Trade mark application number 2339187 (class 1) -

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.