (‘Applicant’): 

Application Number:

2333593

Filing Date[1]:

13 February 2023

Goods:

Class 9: Apparatus for laboratory use (other than medical); Biological safety cabinets; Bioreactor apparatus; Bioreactor instruments; Bioreactors for cell culturing for scientific research; Bioreactors for laboratory use; Bioreactors for research use; Cell culture apparatus for laboratory use; Cell culture instruments for laboratory use; Centrifuges for laboratory use; Cytometers; Incubators for bacteria culture; Incubators for laboratory use; Instruments for scientific research in laboratories; Insulated bottles (flasks) for laboratory use; Insulated vessels for laboratory use; Culture dishes; Culture plates; Laboratory articles (other than for medical use); Microplates (reagent testing apparatus), other than for medical use; Microscopes; Purification apparatus (laboratory, other than medical); Safety cabinets for scientific purposes; Apparatus for scientific research in laboratories; Research apparatus for scientific use; Scientific apparatus; Scientific apparatus for laboratory use (other than for medical diagnosis); Scientific equipment; Testing apparatus for diagnostic purposes (other than medical)
Class 10: Biomedical testing apparatus; Cell counting units for medical use; Cell culture apparatus for medical use; Cell culture instruments for medical use; Centrifuges for medical use; Hemocytometers; Incubators for medical purposes; Apparatus for administering pharmaceuticals; Purification apparatus (medical); Medical apparatus and instruments; Medical diagnostic apparatus; Medical diagnostic apparatus for laboratory use; Medical diagnostic apparatus for sale in kit form; In-vitro diagnostic testing apparatus for medical use; Medical testing apparatus; Therapeutic apparatus (medical)

(‘Applicant’s Goods’)

Trade Mark:

CYTOPHEX

(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

  1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

  2. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 13 October 2023.  The SGP raised grounds of opposition under ss 42(b), 44[2] and 60.  The Applicant filed a Notice of Intention to Defend on 23 November 2023. 

    [2] As the Opponent relied on a protected international trade mark application as the basis of this ground of opposition, the technical ground of opposition is under reg 4.15A of the Regulations rather than s 44 of…

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Details
Case
[2025] ATMO 53
Decision Date

CaseChat Overview and Summary

This matter concerned an opposition filed by Cplus Biotech Pty Ltd (the Opponent) against the trade mark application by Beckman Coulter, Inc. (the Applicant). The Opponent sought to oppose the registration of the Applicant's trade mark on grounds including section 44 of the *Trade Marks Act 1995* (Cth) (and regulation 4.15A of the Regulations, which was substantively identical for the purposes of the decision). The proceedings were heard by Nicholas Smith, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Opponent had established its grounds for opposing the registration of the Applicant's trade mark, particularly under section 44, which relates to the registration of trade marks that are identical or deceptively similar to earlier trade marks. The delegate was required to determine if the Applicant's proposed trade mark was likely to cause confusion with the Opponent's registered trade mark, considering the goods and services for which each was registered.

The delegate found that the Opponent had successfully established the ground of opposition under section 44. This conclusion was reached despite the Applicant not filing any evidence of use of its trade mark. The delegate noted that the Applicant's proposed specification of goods was broader than the Opponent's registered goods, but a significant portion of the Applicant's goods were related to the Opponent's goods. Given the lack of evidence of use by the Applicant and no compelling submissions or principled basis for amendment, the delegate determined it was not appropriate to offer an amendment to the Applicant's application. Consequently, the delegate refused to register the Applicant's trade mark. The Opponent was awarded costs against the Applicant.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 13 October 2023. The SGP raised grounds of opposition under ss 42(b), 44[2] and 60. The Applicant filed a Notice of Intention to Defend on 23 November 2023. [2] As the Opponent relied on a protected international trade mark application as the basis of this ground of opposition, the technical ground of opposition is under reg 4.15A of the Regulations rather than s 44 of the Act. However, as the terms are substantively identical for all relevant purposes and for ease of reading, I have retained the reference to s 44 in this decision. References to s 44 as considered in the present decision should be taken to read reg 4.15A and the Opponent’s Trade Mark (as defined later in the decision) should be recognised as a protected international trade mark application.Evidence The parties filed the following evidence in this matter: Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions. On 19 July 2024 the Opponent requested a hearing by written submissions and paid the appropriate fee. The matter was set down for a hearing on 18 February 2025. In line with usual practice, a letter was sent to the parties on 12 December 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Opponent filed written submissions on 2 February 2025 (‘Opponent’s Submissions’). The Applicant did not file any submissions. I am a delegate of the Registrar of Trade Marks (‘Registrar’) and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:(a)to refuse to register the trade mark; or(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;having regard to the extent (if any) to which any ground on which the application was opposed has been established. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.The Opponent The Opponent is an United States of America company that offers a range of diagnostic and life sciences products. The Opponent is the owner of the trade mark listed below (‘Opponent’s Trade Mark’). The goods for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods’. Given my finding that the ground of opposition has been established pursuant to s 44 of the Act (and the Applicant has not filed any evidence of use), it is not necessary to summarise the Xu declaration in any great detail. The Xu declaration (and annexures) states that the Opponent has used the Opponent’s Trade Mark in Australia since June 2015 and provides evidence of the Opponent’s reputation (though sales and promotion) in the Opponent’s Trade Mark. The Applicant

Decision

Reasons for decision

I note the specification for the Trade Mark is broader than the Opponent’s Trade Mark, being in respect of a broader range of scientific apparatus other than the measuring apparatus of the Opponent’s Trade Mark. However, in the present case, as noted in paragraph 16 above, the section 44 ground has been established in respect of a very significant portion of the Applicant’s Goods. To the extent that any of the Applicant’s Goods are not related to the Opponent’s Goods (and I note that the Applicant has made no submissions to suggest that this is the case) neither party has raised the possibility of an amendment and in particular the Applicant has not suggested that I should offer an amendment nor identified a principled basis to allow the amendment of the Trade Mark to limit it to a particular subset of the Applicant’s Goods. There is no evidence before me of the Applicant ever having used the Trade Mark for anything other than cytometres or measuring apparatus, which are the goods the Opponent’s Trade Mark is registered for. In circumstances where the opposition has been established for a significant proportion of the Applicant’s Goods and there is no compelling evidence or submissions suggesting the need for an amendment, I do not consider it appropriate to offer an amendment in respect of the Trade Mark. If the Applicant wishes to register the Trade Mark for a more different range of goods it may make a separate application.Decision and Costs I have found the Opponent has established the ground of opposition it raised pursuant to s 44. As the delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of this application should be in accordance with the Court’s orders or directions. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.Nicholas SmithHearing OfficerDelegate of the Registrar of Trade Marks11 March 2025

Ratio Decidendi

Legal Principle Established

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