CSL Behring LLC v Chiron Behring Vaccines Pvt. Ltd

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TRADE MARKS ACT 1995



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

Re:Opposition by CSL Behring LLC to registration of trade mark applications 2150962 (5, 35, 42) – CHIRON BEHRING (Figurative) and 2151277 (5, 35, 42) – CHIRON BEHRING – in the name of Chiron Behring Vaccines Pvt. Ltd.

Delegate:

Nicholas Smith

Representation:

Opponent: Gabriella Rubagotti, Counsel, instructed by Baker & McKenzie

Applicant: Tahlia Dimech of Kings Patent & Trade Marks Attorneys Pty Ltd

Decision:

2024 ATMO 229

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 44 established in respect of a subset of the goods and services – not appropriate to offer an amendment – registration refused

Background

  1. This decision concerns oppositions brought by CSL Behring LLC (‘Opponent’) to the registration of the trade marks (collectively ‘Trade Mark(s)’) which are the subject of the applications detailed below in the name of Chiron Behring Vaccines Pvt. Ltd. (‘Applicant’): 

Application Number:

2150962

Filing Date[1]:

22 Jan 2021

Goods and Services:

Class 5: vaccine formulations; Pharmaceutical vaccination preparations
Class 35: business management; business administration; office functions
Class 45: Scientific and technological services; research and development services; all of the aforesaid related to vaccines

(‘Applicant’s Goods and Services’)

Trade Mark:

Endorsement:

Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

[1] Also known in this decision as the ‘relevant date(s)’.  As the relevant dates for each of the Trade Marks are 4 days apart, nothing turns on the difference the filing date of each of the marks.

Application Number:

2151277

Filing Date[2]:

26 Jan 2021

Goods and Services:

Applicant’s Goods and Services

Trade Mark:

CHIRON BEHRING

Endorsement:

Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

[2] Also known in this decision as the ‘relevant date(s)’. As the relevant dates for each of the Trade Marks are 4 days apart, nothing turns on the difference in the filing date of each of the marks.

  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 applications’ acceptance for possible registration, the Opponent filed Notices of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (subsequently amended) (‘SGP’) on 11 May 2022[3].  The SGP (as amended) raised grounds of opposition under ss 42(b), 44[4], 60, 62 and 62A.  The Applicant filed Notices of Intention to Defend on 4 July 2022. 

    [3] Technically the Opponent has filed separate SGPs for each of the Trade Marks, however the SGPs are identical and thus can be referred to in the singular for the purposes of the decision.

    [4] As the Opponent relied on four registered trade marks and one protected international trade mark application as the basis of this ground of opposition, the technical ground of opposition is under…

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Details
Case
[2024] ATMO 229
Decision Date

CaseChat Overview and Summary

CSL Behring LLC (the Applicant) sought to register certain trade marks, which were opposed by Chiron Behring Vaccines Pvt. Ltd (the Opponent). The Opponent filed a Statement of Grounds and Particulars alleging various grounds for opposition, including those under sections 42(b), 44, 60, 62, and 62A of the relevant Act. The Opponent relied on four registered trade marks and one protected international trade mark application as the basis for its opposition under section 44.

The primary legal issue before the Delegate of the Registrar of Trade Marks was whether the Opponent had successfully established its grounds of opposition, particularly concerning the alleged conflict with its existing trade marks under section 44. The Delegate also had to consider the Applicant's request for an amendment to limit the scope of its trade mark applications and the appropriate disposition of costs.

The Delegate found that the Opponent had established the ground of opposition under section 44. In reaching this decision, the Delegate adopted an approach similar to that in *Source Homeloans Pty Ltd v Coles Group Ltd*, declining to treat the Applicant's broad confidentiality claims as a bar to discussing the evidence. The Delegate determined that there was no principled basis or compelling evidence to allow the Applicant to amend its trade mark applications to a narrower range of services, especially as the opposition had been established for a majority of the goods and services. Consequently, the Delegate refused to register the trade marks.

The Delegate ordered that the refusal be recorded one month from the date of the decision, with a stay in place if a notice of appeal was filed. Regarding costs, despite the general rule that costs follow the event, the Delegate departed from this rule. The Opponent's extensive evidence filing and failure to comply with directions for preparing a summary of submissions were considered to have increased costs and time, leading to an order that each party bear their own costs.

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 applications’ acceptance for possible registration, the Opponent filed Notices of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (subsequently amended) (‘SGP’) on 11 May 2022[3]. The SGP (as amended) raised grounds of opposition under ss 42(b), 44[4], 60, 62 and 62A. The Applicant filed Notices of Intention to Defend on 4 July 2022. [3] Technically the Opponent has filed separate SGPs for each of the Trade Marks, however the SGPs are identical and thus can be referred to in the singular for the purposes of the decision.[4] As the Opponent relied on four registered trade marks and one protected international trade mark application as the basis of this ground of opposition, the technical ground of opposition is under both s 44 of the Act and reg 4.15A of the Regulations rather than just 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 to s 44 and reg 4.15A and the Behring 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: The entirety of the evidence filed by the Applicant, and the entire Schöno-de la Nuez declaration (excluding annexures), including publicly available information such as the public use of the Trade Marks and the Opponent’s Trade Marks or the contents of national trade mark registries, is claimed to be confidential. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit solely in respect of the opponent in that case) stated: The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[5][5] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

Decision

Reasons for decision

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 Marks to limit it to the Class 35 services. There is no evidence before me of the Applicant ever having used, or intending to use the Trade Marks for the Class 35 services or any other obvious principled basis to allow an amendment. In circumstances where the opposition has been established for a majority of the Applicant’s Goods and Services 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 Marks. If the Applicant wishes to register the Trade Marks for a more narrow range of services, such as the Class 35 services 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 Marks. 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. While there is a general rule that costs follow the event, I consider that the Opponent’s decision to file over 1000 pages of evidence and then fail to comply with this office’s directions on the preparation of a summary of submissions (as outlined in paragraph 12 above) amount to a course of conduct that has increased the cost and time of the Applicant and this office. I consider this conduct is disentitling and it is appropriate to depart from the general rule. I instead order that each party pay their own costs. Nicholas SmithHearing OfficerDelegate of the Registrar of Trade Marks26 November 2024

Ratio Decidendi

Legal Principle Established

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