Abbott Laboratories v Perkin Elmer Corporation

[2002] ATMO 101

TRADE MARKS ACT 1995

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

Re:Opposition by ABBOTT LABORATORIES to registration of trade mark application numbers 749561-749564(9) - ABI PRISM, ABI PRISM and DEVICE - in the name of PERKIN ELMER CORPORATION.

DATE OF DECISION:

31 October 2002

DELEGATE:

Hearing Officer Claudia Murray

REPRESENTATION:

Opponent

Julia Baird, of Counsel, instructed by Griffith Hack Patent and Trade Mark Attorneys

Applicant

Philip Kerr of Allens Arthur Robinson Patent and Trade Mark Attorneys

DECISION:

1. Section 52 Opposition: registration allowed - s 55(b)

2. Costs awarded against opponent

Background

Trade mark applications numbered 749561, 749562, 749563 and 749564 were all filed on 26 November 1997, by Perkin Elmer Corporation (the applicant). However, each of the applications claims an earlier filing date under section 50 of the Trade Marks Act 1995 (the Act) by virtue of claiming divisional status from earlier trade mark applications. This has resulted in the applications numbered 749561 and 749564 claiming the filing date of 11 July 1995, and applications numbered 749562 and 749563 claiming the slightly earlier date of 20 April 1995. All four applications are in respect of goods in class 9 of the International (Nice) Classification of Goods and Services. Application numbers 749561 and 749563 are for the word trade marks ABI PRISM. Application numbers 749562 and 749564 are for the word and device trade mark:

The relationships between the applications are perhaps best understood by setting out their details in table form:

TM No.	Trade Mark	Priority Date	Statement of Goods
749561	ABI PRISM	11 July 1995	Computer hardware and software for life science research, particularly for DNA sequencing, fragment analysis, genetic analysis, electrophoresis, linkage analysis, gene discovery and genetic mapping, scientific instruments for use in relation to life science research
749562	ABI PRISM and DEVICE	20 April 1995	Computer hardware and software for use in scientific research, including DNA sequencing
749563	ABI PRISM	20 April 1995	Computer hardware and software for use in scientific research, including DNA sequencing
749564	ABI PRISM and DEVICE	11 July 1995	Computer hardware and software for life science research, particularly for DNA sequencing, fragment analysis, genetic analysis, electrophoresis, linkage analysis, gene discovery and genetic mapping, scientific instruments for use in relation to life science research

The four trade mark applications were accepted for registration at the first report, and their acceptances were advertised in the Official Journal of Trade Marks on 2 April 1998 (745563 and 745564) and 23 April 1998 (749561 and 749562).

On 12 June 1998 Abbott Laboratories (the opponent) filed notices of opposition to registration of the trade marks. Fifteen grounds were listed in the notices, challenging broadly across all the available opposition issues.

The opponent's evidence in support and the applicant's evidence in answer was duly served and filed. After the opponent formally notified that it had decided not to serve and file evidence in reply, both parties requested a hearing of the opposition. This came before me, as a delegate of the Registrar, in Sydney on 25 July 2002. Ms Julia Baird, of Counsel, instructed by Griffith Hack Patent and Trade Mark Attorneys, Sydney, represented the opponent. Mr Philip Kerr, assisted by Ms Trudie Sarks, both of Allens Arthur Robinson, Sydney, represented the applicant at the hearing.

Evidence

Evidence in Support

The opponent's evidence in support comprises a declaration by Mr Kenneth Branighan, dated 30 June 2000. Mr Branighan is the General Manager of Abbott Diagnostics Division, a division of Abbott Australasia Pty Limited, which is a wholly owned subsidiary of the Illinois-based opponent.

In his declaration, Mr Branighan draws attention to the following Australian trade mark registrations held by the opponent:

TM No.	Class	Trade Mark	Filing Date	Statement of Goods
570244	5	ABBOTT PRISM	6 Jan 1992	Diagnostic reagents to be used in blood banks and laboratories for determination of blood type and detection of the presence of disease states
570245	10	ABBOTT PRISM	6 Jan 1992	Diagnostic instruments to be used in blood banks and laboratories for determination of blood type and detection of the presence of disease states

Mr Branighan also declares that the opponent is the owner of the unregistered trade mark PRISM which, he says, it selected and adopted for use as a trade mark in the United states in 1991. He further declares, (and provides exhibits to support this) that the opponent applies its ABBOTT PRISM trade mark to its diagnostic instruments - known in the market, he said, as PRISM analysers - in conjunction with a triangular "prism" device, as pictured below:

Mr Branighan explains that, since the Adelaide Blood Bank made the first Australian order, in late 1994, for the opponent's analyser system, similar systems have also been installed in the Perth, Brisbane, Melbourne and Sydney Blood Banks. He declares:

The transfusion viral screening market in Australia is administered by the Australian Red Cross Blood Service (ARCBS) which is a government funded, non-profit organisation. Approximately 950,000 blood donations are made annually. These are all screened for HIV virus, Hepaptitis B and C and the HTLV virus. Abbott's PRISM analysers process these tests in all of Australia's main centres. Abbott's PRISM analyser is also used by Commonwealth Serum Laboratories which is a privatised ex-government body which processes blood products for sale in the Australian and international markets.

Mr Branighan's declaration is supported by annexures KB1-KB4.

Evidence in Answer

The applicant's evidence in answer comprises a statutory declaration by Ms Marianne Hane, dated 26 June 2001. Ms Hane describes herself as a Director for Genetic Analysis for Applied Biosystems, a division of Applera Corporation, formerly Perkin Elmer. Ms Hane declares that the mark ABI PRISM was adopted and first used in November 1994, as a brand name for a line of genetic analysis products including instruments, software, reagents, reagent kits and accessories. She says that the term "prism" was adopted to identify the source of the services because the range of colours produced when light passes through a prism is analogous to colours which are produced through Applied Biosystems' technology of genetic analysis of DNA through fluorescence labelling.

Ms Hane continues:

The mark ABI PRISM is used in connection with machinery, namely gene sequencers and related products such as reagents and computer software which are used in decoding DNA molecules. Genetic sequencers are individually sold for hundreds of thousands of dollars. The sequencers and related products are sold to large institutions such as universities or government research centres which conduct genetic research. ABI PRISM gene sequencers are instrumental in deciphering or sequencing the human genome...It is clear from the evidence submitted that as the gene sequencers under which the mark ABI PRISM are sold serve a highly specialized purpose, it is highly unlikely that the Applicant's goods will be confused with the Abbott Labs' 'diagnostic instruments and reagents to be used in blood banks and laboratories for determination of blood types and the detection of the presence of disease states'. Moreover, as one might gather from the material submitted, one does not go out and simply buy a gene sequencer and the attendant accessories at a local science supply store. A research laboratory or institution deals with a sales or marketing representative from Applied Biosystems. Thus, the sale of gene sequencers is completed under controlled circumstances leaving no room for doubt as to the origin of the goods.

Ms Hanes' declaration is supported by Annexures A, B, C and D.

Further Evidence

At the commencement of the hearing, Mr Kerr sought leave to introduce further evidence in support of the applicant. He produced an application for permission to serve further evidence, accompanied by a declaration by Ms Trudie Sarks, dated that day. Exhibits TMS1-TMS5 support the declaration, being copies of webpages downloaded from the applicant's Australian website. The application explains that the new material is further to material from the website annexed to Ms Hane's declaration. It says:

It is appropriate for the Registrar to have evidence of the current state of the Applicant's website which is different to the evidence in answer which has been previously filed and served in these opposition proceedings.

Before and after a brief adjournment of the hearing so that the material could be considered, Ms Baird objected vigorously to the applicant's proposal to introduce further evidence at such a late stage in proceedings. She said that, whether it represented a "lamentable afterthought", or perhaps a "surprise tactic" of the applicant's, it was substantial, new and different information which postdated the applications' filing date, yet still could have been put on earlier, and its inclusion should be refused at this point.

In the applicant's defence, Mr Kerr submitted that the information had only come to light as the applicant's hearing submissions were being prepared. He said that the material was not qualitatively different from the evidence in answer already on record. Further, even though it post-dated the application dates, it was material relating to the applicant's use of its marks and sale of goods in Australia which supported a case for honest concurrent use of those trade marks with the opponent's trade marks.

After briefly examining the evidence, and hearing submissions from both sides on the question of whether it should be allowed in, I indicated that I was not inclined to do so. However, the parties agreed that the hearing would proceed with a final decision on the matter still pending. If, after closer consideration of the material I decided after all to grant the application, I would allow the opponent the opportunity to reply to it and to make submissions relating to costs. This course would also have necessitated reconvening the hearing at a later date.

D R Shanahan, in Australian Law of Trade Marks and Passing Off, 1990 at page 71, cites the conditions for admissibility of further evidence spelled out by Dalton J in the British case Oxon Italia's Application [1981] FSR 408 at page 409:

a)  It must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage.

b)  The evidence must be such that it would probably have an important influence on the result of the case.

c)  The evidence must be such as presumably to be believed, that is, it must apparently be credible, though not necessarily incontrovertible.

Shanahan goes on to say that the Registrar should also take into account the public interest in allowing the evidence in, and bear in mind that fresh evidence cannot be excluded on appeal to the court. As Hearing Officer Homann observed in Studio Buying Systems SrL v Buying Systems (Aust) Pty Ltd (1991) 22 IPR 580 at page 585:

Obviously it would be preferable for the matter to be finally decided by the registrar if the admission of further evidence would allow this to be done.

Taking into account all of the above criteria, I conclude that there is nothing to be gained in this opposition by allowing the applicant's new material in. While I have no issue with the credibility of the evidence, I have heard no convincing arguments that, with some forethought, it could not have been obtained from the applicant's website earlier. Further, it is accepted law that the rights of the parties are to be determined as at the date of application for registration. (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; restated in Registrar of Trade marks v Woolworths Limited (the Metro case) 45 IPR 411 at 428.) With particular reference to Mr Kerr's submissions relating to honest concurrent use, the relevant date before which that use must have occurred is the date of application for registration (Simac SpA Macchine Alimentari's Application (1987) 10 IPR 81). Therefore, examples showing how the applicant's website is currently structured can have little or no relevance to the fundamental issues of this opposition. Finally, because it lacks relevance to those fundamental issues, the further evidence also fails to meet the extra considerations mentioned above, of the public interest and the possibility of eventual inclusion of the evidence on appeal.

Having decided not to allow the application for permission to serve further evidence, I can now move on to decide the opposition as a whole.

Grounds of Opposition

While mentioning at one point that the opponent did not resile from any of the wide-ranging list of grounds initially covered in its notices of opposition, Ms Baird confined her submissions at the hearing to grounds under sections 41, 42, 44, 58 and 60. Mr Kerr had prepared written submissions (albeit some much briefer than others) in response to all the grounds listed in the notices. However, it is not necessary for me to report here those submissions responding to grounds that were not pressed by the opponent on the day.

Section 41 - capacity to distinguish

Section 41 sets out the tests which the Registrar must apply, in determining whether or not a trade mark is capable of distinguishing the goods sought to be registered. This is a long provision, which I will not reproduce in its entirety here. The manner of its operation is closely analysed by Branson J in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (the Oregon case), to which Ms Baird referred in her submissions. As I have previously indicated, the applicant's trade marks were all accepted at first report. This indicates that, in the examiner's opinion, the mark satisfied the threshold test set in section 41 for capacity to distinguish. The marks were considered on their face to be capable of distinguishing the applicant's goods, in terms of subsection 41(3), with no further enquiry required by the delegate of the Registrar.

However, subsection 41(4) provides that the Registrar may apply further tests for capacity to distinguish, if he or she is unable to decide the question under subsection 41(3). For example, the Registrar may decide that the trade mark is only to some extent inherently adapted to distinguish. In this case, he or she may consider, under the provisions of paragraph 41(5)(a), the effect of that reduced level of inherent adaptability to distinguish, combined with:

• the use, or intended use, of the trade mark by the applicant;

• any other circumstances;

in order to determine whether the trade mark does or will distinguish the designated goods or services as being those of the applicant.

Alternatively, the Registrar may find that the trade mark is not, to any extent, inherently adapted to distinguish the designated goods. Then he or she must take the trade mark to be not capable of distinguishing those goods, unless the trade mark qualifies under the following provision of paragraph 41(6)(a):

If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Submissions

In her submissions, Ms Baird cited the well-known test for a trade mark's inherent adaptability to distinguish set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (the Michigan case). That is, whether the trade mark is one which other traders are likely in the ordinary course of business and without improper motive to desire to use upon or in connection with their goods. She contended that the applicant had admitted in its evidence it adopted the word component PRISM in its trade marks because it referred to "a character or quality in use of the goods to which the marks are sought to be registered". She then submitted that the inclusion of the component ABI did not overcome that reference, so that it followed that the applicant's trade marks were not inherently adapted to distinguish its goods. Ms Baird said I should now consider whether the applicant's evidence of use of its marks had discharged its burden of proof under section 41. Not surprisingly, it was the opponent's submission that it had not.

Mr Kerr responded that the applicant had made no admission as to the descriptive nature of its trade marks. Ms Hane had merely said in her declaration that the applicant's process of genetic analysis of DNA through fluorescence labelling was analogous to the process that occurs when light passes through a prism. Further, Mr Kerr said there was nothing in the opponent's evidence to show that any of the applicant's trade marks were signs ordinary used to indicate the nature of the goods to which the marks were applied. Finally he pointed out that, although it was the applicant's argument that each of its trade marks was capable of distinguishing in terms of subsection 41(3), it could rely, if necessary, on the evidence of use it had led.

Discussion

The test for inherent adaptability to distinguish referred to by Ms Baird is set out by Kitto J in the Michigan case, supra, at page 514:

The question [of] whether a mark is adapted to distinguish [should] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

Ms Baird's claim for the opponent that the applicant's trade marks are not inherently adapted to distinguish rested solely upon the reference in the applicant's evidence to how the word PRISM mark was chosen because of an analogy, or partial similarity, with the process performed by the goods in question. Mr Kerr has insisted that this does not represent an admission by the applicant that the word is directly descriptive of its goods, and I agree with him. Further, as Mr Kerr has rightly pointed out, the opponent's own evidence does not address this issue. This is even though, as it has also chosen the word PRISM for inclusion in its trade marks, it might be expected to be able to expand with some authority upon the precise connection of the word with analytic and diagnostic equipment. Finally, none of the applicant's trade marks represent the word PRISM alone, the marks are ABI PRISM, and ABI PRISM and DEVICE.

Under these circumstances, I decline to disturb the examiner's initial finding that the applicant's trade marks are of themselves capable of distinguishing within the meaning of the Act. Accordingly, no evidence of use or other circumstances is necessary to support the application. In summarising Blount J's guidelines upon this issue in the Oregon case, supra, the Trade Marks Office Manual of Practice and Procedure says, at Part 22, paragraph 3.2:

If the Registrar is able to decide, on the basis of its inherent qualities, that the trade mark is capable of distinguishing the goods or services of the applicant from those of other persons, the matter is resolved in favour of the applicant. This does not mean the Registrar must be in no doubt about the trade mark's capacity to distinguish. The Registrar may have some reservations in the matter but still decide that the trade mark is capable of distinguishing.

The opposition has therefore not succeeded upon the section 41 ground.

Section 42 - use of trade mark contrary to law

Subsection 42(b) of the Act provides:

An application for the registration of a trade mark must be rejected if:

(b) its use would be contrary to law.

Submissions

Ms Baird submitted that, following Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, "the Registrar must determine the issue whether the use of a trade mark would be contrary to law, notwithstanding that the particular law is other than the Act". She argued that use of either of the applicant's subject trade marks would be a contravention of section 52 of the Trade Practices Act 1974 (the TPA), in that a corporation using those marks in respect of the goods specified in the applications would engage in conduct that was misleading or deceptive or likely to mislead or deceive.

Section 52 of the TPA deals with misleading or deceptive conduct. It states:

(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

Ms Baird argued that misleading or deceptive conduct in contravention of section 52 was likely to arise because, before the filing dates of the subject applications, the opponent's analyser system and its component parts had become well known as PRISM in Australia. Therefore later use by the applicant of its trade marks on its goods of interest would suggest a connection, sponsorship, licence or approval, or common origin that did not exist. She said it followed that use by the applicant of its trade marks in respect of the goods specified in its applications would be contrary to law within the meaning of section 42 and that registration of the applications ought to be refused.

Mr Kerr countered that both passing off and section 52 of the TPA require confusion in the mind of the public as to the source of the origin of the goods under the relevant marks proposed. He submitted that there was no evidence of confusion or a likelihood of confusion arising from use of the applicant's marks that would amount to passing off, or a breach of Section 52. He said it was very clear that the nature of the business conducted under the applicant's trade marks was very different from the business conducted by the opponent.

Discussion

Firstly, I accept Ms Baird's basic premise that, in line with Madgwick J's findings in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd, supra, section 42 may require the Registrar to make determinations regarding issues of law outside the discrete area of trade marks. At paragraph 28, Madgwick J said:

I acknowledge the claim made by counsel for the Registrar that such an approach requires the Registrar to look at questions of law outside his or her expertise and that this can be difficult and may place a large and onerous responsibility upon the Registrar. However, the Registrar has the comfort that the criterion is that the use "would" not "could" be contrary to law...It should also be noted that what is required is that the Registrar form a view as to whether the use of a trade mark would be contrary to law.

D R Shanahan, supra, at page 456, states:

Misleading conduct does not merely cause confusion; it actually directs a person towards the wrong choice.

I agree with Mr Kerr that this represents a higher threshold test than the test for deceptive similarity under the Act. For the applicant to fall foul of this test, it must have engaged in conduct that either has, or is likely to, direct persons to choose its research equipment, based upon the misapprehension that it originates from the opponent. There is no evidence whatsoever before me to support this scenario, and I have no other reason to believe such conduct has or is likely to occur.

Section 42 of the Trade Marks Act 1995 requires the Registrar to decide that use of a trade mark would, not could, be contrary to law. I am not satisfied regarding the primary question of whether there has been a contravention of Section 52 of the TPA. It follows therefore that I cannot form a view that registration of the applicant's trade mark would be contrary to that law, in terms of section 42 of the Act. The opposition has therefore failed upon this ground.

Section 44 - substantially identical or deceptively similar trade marks

The relevant subsection (1) of section 44 provides:

(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.

Note 1:      For deceptively similar see section 10.

Note 2:      For similar goods see subsection 14(1).

Note 3:      For priority date see section 12.

The definition of "deceptively similar" in section 10 is that "a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion". Subsection 14(1) provides that goods are similar to other goods if they are the same as, or of the same description as, those other goods.

Submissions

Ms Baird submitted that section 44 represented the opponent's principal ground of opposition. She said that the applicant's word trade marks and the opponent's prior registered trade marks were both substantially identical and deceptively similar, according to the tests set out in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, and Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641. She also argued that the following factors should be taken into account:

• both marks end with the common, central component PRISM

• both marks begin with the same syllable AB

• these similarities resulted in strong visual and phonetic similarities between the marks

• there is a connection between the prefix components ABI and ABBOTT, resulting from the historical and religious connection between an abbey and an abbot as the head of an abbey that would reinforce the identity between the two marks and likely lead to a lack of consumer differentiation between them.

Regarding the device trade marks, Ms Baird argued that these were also deceptively similar to the opponent's registered trade marks. This was because the prominent, central aural and visual feature of each device mark remained the words ABI PRISM, and the reference to PRISM was reinforced, rather than detracted from or altered by the device.

On the question of whether the applicant's and the opponent's goods were goods of the same description, Ms Baird conceded that the respective goods were not listed in the same class, the opponent's goods being in classes 5 and 10 and the applicant's goods in class 9. However, she submitted, in each case the goods were directed to the medico-scientific community being diagnostic and analytical instruments and related products for use in the field of life sciences, a field encompassing research and practice. She argued that it was extremely likely goods placed on the market under the applicant's marks and falling within the specifications of goods in the applications would be seen by purchasers as having the same trade origin as goods covered by the opponent's registrations. In support of her arguments, Ms Baird cited London Lubricants (1925) 42 RPC 264 at 279, McCormick & Co Inc v McCormick (2001) 51 IPR 102 at 107, Shanahan, supra, at 191-192, and others.

Mr Kerr countered that the marks in question did not satisfy the relevant tests cited by Ms Baird. He said where trade marks to be compared each comprise two words and, in particular, where the common element is the second word or suffix, the opponent bears a very heavy onus in establishing a likelihood of deception. Further, where the common element conveys some form of descriptiveness, that burden is "almost impossible" to discharge. In support of these arguments, Mr Kerr cited Cooper Engineering; Frigiking Trade Mark [1973], RPC 739, Miss World (Jersey) Limited & Anor v Mrs of the World Pageants, Inc (1988) AIPC 90-460 and Captain Icecream Pty Ltd v The Coca Cola Co (1992) AIPC 90-881, amongst others.

Mr Kerr then argued that the applicant's and the opponent's goods were not similar goods, as the applicant's goods were all specified in its applications as for use "in scientific research" or "in relation to life science research". In fact, he said, Ms Hane's declaration had explained that the applicant's goods were machinery, namely gene sequencers for decoding DNA molecules. Unlike the opponent's goods, the applicant's goods were not used in the medical diagnostic field, nor were they used in connection with the diagnosis or treatment of diseases of the blood. Mr Kerr submitted that the goods covered by the opponent's trade marks and the applicant's trade marks would not "cross paths nor create confusion as to their source". The respective goods, he said, were not of the same nature, were for different uses, supplied through different trade channels, and in general, were simply not similar goods.

Discussion

The question of whether the opponent's trade mark registrations have an earlier priority to the subject applications is not in dispute between the parties. The issues to be decided are whether the relevant marks are either substantially identical or deceptively similar, and whether the goods covered by those trade marks are similar goods.

The test for substantial identity referred to above is set out by Windeyer J in The Shell Co. of Australia Ltd. v. Esso Standard Oil (Australia) Ltd, supra, at page 415:

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 having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106.

Contrary to Ms Baird's submissions, I do not believe that even a side-by-side comparison of the applicant's plain word trade mark ABI PRISM and the opponent's trade mark ABBOTT PRISM yields a finding that the trade marks are substantially identical. Their respective first words ABI and ABBOTT create an unmistakable impression of dissimilarity when compared in this manner. These differences are of course increased when the applicant's trade mark containing the additional feature of a triangular device is compared with the opponent's ABBOTT PRISM mark. I find that the applicant's trade marks are not substantially identical to the opponent's registered trade mark.

The tests for deceptive similarity are different from those for substantial identity. They invoke much more subtle comparisons of the whole impressions given by each trade mark being compared. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, supra, at page 658 say:

In deciding this question, the marks ought not, of course, 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 effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. 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. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

Once again, in applying the relevant test to the trade marks in question, I find myself disagreeing with the opponent as to whether deceptive similarity between them has been demonstrated. The comparison must start, as it did with the assessment of substantial identity, from the fact the feature the trade marks share is the word PRISM. I have heard differing arguments from the parties as to the extent of the significance of that word to the applicant's and opponent's goods. I have not found its presence in the applicant's trade marks to be a critically damaging factor in whether those marks as a whole, without evidence or other circumstances, are capable of distinguishing the applicant's goods. However, the submissions from both sides support my impression that there is a certain degree of association between the word and the parties' goods. The Trade Marks Office Manual of Practice and Procedure, at Part 26, paragraph 6.7, makes the following observation in relation to similarities between trade marks arising from such shared words:

To some extent a descriptive tinge may limit a proprietor's rights; see in this regard the observations of Maugham J in the "Ucolite" case, 48 RPC 477 at p 486:

I think it is true to say that when a registered trade mark...has a descriptive tinge the Courts are rather averse to allowing that fact to tend to become a kind of monopoly in respect to the descriptive character of the word.

In the Metro case, supra, at page 426, the following test to be applied in considering likely deception or confusion under the old law was considered:

Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration. (Re Smith Hayden and Co's Application (1946) 63 RPC 97 at page 101.8.)

French J's observations upon this test were:

So far as this passage...suggests that an applicant must satisfy the Registrar or the Court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

In the Metro case, French J was considering a dispute that was initially between the Registrar and the trade mark owner over acceptance of its trade mark, rather than an ownership dispute between two opposing parties, but the principle remains the same. Under the Trade Marks Act 1955, as under its predecessor, the applicant for registration bore the onus, both in examination and in opposition proceedings, of demonstrating that its trade mark qualified for registration. That onus has shifted under the Trade Marks Act 1995. Lahore, Patents, Trade Marks and Related Rights (2001), paragraph 66,320:

Under the 1955 Act it was well established that in opposition proceedings the onus of proof lay with the applicant. The opponent needed only to establish that there were matters for the applicant to answer. (Re Appn by Karachi Aerosol Co Ltd(1985) 6 IPR 33 at 34; Camelot Design Industries Group Pty Ltd v Bernard Leser Publications Pty Ltd(1987) 9 IPR 596 at 598.) A “reversed” onus of proof operates under the 1995 Act. The applicant is entitled to acceptance unless grounds for opposition are established — “[t]he onus is on the opponent to convince the registrar of the validity of the grounds of opposition that they have cited." (Trade Marks Office Draft Manual of Practice and Procedure, Part 46.)

This reversal of onus means that the final comment (quoted above) of Dixon and McTiernan JJ, "evidence of actual cases of deception, if forthcoming, is of great weight" takes on possibly greater significance in the present legal context than it might have had at the time it was written.

In the present case, and as I have already observed in the context of section 42, the opponent has provided me with no such evidence of deception, at all. Under these circumstances, I am not inclined to find that either of the applicant's trade marks are deceptively similar to the prior registered trade marks of the opponent. Despite Ms Baird's suggestions about the historical and religious associations between "abbeys" and "abbots", I do not believe that the average person would make that association when encountering the first word ABI in the applicant's trade marks. As Mr Kerr has argued, it has much more of the flavour of an acronym about it. It is visually and aurally quite different from the opponent's first word ABBOTT, which to me conjures up associations with a surname, in contrast to any suggestions of a connection with the head of a monastery.

Dixon and McTiernan JJ, supra, refer to the usual manner in which ordinary people behave being the test of what deception and confusion must be expected. They say "potential buyers of goods are not to be credited with any high perception or habitual caution".

Hearing Officer Thompson's comments in Levi Strauss & Co v Harson International Limited [1999] ATMO 126 (22 December 1999) were quoted to me by Mr Kerr. These referred to findings in LANCER Trade Mark Application [1987] RPC 303, that

...the more expensive an item to be purchased, the greater the care that was usually exercised in the purchase by ordinary people. Conversely, with inexpensive items, the less time and attention the ordinary person gives to the consideration of the purchase.

I agree with the first part of this observation, and believe that it would hold equally, if not more true in relation to the large and extremely expensive items of equipment sold respectively by the applicant and the opponent. However, as I have observed recently in relation to the infinitely less expensive items of margarine and frozen yoghurt, people also take care in purchasing where, although a comparatively insignificant cost is involved, the practical consequences of their mistake may still significantly inconvenience them. That is, when a specific item is required and no alternative item will do. (I Can't Believe It's Yogurt Ltd v Unilever PLC [2001] ATMO 120 (29 November 2001.) This circumstance would affect use of the respective trade marks on some of the small, relatively inexpensive items that may also be sold by the parties, but which have been somewhat overlooked in their submissions, as these have focussed on the primary, much larger goods of interest. These are the "scientific instruments for use in life science research" covered by two of the subject trade mark applications on the one hand, and the "diagnostic instruments to be used in blood banks and laboratories" covered by one of the opponent's registrations, on the other. Purchasers would necessarily choose such items, designed for specific scientific tasks, thoughtfully and with care. They are definitely not in the "bag of sweets" category of purchases. In this particular setting, (to return once more to the words of Dixon and McTiernan JJ), the differences between the applicant's and the opponent's trade marks could be expected to stand out sharply.

There may well be an overlap, as Ms Baird has argued, between some of the applicant's and the opponent's goods in classes 9 and 10 (but not 5), such that they could be found to be "similar goods" within the meaning of the Act. However, the opposition ground under section 44 fails at the primary hurdle of whether the trade marks in question are deceptively similar. I find that the trade marks ABI PRISM and ABI PRISM and DEVICE are not deceptively similar to ABBOTT PRISM. The opponent has therefore been unsuccessful on this ground.

Section 58 - ownership of the trade mark

Section 58 of the Act provides:

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:    For applicant see section 6.

Submissions

Ms Baird cited the principles set out in The Shell Company of Australia Ltd v Rohm and Haas Company and Anor (1948-1949) 78 CLR 601 and Re Hick's Trade Mark (1897) 22 VLR 636 at 640, in arguing that the applicant was not the owner of its word trade mark ABI PRISM. She said that the applicant's trade mark ABI PRISM and the opponent's trade mark ABBOTT PRISM could "rightly be called the same". Further, the opponent had used its trade mark prior to the relevant dates and in the course of trade for the "same kind of thing" as the applicant's goods of interest. She submitted that computer hardware for life sciences research was the same kind of thing as computer hardware for the detection of the presence of disease states.

Mr Kerr countered that the applicant did not believe that the trade marks in question were substantially identical, and in any case, it disputed whether they had indeed been used in respect of the same kind of thing.

Discussion

Elkington, Hall and Kell, Trade Mark Law in Australia, 2000, at page 77, says of ownership disputes under section 58:

The battle therefore is between the party who was first to file and an opponent who claims to have been first to use. In such cases the first user prevails. But this ground of opposition is tightly confined. The use must have been commercial use, as a trade mark, of the very mark applied for or one extremely close to it, and for the goods or services of application or "the same type of thing". (Emphasis added.)

I have already found, above, that the trade marks ABI PRISM and ABBOTT PRISM are not substantially identical. It cannot be said, "in a real sense a claim to proprietorship of the one extends to the other." (Carnival Cruise Lines Inc v Sitmar Cruises Ltd, 31 IPR 375, at page 391.) Therefore, the ground of opposition under section 58 has failed.

Section 60 - trade mark with a reputation in Australia

Section 60 provides:

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had 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 1:        For deceptively similar see section 10.

Note 2:        For priority date see section 12.

Submissions

In support of the section 60 ground, Ms Baird submitted that the all the opponent's trade marks, which here included the unregistered trade marks PRISM, and ABBOTT PRISM and DEVICE described earlier, were either substantially identical or deceptively similar to the applicant's trade marks. She said that, as at the filing dates of the applications, the opponent's reputation in its trade marks was such that a number of people would be caused to wonder and entertain a reasonable doubt whether goods supplied under the applicant's trade marks had in fact originated from the opponent.

Mr Kerr responded that the opponent's ground under section 60 was "particularly weak". He said that, irrespective of the question of whether the applicant's and the opponent's trade marks were substantially identical or deceptively similar, the opponent's evidence did not clearly detail its pattern of sales under its trade marks as at the dates of filing of the subject applications. Therefore, it could not support a claim to reputation in any of those trade marks.

Discussion

I have already found that the applicant's trade marks are not substantially identical or deceptively similar to the opponent's registered trade marks. The opponent's case under section 60 in respect of those trade marks therefore stalls at that first hurdle. However, I do not intend to visit the question of substantial identity or deceptive similarity in regard to the plain word PRISM and the ABBOTT PRISM and DEVICE mark referred to in the opponent's evidence. In short, there is no compelling evidence before me of the opponent's reputation (at the relevant dates) in any of its trade marks that might lead me to conclude that the applicant's use of its trade marks on its goods would be likely to deceive or cause confusion. Therefore, I find the ground of opposition under section 60 unsuccessful.

Decision

I find that the opposition has failed on all the grounds canvassed at the hearing. For completeness, and as I have no basis to be satisfied that any of the other grounds of opposition raised in the notice of opposition, but not argued at the hearing have been made out, I find each of those grounds has also failed.

All four of the trade mark applications - 749561, 749562, 749563 and 749564 - may proceed to registration after 30 days from the date of this decision, subject to the payment of the appropriate fees. If the Registrar has been served with notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

Both the applicant and the opponent have sought their costs in this matter. The opponent has also sought remittance of "three of the hearing fees paid in relation to these oppositions", on the grounds that all the evidence was the same and the matters were heard at the same time. I will deal with the latter request first. The parties did not in fact pay four hearing fees each, but only two. At the time the hearing was requested, the Deputy Registrar of Trade Marks Hearings determined that two fees should be paid. This decision was based on the fact that, although four applications were involved, their subjects were two separate trade marks, a word mark and a mark incorporating words and device. All available grounds had been cited in the notice of opposition. Therefore, although the evidence may have been similar, considerations at the hearing and in the delegate's decision would likely cover a broad range of grounds necessarily diverted in two directions rather than one. This has proved to be the case. In these circumstances, I believe that the imposition of two hearing fees in relation to the four applications was fair and reasonable. Accordingly, no refund of hearing fees will be made to the parties.

Regarding costs to be awarded in this opposition, I award costs, according to the official scale, against the unsuccessful opponent, Abbott Laboratories.

Claudia Murray

Hearing Officer

Trade Marks Hearings

31 October 2002