Altana Pharma AG v Oxxon Therapeutics Limited

[2006] ATMO 95

TRADE MARKS ACT 1995

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

Re:Opposition by ALTANA PHARMA AG to protection of international registration designating Australia 1018198 (International Registration No. 830476) (5,9,16,42) - OXTI - in the name of OXXON THERAPEUTICS LIMITED.

Delegate:	Don Nancarrow
Representation:	Opponent: Marion Heathcote, Davies Collison Cave, Patent and Trade Mark Attorneys of Sydney Holder: Not represented
Decision:	Regulation 17A.29 opposition: Ground under s.44 not established, other grounds not pressed – opposition dismissed.

Background

1. Application 1018198, an international registration designating Australia (IRDA), was filed in the name of OXXON PHARMACCINES LIMITED under the Madrid Protocol on 28 April 2004 and IP Australia was notified on 2 September 2004. A convention priority claim, of 29 March 2004, based on an application in the U. K. also applies. The holder is now OXXON THERAPEUTICS LIMITED (OXXON or ‘the holder’). Other details of the application are as follows.

Trade mark	OXTI
Goods/ services	Preparations for the treatment and prevention of disease (class 5),Electronic publications, namely, books, magazines, manuals, newsletters, brochures, pamphlets, periodicals featuring information in the field of scientific research, health care maintenance, clinical research, disease management and pharmaceutical issues all recorded on any appropriate media or downloadable from the Internet (class9), Printed publications in the field of scientific research, health care maintenance, clinical research, disease management and pharmaceutical issues, namely, books, magazines, manuals, newsletters, brochures, pamphlets, periodicals; stationery (class16), Scientific research; consulting in the field of scientific research; providing information in the field of scientific research via the Internet; research and development for others
Acceptance advertised	7 October 2004

1. Following acceptance, Altana Pharma AG, (‘the opponent’), filed its Notice of Opposition on 7 April 2005 after being granted an extension of time in which to do so. The only evidence in this matter is the opponent’s evidence in support which comprises two declarations. The first of these, together with exhibit “A”, is from Katherine Louise Kemp, a trade mark researcher employed by the opponent’s attorneys, dated 4 October 2005. The other declaration with exhibit “WF-1” is from Dr. Wolfgang Feiler, Head of the Trade Mark Department of the opponent, based in Germany, and attested on 14 March 2006.  

2. The evidence (Kemp declaration) goes to show that the full word or the prefix OXTI- occurs only twice in the Australian Trade Marks Office database, these being the present application and the opponent’s registered OXTIVE trade mark. The Feiler declaration provides a listing of the opponent’s 69 worldwide registrations of its OXTIVE trade mark and a measure of what could be more accurately described as submissions rather than evidence to support the opposition.

3. The matter came before me at a hearing in Sydney on 19 October 2006. The holder was neither represented at the hearing nor chose to file any written submissions. The opponent was represented by Ms. Marion Heathcote of the Sydney firm of Davies Collison Cave, Patent and Trade Mark Attorneys.

   Grounds of Opposition

4. This application is an IRDA and thus the opposition grounds are sourced from Regulation 17A.31 of the Trade Marks Regulations 1995 (the Regulations). This regulation directs our attention back to the Trade Marks Act 1995 (the Act) to collect some of the relevant sections – these are sections 39, 41 to 44 inclusive. Regulation 17A.31(2) and (3) then directs us to sections 58 to 61 inclusive of the Act. The only other opposition ground that may be mounted against a “domestic” application, s.62, finds its equivalent at Reg. 17A.31(4) for an IRDA.

5. In the present matter, almost all of the available grounds were nominated in the Notice of Opposition but Ms. Heathcote restricted the opponent’s challenge to just a single ground under s.44 as it applies to just one class of goods in the application, being class 5.

6. Thus, in relation to the other grounds of opposition nominated in the Notice of Opposition I find that they have not been established.

   Submissions, the Law and Comments

   Section 44 under Regulation 17A.31

7. The legislation relevant to this opposition reads:

   Identical etc. trade marks

   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) …   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.

8. Ms. Heathcote directed me to an allegedly conflicting trade mark that is a mark registered to the opponent, number 902432, for the word OXTIVE. It has a priority date of 24 July 2001 by virtue of a convention claim made at the time of filing. The priority for the present mark is 29 March 2004. Thus, the opponent has the earlier priority.

9. The class 5 goods which the present holder has specified are: “Preparations for the treatment and prevention of disease”. The opponent’s registration in class 5 specifies: “medicines”. Although we often view “medicines” as liquids to be ingested for alleviation of illness or disease, the formal definition of “medicine” encompasses “any substance or substances used in treating disease; a medicament; a remedy” according to the Macquarie Dictionary (3^rd Edition). The respective goods here could, therefore, allowing for notional use of both trade marks[1], be identical.

   [1] As per comments of Evershed, J. in Smith Hayden & Co’s Application (1946) 63 RPC 97 at 101 (Ch D) and Hearing Officer Thompson in Re: Application by Woodland and Another 47 IPR 365 at 369.

10. The remaining test to be made under s.44(1) concerns the degree of similarity of the respective trade marks, OXTI and OXTIVE.

11. I do not intend to seriously look at the question of substantial identity between OXTI and OXTIVE given that both words have no meaning in English and one word only contains two-thirds of the letters of the other. Thus, my comments below are directed to a consideration of the concept of deceptive similarity between the competing trade marks.

12. At the outset Ms. Heathcote directed me to the judgement in Kowa Company Limitedv NV Organon, [2005] FCA 1282; 66 IPR 131 where Justice Lander comments at ¶116:

    On the evidence adduced in the applicant’s own case, the mark will only be used in the class described in the respondent’s alternative submission, namely, prescription pharmaceutical preparations for the treatment of hyperlipidemia.

13. Ms. Heathcote stressed that because the pharmaceutical goods involved for LIVIAL had been restricted to a specific therapeutic use that the trade marks LIVIAL and LIVALO had been found not to be deceptively similar. She argued that this was not the case here, as both the holder and the opponent could use their respective trade marks on ‘medicines’ not necessarily restricted to health professionals (Kowa v Organon, supra, at ¶189). Moreover, Ms. Heathcote added, Justice Lander had also made the point that restricting the goods on which the mark would be used meant that the medical conditions for which the goods were to be used were so dissimilar that the risk of confusion is further diminished (Kowa v Organon, supra, at ¶190). Ms. Heathcote further reminded me that this pre-condition does not apply here.

14. Additionally, the opponent encouraged me to find that the competing marks are at least deceptively similar, because – firstly, OXTI is completely encompassed within the opponent’s OXTIVE trade mark, and secondly, research has shown it is the prefix of a word that is better remembered by the consumer (as supported by London Lubricants (1920) Limited’s Application (1925) 42 RPC 264).

15. A determination of whether or not two marks are deceptively similar must be measured against the definition found at s.10 of the Act in these terms:

    Definition of deceptively similar

    10. 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.

16. Deception or confusion may be created in a number of different ways. The visual impacts, aural impressions or contextual ideas of the respective marks may all play a part. The law relevant to a comparison of trade marks for their deceptive similarity, as it applies to this decision, leads me to consider the following issues:

    • Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407 at 415 – marks are not to be looked at side by side, but the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have must be considered;
    • Registrar of TradeMarks v Woolworths Limited, 45 IPR 411 at 428 – there must be a real tangible danger not merely a possibility of confusion and the ‘ordinary person’ must entertain a reasonable doubt;
    • Registrar of TradeMarks v Woolworths Limited, 45 IPR 411 at 436-7 – assuming use by the holder of the cited trade mark in a normal and fair manner for any of the goods covered by that registration, I must be satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the present holder also uses its mark normally and fairly in respect of the class 5 goods covered by the proposed registration;
    •  Australian Woollen Mills Limited v F. S. Walton and Co Limited, 58 CLR 641 at 658 – the concept of “notional and fair use” of the opposed mark must be considered as must the “doctrine” of “imperfect recollection” of the opponent’s OXTIVE mark;
    • John Fitton & Co. Ltd’s Application, 66 RPC 110, at 113 – possible contextual confusion must be considered by any means that could be triggered by any commonality between the competing marks.

17. In a visual sense I do not seriously consider that a word consisting of six letters and a word consisting of four letters could be confused by a significant number of people. Even allowing for the possibility of a label being partly obscured, such a circumstance will not, I believe, be likely to cause deception or confusion among a significant number of prospective consumers. Ms. Heathcote also highlighted the contention that the goods involved may be inexpensive and chosen in haste from supermarket shelves without a great deal of consideration. One factor tending to negate this type of possible confusion lies in the fact that both of the words OXTI and OXTIVE have no associated meanings – and this would help to promote a more careful inspection of a label of a selected item and, thus, reduce the probability of possible confusion. Taken overall, I do not believe that confusion due to visual commonality is at all likely.

18. Ms. Heathcote also stressed possible aural or oral confusion with the comment that the ‘–VE’ ending for the word OXTIVE only contributed ‘weakly to the pronunciation of the trade mark’ and may not be accurately heard by a sales assistant or retailer resulting in the consumer being handed the incorrect medication. To obtain a medicine in this way, however, by means of a verbal request would almost always involve a trade channel where a health professional would be involved. Such persons are used to dealing with trade marks, generic names for drugs and other such technical language in the trade that would also tend to reduce the likelihood of any sort of deception or confusion causing difficulties.

19. A third possibility of confusion lies in the area of contextual confusion. I am of the view that in the present case this may afford the opponent its strongest claim. The confusion envisaged here is that although the prospective purchaser recognises that the two trade marks are indeed different, confusion may still be present in that the purchaser believes that the two marks have a common source. This is well described in John Fitton & Co. Ltd’s Application, 66 RPC 110, at 113 where Mr. S. E. Chisholm, the Assistant-Comptroller, commented:

    With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks ‘Jests’ and ‘Easyjests’ might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element ‘Jest’ in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.

20. The evidence from the Australian Trade Marks Register has shown that the OXTI- stem is not common to the medical or pharmaceutical trade, as set out in the Kemp declaration. This does support the opponent’s contention that OXTI and OXTIVE will be seen to be related by the prospective consumer. The opponent’s argument would be even better supported, of course, if it held more than one OXTI- trade mark. This could begin to show some sort of ‘family’ of OXTI- marks. As an alternative approach, a particular trade mark holder may find support for the ‘family’ concept in related marks by a perceived connection brought about by the actual structure of the ‘meaning’ of the alleged related mark. The two marks JESTS and EASYJESTS above provide such a structure. The added part to the initial mark in such a ‘family’ is seen as describing a characteristic or quality of the goods or services or as merely a laudatory epithet in relation to that initial mark. Thus, JESTS may be seen to be related to any one of EASYJESTS, CRIMSON JESTS, ROUND JESTS, SUPER JESTS, NEW JESTS and IMPROVED JESTS for example, given an appropriate set of goods or services. Any such perceived structure does not exist between OXTI and OXTIVE because one mark does not provide any ‘meaning’ in relation to the other mark. Taken overall, I cannot accept that the purchasing public would have any real expectation of some sort of contextual similarity between these marks that would lead to confusion. I note that Justice French commented, in dealing with a comparison of marks under s. 44, in Registrar of TradeMarks v Woolworths Limited, 45 IPR 411 at 428:

    (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 enough.

    (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.

21. Whilst I accept that such comparisons as discussed above visually or orally/aurally or contextually between the OXTI application and the OXTIVE registration may lead a small number of prospective purchasers to possible deception or confusion, I do not accept that a real tangible danger exists for a significant number of persons or that ‘the ordinary person’ will entertain ‘a reasonable doubt’.

22. From the foregoing, I find that the two trade marks OXTI and OXTIVE are not deceptively similar and thus, the ground of opposition taken under s.44 has not been made out.

    Decision

23. Regulation 17A.34(1) provides:

    17A.34(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 any ground on which the IRDA was opposed has been established.

24. From the foregoing, I have found that no ground of opposition relied on in the Notice of Opposition has been established. Thus, as the Registrar’s delegate in this matter, I dismiss this opposition. Accordingly, I decide to extend protection in Australia in respect of all of the goods and services listed in this IRDA, Australian application number 1018198 for the trade mark OXTI, one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided or discontinued. If the Registrar has not been so served with a notice of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with Regulation 17A.34(2).

    Don Nancarrow
    Hearing Officer
    Trade Marks Hearings
    15 December 2006