Abbott Biologicals BV v Novartis AG

[2014] ATMO 60

TRADE MARKS ACT 1995

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

Re:Opposition by Abbott Biologicals B.V. to extension of protection to Australia of trade mark application 1537335(5) – INFLUGARD (IR No. 1145274) - filed in the name of Novartis AG.

Delegate:	Hearing Officer: Nicole Worth
Representation:	Opponent: N/A Holder: Christine Lowe of Davies Collison Cave Patent & Trade Mark Attorneys.
Decision:	2014 ATMO 60 Opposition under Regulation 17A.33 – grounds of opposition under sections 44 and 60 – no grounds established – protection to be extended to Australia.

Background

1. This is a decision pursuant to regulation 17A.33 of the Trade Marks Regulations 1995 (‘the Regulations’). Regulation 17A.34 provides that the extension of protection to Australia of an international trade mark registration may be opposed on any of the grounds for rejection (sections 39 to 44) or grounds of opposition (sections 58 to 61 and 62A) in the Trade Marks Act 1995 (‘the Act’).

2. Novartis AG (‘the Holder’) has applied to extend protection to Australia of its international registration 1145274. Such an application is called an International Registration Designating Australia (an ‘IRDA’), and the details of the Holder’s IRDA are as follows:

   Trade Mark:          INFLUGARD (‘the Trade Mark’)

   IRDA No.:              1537335

   Goods:  Vaccines for human use, in class 5

   Priority Date:         17 December 2012

3. The IRDA was examined and accepted for possible extension of protection to Australia. The acceptance was advertised in the Australian Official Journal of Trade Marks on 11 April 2013.

4. On 15 April 2013 Abbot Biologicals B.V. (‘the Opponent’) filed a Notice of Intention to Oppose and a Statement of Grounds and Particulars, in accordance with amendments to the Act and Regulations which came into force on that day. The Statement of Grounds and Particulars particularised grounds of opposition under sections 44 and 60, as follows (note that the references to “INFLUVAX” should be “INFLUVAC”):

   Section 44

   The opponent is the owner of Australian trade mark registrations 175942 INFLUVAX in class 5 and 1075176 INFLUVAX POWER TO PROTECT device in classes 5, 16 and 41 (the opponent’s registrations). The applicant’s INFLUGARD trade mark is substantially identical with, or deceptively similar to, the trade marks of the opponent’s registrations. The goods of the INFLUGARD application, ‘vaccines for human use’, are similar to the goods of the opponent’s registrations or are closely related to the services of the opponent’s 1075176 registration. The opponent’s registrations have a priority date before the applicant’s INFLUGARD application.

   Section 60

   The opponent’s INFLUVAX trade mark, including as shown in registrations 175942 and 1075176, has acquired a reputation in Australia. The reputation for INFLUVAX is in respect of vaccines, as well as publications and educational material and training and education related to pharmaceuticals and vaccination. The acquired reputation for the INFLUVAX trade mark has existed since at least 2010 and before the priority date of the INFLUGARD application. The reputation for the INFLUVAX trade mark means use of INFLUGARD would be likely to deceive or cause confusion.

5. The Holder filed a Notice of Intention to Defend the IRDA on 5 June 2013. Thereafter the parties filed evidence comprising of:

   Evidence in Support

   ·Statutory declaration of Tania Paula Cresswell Weir (‘Weir 1’), secretary employed by AJ Park Intellectual Property Lawyers & Patent Attorneys, dated 6 August 2013 with exhibit TPCW-1.

   Evidence in Answer

   ·Statutory declaration of Christine Lowe, partner of Davies Collison Cave Patent & Trade Mark Attorneys, dated 22 November 2013 with exhibits CFL‑1 to CFL‑7.

   Evidence in Reply

   ·Statutory declaration of Tania Paula Cresswell Weir (‘Weir 2’), dated 22 January 2014 with exhibits TPCW-1 to TPCW-7.

6. The evidence in support consists of Weir 1, the sole purpose of which is to bring into evidence an extract from the Registrar’s database of trade marks, ‘ATMOSS’, showing the details of the Opponent’s registration 175942 INFLUVAC.

7. The evidence in answer provides details of other IRDA’s owned by the Holder, being INFLUPAN and INNOFLU in respect of the same goods as the subject IRDA, as well as the registration details of two other trade marks, INFLUON and INFLUCOL, owned by third parties. It further provides details of a search of the ATMOSS database from which the declarant, Christine Lowe, ascertained that

   there are 27 pending and registered trade marks in class 5 which contain the elements “IN” and “FLU” as part words. Of these marks, 23 include pharmaceutical preparations within their coverage. 10 of the matches specifically cover vaccines and/or influenza vaccines.[1]

   [1] From the search results exhibited it appears that the 27 marks contain “INFLU” or “FLU”. I note that some of them, although including “INFLU” or “FLU”, are quite different in nature including “INFLUX” and “FlukeKill”.

8. Also included in the evidence in answer is a publication by the Australia Government Department of Health and Ageing entitled “Influ-Info Influenza Kit for Aged Care”, which provides information relating to the prevention and management of influenza outbreaks. Lastly, information about a product named “Influ-Zinc” by a Danish company “Pharma Nord” is exhibited. “Influ-Zinc” appears to be a zinc and vitamin C supplement intended to strengthen the body’s immune system.

9. The evidence in reply, Weir 2, provides print-outs of searches of the Australian Register of Therapeutic Goods. The print outs show that there are no results for INFLUPAN, INNOFLU, INFLUON or INFLUCOL, and that there are four results for INFLUVAC (being in respect of inactivated influenza vaccines under the names INFLUVAC and INFLUVAC JUNIOR, the sponsor of which is the entity “Abbott Australasia Pty Ltd”). Weir 2 also exhibits an extract from the Australian Securities and Investments Commission showing that the owner of the INFLUCOL trade mark “Flinders Natural Pty Ltd” is a deregistered company, and print outs from Pharma Nord’s website giving information about the company and its product list (which does not appear to include “Influ-Zinc” but does include “Bio-Influ-Zinc”).

10. I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 21 May 2014. The Holder was represented at the hearing by Christine Lowe, who also provided written submissions on the Holder’s behalf. The Opponent did not attend or provide written submissions for my consideration.

Onus

1. The Opponent bears the onus of establishing a ground of opposition, and the relevant standard of proof is the ordinary civil one of the balance of probabilities.[2]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.

Section 60

1. For reasons that will become clear section 60 may be quickly dispensed with. It provides:

   60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note: For priority date see section 12.

2. As such the Opponent must show that its trade marks had acquired a reputation in Australia before 17 December 2012, and that because of their reputation the use of the Trade Mark would be likely to deceive or cause confusion in the market place.

3. The Opponent has not provided any evidence of the use of its trade marks. The only information relating to its trade marks is the particularisation of the section 60 ground of opposition in the Statement of Grounds and Particulars, and the extract from the Australian Register of Therapeutic Goods listing INFLUVAC and INFLUVAC JUNIOR as influenza vaccines sponsored by the entity Abbott Australasia Pty Ltd. The Opponent does not provide any sales or advertising figures (upon which it has been found that reputation might be inferred[3]), nor any direct evidence of reputation such as market or customer surveys, nor even examples of the trade mark in use. Reputation cannot be assumed, it must be established as a question of fact.[4] To that end, as there is no evidence before me that goes to the reputation of the Opponent’s trade marks, the ground fails at the first hurdle.

   [3] Per McCormick & Company Inc v McCormick [2000] FCA 1335; (2000) IPR 102.

   [4] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193.

4. Accordingly, the ground of opposition under section 60 is not established.

Section 44

1. Section 44 relevantly provides:

   44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a) the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

2. In order to establish this ground, the Opponent must demonstrate the existence of a trade mark with an earlier priority date than that of the Trade Mark, which is in respect of similar goods or closely related services and which is deceptively similar or substantially identical to the Trade Mark, in the name of a person other than the Holder.

3. The trade marks upon which the Opponent relies, which I will refer to as ‘the Opponent’s trade marks’, are shown in the table below along with the Trade Mark.

The Opponent’s trade marks		The Trade Mark
INFLUVAC	INFLUGARD
Registration 175942 Priority date 6 Sep 1962	Registration 1075176 Priority date 5 April 2005	IRDA 1537335 Priority date 17 Dec 2012
Class 5: Influenza virus vaccines for administration by injection.	Class 5: Pharmaceutical preparations and substances. Class 16: Printed education materials and printed matter. Class 41: Education; providing of trainings; publication and diffusion of publications.	Class 5: Vaccines for human use.

1. The Opponent’s trade marks have priority dates earlier than that of the Trade Mark. The goods of the subject application encompass those of registration 175942, and are encompassed by those of registration 1075176. The only matter that remains is whether the parties’ trade marks are substantially identical or deceptively similar.

2. The term “substantially identical” is not defined in the Act, although the test articulated by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[5] is the accepted standard:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed as having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

   [5] [1963] HCA 66; (1963) 109 CLR 407.

3. In comparing the marks here side-by-side, it is obvious that the Opponent’s trade marks contain a suffix different to that in the Trade Mark. Although all of the trade marks begin with the letters “INFLU”, the Opponent’s end in “GARD” and the Holder’s ends in “VAC”. Additionally, it is likely that “GARD” would be interpreted as a reference to “guard” and “VAC” as a reference to “vaccine”. Notwithstanding the presence of the tag line in registration 1075176, such differences in appearance, pronunciation and idea preclude a finding of substantial identity.

4. The expression “deceptively similar” is defined in section 10 of the Act as a trade mark that so nearly resembles another trade mark that it is likely to deceive or cause confusion. The test for determining whether this is the case was described by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S. Walton and Company Ltd[6]:

   The marks ought not…to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same…The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

   [6] [1937] HCA 51; (1937) 58 CLR 641.

5. The Holder submits that the feature common the parties’ trade marks, the prefix “INFLU”, ought to be discounted to some extent[7] because it is a contracted version of the word “influenza” and therefore descriptive. The Holder also pointed out that there were a number of other registered trade marks containing the prefix “INFLU” and in Beck Koller & Co’s Application[8] it was observed:

   [I]f the registered marks were owned by several different proprietors, this would be a circumstance which might considerably assist the applicant who would be in a position to submit that the common characteristic was one well recognised in marks in use in the particular trade. In short, when the registrar comes to compare the applicant’s mark with the registered marks…the presence of marks on the register other than the one with which the comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account.

   [7] Per Scotch Whisky Association v De Witt [2007] FCA 1649; (2007) 74 IPR 382.

   [8] (1947) 64 RPC 76.

6. I am inclined to agree, for the most part, with the Holder’s submissions. In relation to medical or pharmaceutical products I consider that the prefix “INFLU” will usually give the impression of being related to “influenza” (except where the context is clearly different, such as in the word “influx”). That is not to say that I consider the respective suffixes “GARD” and “VAC” are, of themselves, distinctive features which fix themselves in the mind of the observer and differentiate the trade marks. Rather, I consider they are suffixes alluding to “guard” and “vaccine” respectively and as such are also somewhat descriptive. Nevertheless taken as wholes I consider that the trade marks, albeit all relatively descriptive, are sufficiently different. This is particularly so when viewed in the context of other trade marks on the register, wherein multiple registrations including INFLUON, INFLUCOL and INFLUPAN coexist in respect of similar goods, as do multiple registrations incorporating the prefix “FLU” (a more common abbreviation of “influenza”), also in respect of similar goods.

7. Additionally it ought to be noted that the relevant market for the Holder’s products consists of medical professionals trained to take time and care with the products they dispense. As noted by the delegate in Eli Lily & Co v Douglas Pharmaceuticals[9] “Patients are not the target audience for such trade marks”.

   [9] [200] ATMO 45; (2003) 58 IPR 526.

8. As such I am not satisfied that the level of resemblance between the Opponent’s trade marks and the Trade Mark rises to that required to trigger section 44. Accordingly, the ground under section 44 is not established.

Decision and costs

1. Regulation 17A.34N of the Regulations provides:

   (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

   (2) The Registrar must notify the International Bureau of the Registrar’s decision.

2. The Opponent has not established any of its grounds of opposition. I therefore direct that protection of IRDA 1537335 (IR No. 1145274) be extended to Australia in respect of all of the goods specified in the IRDA one month from the date of this decision.

3. If the Registrar is served with a notice of appeal before protection is extended, I direct that protection shall not occur until the appeal is withdrawn or discontinued. Otherwise I direct that extension of protection of the IRDA be subject to any orders of the court.

4. The Holder sought its costs. Costs generally follow the event, and I see no reason to depart from the general principle here. Accordingly, I award costs against the Opponent as per Schedule 8 of the Regulations.

Nicole Worth
Hearing Officer
Trade Marks Hearings
26 June 2014