Argenta Limited v Argenta Discovery 2009 Limited

[2014] ATMO 80

TRADE MARKS ACT 1995

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

Re:Opposition by Argenta Limited to registration of trade mark application 1537931 (16, 42) - ARGENTA - filed in the name of Argenta Discovery 2009 Limited.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Blair Beven and Giulia Fimmano, solicitors, of AJ Park Intellectual Property Applicant: Phillips Ormonde Fitzpatrick – did not attend or put in written submissions
Decision:	2014 ATMO 80 s52 opposition: s60 - specialty market - reputation established - use of Trade Mark likely to deceive or cause confusion. Opposition established.

Background

1. In this matter Argenta Discovery 2009 Limited (‘the Applicant’), of Essex in the United Kingdom, has applied under the Trade Marks Act 1995 (‘the Act’) to register the trade mark which appears below:

Application No:           1537931

Priority Date:               29 January 2013

Goods/Services:          Class 16: Manuals and guides in the fields of chemistry, medicinal chemistry, biochemistry, chemical analysis, biotechnology, drug discovery and drug development; printed reports featuring dossiers in the fields of chemistry, medicinal chemistry, biochemistry, chemical analysis, biotechnology drug discovery and drug development; all the above expressly excluding any product or service related to the banking or financial sector

Class 42: Technical and scientific consulting services; providing medical and scientific research, and product design and development, all in the fields of pharmaceutical and healthcare products; design, development, research, analysis, testing, assessment, assistance and advice in the fields of chemical, pharmaceutical, medical and healthcare products and services; preparation of scientific reports relating to medical and pharmaceutical research; scientific research services; biological and chemical research and analysis services; drug discovery services; pharmaceutical drug development services; medicinal and synthetic chemical research and development services; chemical compound and chemical compound library research and development services; pharmaceutical research and development; screening of compounds against drug targets; automated screening of compounds, assay development and screening services for developing protocols and tests to qualitatively or quantitatively measure drug activity; research services in the fields of computation chemistry; informatics services including chemo- and bio-informatics and molecular informatics; combinatorial chemistry; scientific analysis; scientific data interpretation services; all the above expressly excluding any product or service related to the banking or financial sector

Trade Mark:                ARGENTA

(‘the Trade Mark’)

2. The application was examined as is mandated by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 23 May 2013.

3. On 23 June 2013 Argenta Limited (‘the Opponent’) of Auckland, New Zealand, filed Notice of Intention to Oppose. On 5 July 2013, the Opponent filed its Statement of Grounds and Particulars which refers to a ground under section 60 in the following terms:

The opponent is the owner of the following trade marks (collectively, “the opponent’s trade marks”):

(a) ARGENTA (‘the ARGENTA word trade mark’)

(b) argentă (‘the ARGENTA logo trade mark’)

The applicant’s trade mark application is the same or substantially identical to the opponent’s trade marks.

The opponent has used the opponent’s trade marks in Australia:

(a) since at least September 2006. This use predates the filing date of the applicant’s trade mark application for the applicant’s goods and services, which is 29 January 2013

(b) in public and commercially

(c) in relation to the following goods and services (collectively, “the opponent’s goods and services”):

(i) business administration and marketing services in relation to development and manufacture ·of animal health products and veterinary pharmaceuticals

(ii) professional business consultancy services relating to the development and innovation of animal health products and veterinary pharmaceuticals

(iii) providing commercial information and advice for manufacturers and other commercial entities regarding animal health products and veterinary pharmaceuticals

(iv) procurement services relating to the development and manufacture of animal health products and veterinary pharmaceuticals

(v) scientific research and design services for development in commercialisation of animal health products and veterinary pharmaceuticals

(vi) preclinical development of veterinary pharmaceuticals

(vii) commercial veterinary pharmaceutical manufacture

(viii) export of veterinary pharmaceuticals

(ix) contracting manufacturing facilities and pharmaceutical research and development expertise in relation to veterinary pharmaceuticals

(x) animal health research

(xi) research and manufacturing veterinary pharmaceuticals

(xii) supplying pharmaceutical and veterinary substances

(xiii) animal health remedies.

(d) With the purpose or having the effect of indicating a connection in the course of trade between the opponent’s goods and services and the opponent;

As a result of the opponent’s use of the opponent’s trade marks, [as alleged above] or otherwise, the opponent has a reputation for the opponent’s trade marks in Australia.

Use of the applicant’s trade mark application in relation to the applicant’s goods and services is likely to deceive or cause confusion

4. On 15 July 2013 the Applicant filed a Notice of Intention to Defend.  The Applicant has not, however, further participated in these proceedings.

5. The Opponent filed evidence in support of its opposition and subsequently requested to be heard.  As a delegate of the Registrar of Trade Marks I heard the Opponent’s submissions at a hearing in Canberra on 30 July 2014.  The Opponent was represented by Blair Beven and Giulia Fimmano, solicitors, of AJ Park Intellectual Property.

6. I note now that at the end of the hearing I adjourned proceedings for two weeks in order that Mr Beven could seek instructions concerning certain confidential material in evidence upon which the Opponent must necessarily rely in order to establish its section 60 ground. These instructions have now been forthcoming from the Opponent.

Onus

7. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, most recently, Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 per Murphy J at [30] to [37].

Evidence

8. The evidence in this matter comprises a statutory declaration by Douglas Robert Cleverly who is the founder and Managing Director of the Opponent.

9. Concerning the history of the Opponent, Mr Cleverly states:

[The Opponent] was incorporated in New Zealand on 7 August 2006. At the same time, Argenta Manufacturing Limited (“AML”), a wholly owned subsidiary of [the Opponent], was also incorporated. Attached and marked “Exhibit DRC-3” and “Exhibit DRC-4” are the certificates of incorporation for [the Opponent] and AML.

The purpose of incorporating those companies was to acquire an animal health product manufacturing business, at the time owned by Nufarm Limited (“Nufarm”) and merge it with a contract research business, at the time run by Chem Laboratories Limited (“Chem Labs”).

In August 2006, Nufarm’s animal health product manufacturing business, which included a material manufacturing facility located at 2 Sterling Avenue, Manurewa, Auckland, New Zealand, was purchased by AML.

Chem Labs, a business which I co-owned, provided contract research and development services to global pharmaceutical companies, predominantly in the area of animal health.

The operations of Chem Lab were incorporated into [the Opponent] following the acquisition of Nufarm’s animal health product manufacturing business In 2006, and are maintained today as the basis of [the Opponent’s} contract research operations.

1. Concerning the Opponent’s choice of the trade mark ARGENTA, Mr Cleverly states:

   We chose the name “Argenta” because of the business’ association with silver. The Latin word for silver is “argent”.

   [The Opponent’s] manufacturing facility was to be, and still is, located on Sterling Avenue. British coinage in silver is commonly referred to as “sterling”.

   The manufacturing facility also contains large amounts of stainless steel manufacturing equipment which happens to be silver in colour. So it seemed appropriate that the business name related somehow to silver.

2. Mr Cleverly also explains the goods and services provided by the Opponent:

   [The Opponent]’s business is two-fold: It is a contract research organisation and [it is also] a contract manufacturing organisation. [The Opponent] provides these services using the ARGENTA logo trade mark as well as the word mark ARGENTA.

   As a contract research organisation, [the Opponent] provides research services on a contract basis to companies involved In developing and distributing health products, predominately relating to animal health.

   As a contract manufacturing organisation, [the Opponent] manufactures third party health products, predominately relating to animal health, on a contract basis. [the Opponent’s] manufacturing capabilities include:

   (a) solid dose tablets

   (b) oral liquids

   (c) topical liquids & gels

   (d) sterile injectables

   (e) products containing flammable solvents.

   [The Opponent’s] manufacturing facility based in Auckland, New Zealand is internationally accredited which means our products can be distributed to almost anywhere in the world. [The Opponent’s] accreditations include:

   (a) ACVM - New Zealand accredited since 1992 (the facility was accredited prior to [the Opponent] acquiring the business)

   (b) APVMA - Australia accredited since 1992 (the facility was accredited prior to [the Opponent] acquiring the business)

   (c) MHRA - European Union since 2001 (the facility was accredited prior to [the Opponent] acquiring the business)

   (d) FDA - United States since 2007

   (e) Health Canada - Canada since 2010.

3. Mr Cleverly specifies the Opponent’s use of its trade marks in Australia as follows:

   [The Opponent] has offered its contract research services and contract manufacturing services to Australian clients, using the ARGENTA trade marks, since at least September 2006.  Attached and marked “CONFIDENTIAL Exhibit DRC-5” is a confidential invoice dated 7 September 2006 for some products [the Opponent] manufactured on behalf of one of its customers.

4. The goods on the invoice are a product for long term fly control in sheep which was supplied in 20 litre containers to an Australian company.  I gather that the goods supplied in that instance include product labeling for use by the Opponent’s Australian customer.

5. Concerning the Opponent’s advertising and promotional activities, Mr Cleverly states:

   Because the market and industry is quite small, much of [the Opponent’s] business is generated by way of long term relationships with industry people that tend to migrate from company to company.

   We do, however, undertake some extra advertising activities which includes advertising our services via our website at This website is used to advertise our contract research services and contract manufacturing services worldwide, including Australia. Attached and marked “Exhibit DRC-6” are print-outs from that website.

   We also often attend the AusBiotech Conference in Australia. Attached and marked “Exhibit DRC-7” is a copy of our completed application form to participate in the AusBiotech Conference in Australia in October 2009. Attached and marked “Exhibit DRC-8” is a copy of the poster we used at [the Opponent’s] stand at that conference to promote [the Opponent’s] contract research and development services.

   [The Opponent] considers that its capabilities are well known to animal health pharmaceutical companies including in Australia. This is illustrated by the fact that:

   (a)    the confidential annual Australian revenue figures attributed to the use of the ARGENTA logo trade mark on or in relation to Argenta’s contract research services and contract manufacturing services between 2009 and 2013 totals approximately AU$xxx million[2]. A confidential breakdown of these sales figures is provided in the table below:

   [2] Figure redacted due to confidentiality claim.

   (Table omitted)

   (b) [The Opponent] provides contract research and contract manufacturing services for eight of the top ten global animal health pharmaceutical companies, which have an Australian base to service the significant market in Australia, primarily relating to sheep and cattle. [Confidentiality claim: redacted as it has subsequently been waived]

   • Novartis.

   • Elanco.

   • Bayer.

   • Boehringer Ingleheim.

   • MSD Animal Health.

   • Merial.

   • Virbac.

   • Zoetis (previously known as Pfizer Animal Health).

   [The Opponent] also provides services to smaller, often privately owned, animal health companies that are developing new and innovative products.

   [The Opponent] has also, from time to time, undertaken contract research services and contract manufacturing services for human health pharmaceuticals. For example, in or about May 2010, [the Opponent] provided contract manufacturing services to a complementary health product manufacturer in Australia. Attached and marked “CONFIDENTIAL Exhibit DRC-12” an invoice relating to this service.

Section 60

1. Section 60 of the Act provides:

   60Trade mark similar to trade mark that has acquired a reputation in Australia

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

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

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

   Note:For priority date see section 12.

2. In order to found this ground the Opponent must establish that before the priority date of the opposed application another trade mark had a reputation in Australia.  Further, it must establish that the reputation relied upon was such that the use of the Trade Mark would be likely to confuse or deceive.

3. The Registrar’s delegate in Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd (2010) 85 IPR 647 observed that:

   Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

4. And in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirket [2012] ATMO 124 at [40] I observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

5. In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81] Kenny J said of reputation:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587; (2000) 50 IPR.[3] said that the reputation required to be demonstrated was:

one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

[3] Albeit in relation to subparagraph 28(a) of the Trade Marks Act 1955 which, in the circumstances of the matter, required ‘reputation’ to be established.

1. Here the goods and services are very specialized and the potential market is very small.  Knowledge of the Opponent’s trade mark might only exist amongst the few hundred people in Australia which constitute the marketplace.  None-the-less, the Opponent’s evidence demonstrates that its ARGENTA word and logo trade marks are well-known within this marketplace.

2. As regards the second leg of the section 60 ground, I am to consider whether the use of the Trade Mark would be likely to confuse or deceive.

3. Consideration of the likelihood of deception or confusion is informed by the factors outlined in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 by French J at [50]:

   (i) […] 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 […] 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.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

1. Here the trade marks of the parties are identical and the goods and services involved are to all intents the same and/or very closely related.  It does not bear dwelling upon at length.  It is without doubt that the reputation of the Opponent’s trade marks is such that use of the Trade Mark would be likely to deceive or confuse.

2. It cannot pass without observing that it is quite remarkable that two completely unrelated companies on opposite ends of the Earth could select such similar distinctive trade marks to use in relation to such similar goods and services; and yet such is the case here.

3. The Opponent has established its opposition to registration under section 60.

Decision

1. Subsection 55(1) of the Act provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

2. Having regard to the extent to which the Opponent has established its opposition, I refuse to register application 1537931.

Costs

1. Having been successful, the Opponent is entitled to its costs which I order against the Applicant at the Official Scale.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
05 September 2014