Merck KGaA v U.S. Neutraceuticals LLC

Merck KGaA (the opponent) opposed the application by U.S. Neutraceuticals LLC (the applicant) for registration of the trade mark "Zanthin". The dispute concerned whether the applicant's proposed mark was deceptively similar to the opponent's registered trade mark "Zactin", which is used in relation to applications in the treatment of depressive and obsessive compulsive disorders. The hearing was conducted before Jock McDonagh, a delegate of the Registrar of Trade Marks.

The sole ground of opposition pursued was under section 44 of the *Trade Marks Act 1995* (Cth), which requires rejection of an application if the applicant's trade mark is substantially identical with, or deceptively similar to, a registered trade mark in respect of similar goods or closely related services. The court was therefore required to determine whether the marks "Zactin" and "Zanthin" were deceptively similar, and whether the respective goods, namely prescription medications for psychiatric disorders and nutritional supplements, were similar or closely related.

The delegate considered the evidence presented by both parties. The opponent argued that the marks were similar and that the goods were sold in proximity, creating a risk of confusion. The applicant contended that the marks were sufficiently different and that their products, prescription drugs versus nutritional supplements, were distinct and unlikely to cause confusion. The delegate found that while there was some similarity in the marks, the differences in the goods and their respective channels of trade were significant enough to mitigate the risk of deception. The delegate noted that prescription medications are distinct from nutritional supplements, which are typically sold in health food stores and supermarkets, and that the likelihood of confusion was remote.

The delegate dismissed the opposition on the ground of deceptive similarity. The applicant's trade mark "Zanthin" was permitted to proceed to registration one month from the date of the decision, subject to any appeal. The opponent was ordered to pay the applicant's costs.