Glaxo Wellcome (Aust) Ltd v Bukwang Pharm Co Ltd

This matter concerned an opposition by Glaxo Wellcome (Aust) Ltd to the registration of a trade mark by Bukwang Pharm Co Ltd. The opponent, Glaxo Wellcome, sought to prevent the registration of Bukwang Pharm's trade mark on the grounds that it was deceptively similar to their own registered trade mark, RETROVIR. The delegate of the Registrar of Trade Marks heard the matter.

The primary legal issue before the delegate was whether Bukwang Pharm's trade mark was deceptively similar to Glaxo Wellcome's registered trade mark RETROVIR, within the meaning of section 44 of the *Trade Marks Act 1995* (Cth). This involved assessing the likelihood of deception or confusion among consumers in the marketplace.

The delegate reasoned that the assessment of deceptive similarity under section 44 of the Act requires a positive finding of a likelihood of deception or confusion, rather than an exercise of discretion based on broader public policy considerations. The delegate noted that unlike previous legislation, the *Trade Marks Act 1995* does not grant the Registrar a broad discretion to refuse registration on grounds such as general health policy. The delegate referred to previous decisions, including *Merck KGaA v Generic Health Pty Ltd* and *Registrar of Trade Marks v Woolworths*, to support the interpretation that the focus must be on concrete evidence of marketplace impact and the likelihood of consumers being deceived or confused. The delegate also distinguished the present case from *Edward's Application*, which involved an exercise of discretion that is not available under the current Act.

The delegate found that the evidence presented did not establish a likelihood of deception or confusion. Consequently, the opposition was dismissed, and the trade mark application proceeded to registration.