Trade mark application number 2339187 (class 1) - - [2025] ATMO 112

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 2339187 (class 1) - PB - in the name of Activated Carbon Technologies Pty Ltd

Delegate:

Sheona Robertson

Representation:

Applicant: Ryan Maguire of counsel instructed by Hibbert & Hodges Lawyers

Decision:

2025 ATMO 112

Trade Marks Act 1995 (Cth) – section 33 proceeding – section 44 considered – trade mark deceptively similar to earlier registered mark – insufficient evidence of use filed – trade mark application rejected.

Background

This decision follows a hearing request by Activated Carbon Technologies Pty Ltd (‘Applicant’) under s 33 of the Trade Marks Act 1995 (Cth) (‘Act’) in relation to the following application (‘Application’):

Trade mark number:	2339187
Trade Mark:	PB (‘Trade Mark’)
Priority date:	3 March 2023
Goods:	Class 1: Activated carbon (‘Goods’)

The Application was examined under s 31 of the Act and an adverse examination report dated 11 May 2023 raised a ground for rejection under s 44 of the Act. The Examiner cited the following Australian trade mark registration in the name of Pacific Biosciences of California Inc (‘Cited Mark’) as the basis for the ground for rejection:[1]
[1] The Examiner also cited as a ground for rejection Australian trade mark registration number 2169295, also in the name of Pacific Biosciences of California Inc, in respect of an identical trade mark in classes 5, 9 and 10 with a priority date of 21 December 2020. However, the ground for rejection based on this trade mark was later withdrawn as protection of that trade mark had been cancelled.

Number:

Trade Mark:

Goods:

Priority Date:

1110131

Class 1: Assays and reagents, for use in biochemical analysis and medical diagnostics

Class 9: Laboratory instruments, including laboratory instruments used for scientific research, including optical detectors for genetic sequencing and biochemical analysis; medical diagnostic instruments

2 November 2005

In a further adverse examination report issued on 18 October 2023, the ground for rejection based on the Cited Mark was maintained.
The Applicant filed submissions principally arguing that the Trade Mark is not deceptively similar to the Cited Mark because the Cited Mark contains distinctive elements that are absent from the Trade Mark, and which would create a distinct and striking impression that would not be overlooked. Alternatively, the Applicant contended that there had been use of the Trade Mark to satisfy the requirements of s 44(3)(a) of the Act, or other circumstances existed that would justify the acceptance of the Application for registration pursuant to s 44(3)(b) of the Act. The submissions filed at the examination stage were accompanied by a statutory declaration of Peter Donald Cullum, Managing Director of the Applicant, made on 18 June 2024 together with Annexures PDC-1 to PDC-3 (‘Cullum 1’).
Following receipt of a further adverse examination report dated 12 July 2024, the Applicant requested to be heard by way of written submissions. The matter was allocated…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2025] ATMO 112
Decision Date: 6 June 2025

CaseChat Overview and Summary

This decision concerns a trade mark application by Activated Carbon Technologies Pty Ltd for the mark "PB" in Class 1 for activated carbon. The application was opposed under section 44 of the *Trade Marks Act 1995* (Cth) by Pacific Biosciences of California Inc, citing their earlier registered trade mark, also featuring "PB" but with additional graphical elements, for goods including assays and reagents for biochemical analysis and medical diagnostics. The delegate of the Registrar of Trade Marks was required to determine whether the applicant's mark was deceptively similar to the cited mark and whether the goods were similar or closely related.

The primary legal issues before the delegate were whether the applicant's trade mark was substantially identical with or deceptively similar to the cited registered trade mark, and whether the goods covered by the respective marks were similar or closely related. The delegate also considered the applicant's alternative arguments that there had been sufficient use of the trade mark to satisfy the requirements of section 44(3)(a) of the Act, or that other circumstances justified acceptance under section 44(3)(b).

The delegate found that the goods, activated carbon and reagents for biochemical analysis, were of the same description and therefore similar, noting that activated carbon could notionally be included in the definition of a reagent. Regarding deceptive similarity, the delegate determined that while the marks were not substantially identical, they were deceptively similar. This conclusion was based on the shared prominent and memorable feature of the letters "PB," which were considered the dominant element in both marks, despite the additional graphical elements in the cited mark. The delegate reasoned that consumers, recalling the "PB" element, might assume the marks originated from the same trade source.

Ultimately, the delegate was not satisfied that the evidence filed by the applicant demonstrated prior continuous use or honest concurrent use sufficient to overcome the ground for rejection under section 44. Consequently, the delegate rejected the trade mark application.

Orders