CSL Behring LLC v Chiron Behring Vaccines Pvt. Ltd

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.