Neurim Pharmaceutical (1991) Ltd v Clariant AG

Neurim Pharmaceutical (1991) Ltd (the Opponent) opposed the extension of protection to an international registration designating Australia by Clariant AG (the Holder). The Opponent, a pharmaceutical research and development company, sought to prevent the registration of the Holder's trade mark B-CIRCADIN, arguing it was confusingly similar to its own registered trade mark CIRCADIN, used for pharmaceutical preparations. The Holder, a speciality chemicals company, developed B-CIRCADIN as an active ingredient for the cosmetic industry, named to reflect its impact on the human body's circadian rhythm.

The court was required to determine whether the grounds of opposition, based on sections 42(b), 44, 58, and 60 of the *Trade Marks Act 1995* (Cth), were established. Specifically, the court had to consider if the Holder's proposed trade mark was likely to deceive or cause confusion, if it was substantially identical or deceptively similar to the Opponent's registered mark, or if it was an improper use of a registered trade mark.

The court found that the Opponent had not established any of the nominated grounds of opposition. The Opponent's evidence detailed its use of CIRCADIN for pharmaceutical products, while the Holder's evidence explained its use of B-CIRCADIN for cosmetic ingredients sold through business-to-business channels. The court concluded that the differences in the marks and their respective goods and services, as well as the distinct marketing channels, meant there was no likelihood of deception or confusion. Consequently, the opposition was dismissed, and the extension of protection for the Holder's international registration was allowed. The Opponent was ordered to pay the costs of the Holder.