Schering Aktiengesellschaft v Bracco International B.V

This decision concerns an opposition filed by Schering Aktiengesellschaft (Schering) against the trade mark application for "SONOVUE" by Bracco International B.V. (Bracco). The application, filed in October 1996, sought registration for "SONOVUE" in relation to contrast media for in-vivo imaging, falling within International Class 5. Schering, a German corporation, opposed this application on various grounds under the *Trade Marks Act 1995* (Cth), but ultimately pressed only the ground under section 44, alleging deceptive similarity to its registered trade mark "SONOVIS T" for similar goods. The hearing was conducted by the Registrar of Trade Marks in Canberra.

The primary legal issue before the Registrar was whether the trade mark "SONOVUE" was deceptively similar to Schering's registered trade mark "SONOVIS T" in respect of goods within Class 5, specifically contrast media for in-vivo imaging. This required an assessment under section 44 of the *Trade Marks Act 1995*, which mandates rejection of an application if the applicant's mark is substantially identical with or deceptively similar to a registered trade mark for similar goods, provided the priority dates align. The Registrar also had to consider the impact of recent Federal Court decisions, particularly *Registrar of Trade Marks v Woolworths* (the "Metro case"), on the application of established case law regarding deceptive similarity and the onus of proof in opposition proceedings.

The Registrar reasoned that while both "SONOVUE" and "SONOVIS T" share the prefix "SONO," which is commonly used in relation to sound and ultrasound technology, and have some phonetic similarities and shared elements of meaning, they are not substantially identical. The Registrar applied the principles from *Registrar of Trade Marks v Woolworths*, which clarified that the onus is on the opponent to demonstrate a "real tangible danger" of deception or confusion, rather than a mere possibility. The Registrar noted that the goods specified in Bracco's application were a narrow range, and while the "SONO" prefix is prevalent in the field, the specific suffixes "-vue" and "-vist" create distinct impressions. Considering the context of the goods, which are specialised medical contrast agents used by professionals, and the existing trade marks on the register, the Registrar concluded that there was no real likelihood of consumers being deceived or confused into believing the products originated from the same source.

Consequently, the Registrar dismissed Schering's opposition to the registration of the trade mark "SONOVUE" by Bracco International B.V.