Aktibolaget Astra v Biogen Inc

[2002] ATMO 50

TRADE MARKS ACT 1995

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

Re:Opposition by Aktibolaget Astra to registration of trade mark application 775740(5) - ASTRIVO - filed in the name of Biogen, Inc.

Background

On 15 October 1998, the applicant, Biogen, Inc (Biogen), a company incorporated in Massachusetts in the United States, applied for the trade mark ASTRIVO in Class 5 for the following goods:

Pharmaceutical preparations for use in the treatment of diseases characterized by edema; pharmaceutical preparations for use in the treatment of congestive heart failure; pharmaceutical preparations for use in the treatment of liver disease; pharmaceutical preparations for use in the treatment of renal failure; pharmaceutical preparations for use in the treatment of other cardiovascular disorders, renal disorders, metabolic disorders and pulmonary disorders.

The application was advertised as accepted, without amendment or endorsement, on 25 February 1999.  On 20 May 1999, the opponent, Aktibolaget Astra (Astra), of Sodertalje, Sweden lodged a notice of opposition to the registration of the trade mark.

The grounds of opposition were numerous, however, they can be set out as follows:

Ground	Section of Trade Marks Act 1995
One	s.41(2)
Two	s.41(5)
Three	s.41(6)
Four	s.42(b)
Five	s.43
Six	s.44(1)
Seven	s.44(3)(a)
Eight	s.44(3)(b)
Nine	s.44(4)
Ten	s.58
Eleven	s.59
Twelve	s.60
Thirteen	s.42

During the course of the proceedings, the parties filed and served the following evidence:

Name	Dated	Abbreviation	Exhibits
Evidence in Support
Gregory Williams	23.02.2000	GW	GW-1 to GW-6
Evidence in Answer
Lance Newman Scott	01.03.2000	LNS	LNS-1
Raymond Arner	11.05.2000	RA	RA-1

The matter came before me as delegate of the Registrar of Trade Marks at a hearing conducted on 6 February 2002, in Melbourne.  Mr Malcolm Royal of Phillips Ormonde Fitzpatrick represented the opponent.  Ms Elspeth Strong of Counsel represented the applicant, on the instructions of Freehills Carter Smith Beadle.

Grounds and Determination

Because of the nature of the grounds of opposition, it is useful to group some of the grounds together, rather than address each of them in order. 

Grounds One, Two and Three - Sections 41(2), 41(5) and 41(6)

Section 41 provides:

Trade mark not distinguishing applicant’s goods or services

(1)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:For applicant and predecessor in title see section 6.

Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:For goods of a person and services of a person see section 6.

(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)the Registrar is to consider whether, because of the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

Note 1:For goods of a person and services of a person see section 6.

Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

(6)If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(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;

(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b) the time of production of goods or of the rendering of services.

Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

The opponent alleges that ASTRIVO is not capable of distinguishing the applied for goods from the goods or services of other persons - s.41(2).  Further, the elements of ss.41(5) or (6), if they are applicable, have not been made out.  This approach was considered by Justice Branson in Blount v Registrar of Trade Marks (1998) 40 IPR 498, 504-505, where Her Honour confirmed that the Registrar is entitled to find:

(a)   that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and is capable, on that basis alone, of distinguishing the designated goods or services; or

(b)   that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

(c)   that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of distinguishing the designated goods or services.

Each of these findings will result in a different consequence.  If the Registrar reaches conclusion (a), he must accept the application in accordance with subsection 33(1) of the Act.  If the Registrar reaches conclusion (b), the provisions of paragraphs (a) and (b) of subsection 41(6) apply.  Finally, if the Registrar reaches conclusion (c), the provisions of paragraphs (a), (b) and (c) of subsection 41(5) apply.

Applying these tests, and taking each step in turn, I must first determine whether the applied for trade mark is inherently adapted to distinguish the goods of the applicant from those of other traders.  This requires me to determine whether the word ASTRIVO has its own inherent ability to set the goods to which it is applied apart from those of other traders.  Further, I must determine whether the word ASTRIVO is one that other traders of similar goods are likely to need to use in relation to their services - per Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514.

There is nothing before me which indicates that ASTRIVO is anything other than an invented word.  Certainly, there is nothing before me to indicate that it is a term that is apt to describe the goods sought.  Similarly, there is nothing before me to indicate that other traders would want or need to use the expression - it is an uncommon word and bears no relationship to the goods sought, or services which might be closely aligned to them. I am satisfied that ASTRIVO is inherently adapted to distinguish, on its own. It is clearly capable of distinguishing the goods There is therefore, no need for me to address ss.41(5) or (6).

Grounds One, Two and Three therefore fail.

Grounds Four and Thirteen - Section 42

These grounds rely on s.42(b) which states that an application must be rejected if use of the applied for trade mark would be contrary to law.  The "law" which must be considered is both common and statutory in nature, and is not restricted to any particular field - Advantage-Rent-a-Car Inc v Advantage Car Rental Pty Ltd 52 IPR 24 (advantage). However, it is, by necessary implication, incumbent upon an opponent who relies on this ground to set out the law which he or she asserts will be contravened. In the interests of fairness, this should be stated in the notice of opposition or notified to the applicant at some reasonable time prior to the hearing.

In the present case, the opponent did not set out the relevant law in its notice of opposition. At the hearing, Mr Royal sought to rely on ss.51 and 52 of the Trade Practices Act 1974 (TPA) and the common law relating to passing off.  It is clear from the submissions of Ms Strong that these allegations were within her contemplation prior to the hearing, so I do not believe that the applicant was taken by surprise.  However, this may not always be the case.

The opponent relies on the evidence of Mr Williams, who states at paragraph 13 of his declaration that use of ASTRIVO as a trade mark would cause "deception or confusion in the trade".  He also states that "medical practitioners, pharmacists and patients would assume that Astra was involved because of the use of the A S T R prefix which they associate" with his company.  None of these assertions are supported by any corroborative evidence.

The decision in advantage confirms that the appropriate test to be applied to s.42(b) is whether use would be contrary to law, rather than could be.  In the present case, I am not satisfied that the relevant markets would be deceived or confused in the way envisaged by s.52 of the TPA. While I accept that the assertion was not contested in the evidence by the applicant, this does not mean that I am required to accept it as sufficient to make out a TPA case. Given the paucity of information and the lack of any corroboration at all, I am not satisfied that the assertion is correct or that it would be sufficient to make out s.52.

In relation to s.51 of the TPA, there is nothing before me which indicates that the applicant has engaged in any unconscionable conduct. Again, therefore, I am not satisfied that the contravention would occur. 

Finally, there is nothing before me that assists the opponent in making out a case of passing off.

I dismiss Grounds Four and Thirteen.

Ground Five - Section 43
This ground relies on s.43 which states:

Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The decision in T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 (31 May 2000) confirms that the connotation must arise in the trade mark itself. There may also be some consideration of whether a word, which forms part of the applied for trade mark, has achieved sufficient notoriety or currency in language that a meaning can be ascribed to it - Durkan v Twentieth Century Fox Film Corporation 47 IPR 651 (braveheart).

In the present case, the opponent did not point to any connotation arising from the word ASTRIVO.  There is  no connotation or secondary meaning arising from the word that is apparent to me.  Certainly, there is nothing in ASTRIVO that appears to be descriptive of the goods to which the application relates.   Nor is there any allegation by the opponent that ASTRIVO or ASTRA have the requisite notoriety.  Accordingly, there can be no deceptive or confusing connotation arising from the use of the applied for trade mark.

I dismiss this ground of opposition.

Grounds Six, Seven, Eight and Nine - Sections 44(1), 44(3)(a), 44(3)(b), 44(4)

The opponent asserts that the applied for trade mark is substantially identical with, or deceptively to, 20 other trade marks, each of which are for similar goods or closely related services and have earlier priority dates.  In doing so, the opponent relies on s.44, which states:

Identical etc. trade marks

(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.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

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

(ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:For predecessor in title see section 6.

Note 3:        For priority date see section 12.

In order to satisfy s.44(1), the opponent must make out the following three elements in respect of a single trade mark that is either registered or pending:

1. That it has an earlier priority date;

2. That it covers similar goods or closely related services; and

3. That the applied for trade mark is substantially identical with, or deceptively similar to the opponent's mark. 

In its notice of opposition, the opponent relied on the following trade marks:

Number	Class	Status	Trade Mark
279061	5	Registered
271425	5	Removed	Ferastral
356043	10	Registered	Astra Theatre Pack
A51045	5	Unknown	Ferastral
A51046	5	Unknown	Astra
241623	10	Refused	Superbow (Astraject)
241622	5	Registered	Lumocolor (Astraject)
445631	10	Registered	Astra Twist Top
431764	10	Registered
431765	42	Registered
431766	11	Registered
565266	5	Registered	Astra Implant System
565267	10	Registered	Astra Implant System
590269	5	Registered
590270	10	Registered
625836	5	Registered	Astracare
625837	10	Registered	Astracare
641681	5	Lapsed	Astraject
641682	10	Lapsed	Astraject
652719	10	Registered

In relation to the trade marks which are referred to as A51045 (Ferastral) and A51046 (Astra), there is no record of these trade marks on the IP Australia electronic database, and I was not provided with any documentary material to confirm their existence.  Accordingly, they will not be taken into account. 

In relation to the trade marks 241623 and 241622, these cover registrations for the words SUPERBOW and LUMOCOLOR respectively.  The opponent alleges they are for the word ASTRAJECT.  I have been provided with no reasons for the inconsistency or for the inclusion of SUPERBOW or LUMOCOLOR.  Accordingly, I will not take these trade marks into account.

I also note that 641681 and 641682 have lapsed.  Again, I will not take these trade marks into account as they are not registered or pending trade marks as s.44 requires.

In relation to the balance of the trade marks set out above, I am satisfied that each of these trade marks is registered and has an earlier priority date than the applied for trade mark.  I am also satisfied that each of the trade marks which are registered in Classes 5 or 10 are prima facie for similar goods.  I will consider this in greater detail if it is necessary after consideration of the third element - substantial identity or deceptive similarity.

The opponent relies on both substantial identity and deceptive similarity. 

The concept of "substantially identical"  was discussed by Windeyer J in The Shell  Company of Australia Limited v Esso Standard Oil (Australia) Limited 109 CLR 407 at 414 where he stated:

(the marks should) 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.

In the present case, the central issue is the comparison between ASTRIVO on the one hand, and the word ASTRA, which appears on its own (), as a component (eg ASTRA IMPLANT SYSTEM) or as a prefix or suffix (eg ASTRAJECT and FERASTRAL) in a number of the opponent's trade marks. Common sense suggests that, at least in terms of substantial identity, if the opponent is unsuccessful in relation to ASTRA solus, it is unlikely to succeed in relation to the composite marks.  Accordingly, I will make that determination first.

On a side by side comparison, I am presented with the following:

ASTRIVO	ASTRA
ASTRIVO
ASTRIVO

On this comparison, it is clear that each trade mark shares the first four letters - A, S, T, and R.  These do not form a word of their own.  Nor do they form a sound which is recognised as a word.  The marks are rendered in an unremarkable font, and therefore, do not contribute a significant amount in the current comparison.  They do not convey the same idea.  Nor is one merely a simple modification of the other.  The applicant's trade mark is not, for example, a pluralisation of the opponent's.  On the contrary, the letters I V O are substantially different to the single letter A, and they are not a usual or obvious adaptation of that letter or its sound.  In the circumstances, the differences are sufficient to render the trade marks substantially different. 

Having found ASTRIVO and ASTRA are not substantially identical, it follows that ASTRIVO cannot be substantially identical to any of the remaining, live trade marks of the opponent. 

In terms of deceptive similarity, the relevant tests were set down by Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 and Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658. The Courts confirmed that the matter is not now to be decided by comparing the marks side by side but rather that:

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 descriptions must be considered. If the 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.

In addition to these cases, Mr Royal took me to a number of others, including Warner-Lambert Co v Aktiebolaget Astra 7 IPR 163. In that case, which related to goods which were similar to those sought in the current case, Senior Assistant Registrar Farquhar found in relation to the trade marks THEOPAR and THEO-DUR:

1. The first syllable of a word mark is of primary significance (per London Lubricants (1920) Ltd's Application (1925) 42 RPC 264);

2. The applied for mark, THEOPAR, was likely to be confused with the mark THEO-DUR, particularly in light of their use on identical goods;

3. The applicant had not shown that the prefix "THEO" was common to the trade or that it was descriptive of some character or quality of the goods; and

4. The marks in question were deceptively similar.

Having regard to the cases, and the relevant trade marks, I am satisfied that there is a degree of similarity.  However, the relevant standard is set down in s.10 which states:

Definition of deceptively similar

For the purposes of this Act, 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.

In Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at 428, Justice French stated:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

French J also said in Woolworths, at 426:

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.

The question therefore becomes one of determining whether there is a reasonable likelihood of deception or confusion?  Or in other words, is there a real, tangible risk?

In the present case, the only evidence that was presented on this point was the declaration of Mr Williams to which I have already referred.  Mr Williams declares as follows:

"I believe that the use of the trade mark ASTRIVO in relation to pharmaceutical product would cause deception or confusion in the trade.  I believe that medical practitioners, pharmacists and patients would assume that Astra was involved because of the use of the A S T R prefix with which they associate my company."

In terms of the course of business through which the goods are sold, and the care that is likely to be taken, it is important to note that the goods in question are pharmaceuticals.  I am not aware of any goods to which a higher vigilance is applied in specifying, selecting, supplying or taking.  Certainly, medical practitioners and pharmacists are likely to be acutely aware of the need for precision when it comes to the selection and administration of medication.  I believe that the same can be said of patients, insofar as their expertise allows.

I am not satisfied that the similarity is so great that patients or members of the trade would be confused to the extent that the relevant standards require.  I have not taken this decision lightly, given the need for precision in the administration of medicines and the findings in the THEOPAR/THEO-DUR decision.  However, in the present case, I believe that that precision means a higher degree of vigilance.  It is this vigilance that reduces even further the likelihood of deception or confusion occurring, to less than the required degree.  In the THEOPAR/THEO-DUR decision, Ms Farquhar had the assistance of 14 statutory declarations made by pharmacists from around Australia who all opined as to the likelihood of confusion.  I have no such assistance in the present case.  As a result, I am not satisfied that the opponent has made out its case nor satisfied its evidentiary onus.

I am not satisfied that the applied for trade mark is substantially identical with, or deceptively similar to, any of the marks on which the opponent relies.  Therefore, there is no need for me to consider whether there are similar goods or closely related services in issue.  Nor is there any need for me to determine whether s.44(3) or (4) are available to the applicant. Grounds Six,  Seven, Eight and Nine fail.

Ground Ten - Section 58

The opponent indicated at the hearing that it did not press s.58.  There is nothing before me that indicates that this ground could be made out.  Therefore, I dismiss it.

Ground Eleven - Section 59

The relevant parts of Section 59 say:

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia;

.....

in relation to the goods and/or services specified in the application.

'Intention to use' has been judicially considered in Aston v Harlee Manufacturing Co 103 CLR 391. In that case Fullagar J said, at 401:

[T]he making of the application itself is, I think, to be regarded as prima facie evidence of intention to use.  I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent   of proving the absence of intention.

There is nothing before me to indicate that the applicant does not intend using the applied for trade mark in Australia.  The opponent sought to make something of the fact that Mr Arner's declaration was amended to read "intends to use" the trade mark.  In its original form, the declaration said "uses".  To my mind, this does not assist the opponent - Section 59 does not require the mark to have been used. 

I do accept that while Mr Arner's declaration sets out some 51 countries where the trade mark ASTRIVO has already been registered, this does not necessarily equate to an intention to use in Australia.  However, when the overseas registrations are read in conjunction with the original application and the role that the applicant has played in these proceedings, I am satisfied, at least prima facie, that the applicant does have the requisite intention.  There is nothing before me on which the opponent relies to displace this conclusion or to discharge its onus.  The opponent has not satisfied me that the requisite intention does not exist.  Accordingly, this ground must fail.

Ground Twelve - Section 60

The evidence clearly shows that the opponent has a substantial turnover and marketing activities.  However, there is little context given to the material.  It is unclear:

• whether the promotional material was released before or after the application date of 15 October 1998;

• whether the promotional activities were conducted in Australia, world-wide or a combination of the two; and

• how widely the material was distributed - that is, whether the material was released to medical professionals or their patients. 

This last aspect is particularly important.  As I have already indicated, I  believe that medical practitioners and pharmacists will take more than ordinary care in prescribing or supplying medications.  Patients are likely to exercise a lower level of vigilance, due to their lack of formal medical expertise.  Because of this, I believe it is patients who are most likely to be caused to wonder whether there is a connection between ASTRIVO and the opponent's goods and services.  However, given the lack of evidence regarding the reputation of ASTRA amongst patients or the steps taken to enhance the reputation of ASTRA in this same group, I am not satisfied that the requisite reputation exists on which "the caused to wonder" test must be based for the purposes of s.60.  If a reputation does exist, I have not been shown it.  If medical practitioners and pharmacists are aware of a reputation, which in itself is not clear, I am not satisfied on the evidence that they would be caused to wonder as to source.  Their precision in prescribing and dispensing medication works against this.

Apart from active promotion, it is possible for a trade mark to acquire the requisite reputation by actual use.  Mr Williams states that it is by virtue of the opponent's "extensive use" of the ASTRA trade mark that the mark has become very well known in the pharmaceutical, medical, pharmacy and hospital fields, as well as to patients.  Mr Royal expanded on this and placed significant reliance on the use of ASTRA as a house mark, used in conjunction with medication names.  While each of these points may be valid, there is no corroborative evidence to satisfy the evidentiary burden relating to actual reputation.  At best, Mr Williams' statements and Mr Royal's assertions are conjecture.  This is insufficient in the present case, where reputation is an essential element of the section.

Accordingly, this ground must also fail.

Summary and Costs
I have found that none of the grounds of opposition have been made out.  Accordingly, and subject to the expiry of one month from the date of this decision and the payment of any required fees, the trade mark may proceed to registration.

The applicant has sought its costs.  The opposition has been wholly unsuccessful.  As costs generally follow the cause, and there is no reason to derogate from this approach here, I direct that the opponent pay the applicant's costs.

Geoff Purvis-Smith
Hearing Officer
Trade Marks Hearings
31 May 2002