Beckman Coulter, Inc. v Cplus Biotech Pty Ltd

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.