Re: Oppositions by Siemens Healthcare Diagnostics Inc. to registration of trade mark application numbers 1921241(10), 1921243(9), and 1921280(5) - READIFLEX - in the name of Abbott Laboratories

This matter concerned oppositions filed by Siemens Healthcare Diagnostics Inc. (the Opponent) against three trade mark applications by Abbott Laboratories (the Applicant) for the mark READIFLEX. The oppositions were based on grounds under sections 44, 60, and 62A of the *Trade Marks Act 1995* (Cth). The hearing officer, Debrett Lyons, was required to determine whether any of these grounds were established on the balance of probabilities as at 20 April 2018, the priority date for the applications.

The Opponent contended that the mark READIFLEX was deceptively similar to its registered trade marks READY PACK and FLEX, and that the use of READIFLEX would be likely to deceive or cause confusion. The Opponent also alleged that the applications were made in bad faith, given that both parties operate in the same market for in-vitro testing goods and the Applicant was aware of the Opponent's registrations prior to the priority date. The Opponent asserted that its READY PACK and FLEX trade marks had been in use in Australia since 1997. The Applicant acknowledged the Opponent's registrations and the parties' competitive relationship but denied the allegations of confusion and bad faith.

The hearing officer first considered the ground under section 60, which requires proof that another trade mark had acquired a reputation in Australia before the priority date, and that the use of the applied-for mark would be likely to deceive or cause confusion due to that reputation. The hearing officer found that the Opponent had not established any of the grounds of opposition under sections 44, 60, or 62A. Consequently, the applications were permitted to proceed to registration, subject to any appeal. The Applicant was awarded costs against the Opponent, with reduced costs awarded in respect of two of the applications.