Astra Aktiebolaget v G D Searle & Co - [1997] ATMO 15

Trade marks act 1955

decision of a delegate of the registrar OF TRADE MARKS WITH REASONS

Opposition by G D SEARLE & CO to Trade Mark Application No. 582300 in the Name of ASTRA AKTIEBOLAG

As provided in the transitional provisions of Part 22 of the Trade Marks Act 1995 the provisions of the Trade Marks Act 1955 continue to govern this opposition. Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

The application

On 29 June 1992 Astra Aktiebolaget (Astra), a Swedish corporation, lodged an application, numbered 581300, seeking registration of the trade mark NITROMIST in respect of “All goods in class 5; pharmaceutical preparations and substances”. This specification was subsequently amended following an objection by an examiner of trade marks to “pharmaceutical preparations for the treatment of cardio vascular diseases” and it was in respect of that specification that the application was advertised as accepted in the Official Journal of 23 September 1993. Following the hearing of the opposition Astra requested that the statement of goods be amended to “pharmaceutical preparations for the treatment of cardiovascular diseases supplied by prescription”.

The opposition

Notice of opposition to the registration of the trade mark was lodged in accordance with s49 of the Act by G D Searle & Co (Searle) on 22 March 1994. The grounds of opposition were comprehensive and raised issues concerning proprietorship of the applicant’s mark, the distinctiveness of the mark, the use or intention to use the mark, the deceptiveness of the mark under both s28 and s33 of the Act. It also invoked the Registrar’s discretion to refuse registration of the mark.

The evidence

The evidence stages of the proceedings were completed on 19 August 1996. The evidence consists of:

Evidence in support:

statutory declaration of Kevin Patrick Hendry made 5 April 1995 together with Exhibits 1-11
a second statutory declaration of Kevin Patrick Hendry made 22 May 1995 together with Exhibit 12

Evidence in answer:

statutory declaration of Robert N Salt made 15 April 1996 with Exhibits A-C

Evidence in reply:

statutory declaration of Dr Robert Hedley Mannell made 18 July 1996 with Annexure A
statutory declaration of John Boyd made 16 August 1996 with Exhibits 13-15

On 4 December 1996 Astra requested a hearing of the matter. A hearing was set down for 7 March 1997 in Canberra at which Mr Malcolm Royal of Phillips Ormonde & Fitzpatrick, patent attorneys, appeared on behalf of Astra and Mr Simon Williams of Spruson & Ferguson, patent attorneys, appeared for Searle.

Submissions

Mr Williams began his submissions by stating that without abandoning any of the grounds set out in the notice of opposition he intended to rely primarily upon the grounds relating to the deceptiveness of Astra’s trade mark in terms of ss28 and 33 of the Act.

In respect of s28 Mr Williams submitted that regard must be had to the actual market awareness of the opponent’s trade mark NITRADISC as used while assuming a notional use of the applicant’s mark NITROMIST. The evidence of the opponent’s substantial use of and reputation in the mark NITRADISC in respect of a pharmaceutical product for the treatment of cardio vascular diseases was the subject of the two Hendry declarations. That product was clearly the same as the goods in respect of which Astra sought to register its trade mark. He said that although there was no evidence of actual confusion or deception, according to the first Hendry declaration Astra’s mark had not been used by it as at the relevant date. That date was the date of lodgment of Astra’s application: Jafferjee v Scarlett (1937) 57 CLR 115 at 120. Mr Williams went on to submit that in order to succeed under s28(a) the opponent needed only to establish sufficient evidence of a “real risk that the result of the user of the [opposed mark] will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source: Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 608.

Following the Pianotist case (1906) 23 RPC 774 at 777 Mr Williams submitted that it was necessary to have regard to the look and the sound of the respective marks, the goods to which the marks were applied, the kind of customer for the respective goods and in fact all the surrounding circumstances; and, furthermore, what would be likely to happen if each of the trade marks were to be used in the normal way. The net impression of the marks should be considered bearing in mind points of resemblance and points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solutions were to be arrived at not by adding up and comparing the results of such matters but by judging the general effect of the respective marks: Clark v Sharp (1898) 23 RPC 141 at 146. The marks should not be compared side by side: Hennessy & Co v Keating (1908) 25 RPC 361 at 367. Instead, there should be an assumption that customers may have an “imperfect recollection” of a mark and thus confuse it with another: Rysta Ltd’s Appn (1943) 60 RPC 80 at 108. Marks may be judged to be deceptively similar because of aural similarity even though visually distinguishable: Hargraves & Co Ltd’s Appn [1955] AOJP 2242. For aural comparison the marks should be considered in their natural and normal pronunciation keeping in mind the possibility that a word may be slurred: Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65. Consideration should also be given to the possibility of confusion in the course of telephone conversations: Magdalena Security Ltd’s Appn (1931) 48 RPC 477 at 478 (UCOLITE too close to COLITE); Taylors Elliots and Australian Drug Pty Ltd’s Appn (1938) AOJP 2211 at 2214 (FRUSAL too close to FRUIT SALT).

Mr Williams then referred to Broadhead’s Appn (1950) 67 RPC 208, in which ALKA-VESCENT was held to be too close to ALKA SELTZER, in support of the proposition that where an element which is common to marks being compared is descriptive or in common use in the trade its presence must to some extent be discounted though not entirely disregarded.

Another well-known proposition, he said, is that the first syllable or letter of the marks to be compared is the most important: per Sargent LJ in London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 at 279. This principle had been applied to two words of three syllables with the same first syllable in Merck & Co Inc v Pfizer Inc (1986) AIPC ¶90-270 (EQUIBAN too similar to EQUALAN).

Mr Williams submitted that the significance of the word DISC in Searle’s mark NITRADISC was of special importance given the “disc” application or administration of the pharmaceutical product sold by it under that name. It could be reasonably assumed, he said, that any consumer or patient (or pharmacist) having used and/or been familiar with the product NITRADISC would assume that a similar pharmaceutical product, used to treat heart disease, sold under the name NITROMIST, came from Searle and was the same pharmaceutical product as the NITRADISC product but with a “mist” application rather than a “disc” form of administration.

Mr Williams emphasised that the two marks in question were invented words so that the key differences between them would be lost in the overall similarities: McDowell’s Appn (1927) 44 RPC 335 at 341 (NUVOL too similar to NUJOL).

In reference to the market for the particular goods in question Mr Williams submitted that in the absence of evidence the relevant market should be taken to consist of persons of ordinary sense and intelligence with an ordinary recollection of words and trade marks although there could be a greater risk of confusion where the evidence showed the market to be in some manner specialised: Kimberly-Clark Corp v Vereinigte Papierwerke Schikedanz & Co (1967) 118 CLR 79 at 83. He argued that the “pharmaceutical” cases such as American Home Products v Godfrey Alexander Corp AOJP 2342 supported Searle’s case, especially since the product could be obtained without prescription. The case of skilled persons being unlikely to refer to relevant products in a way which would admit any reasonable probability of confusion (eg Bayer Products Ltd’s Appn (1947) 64 RPC 125 at 138 and Schering Corporation v Aktiebolaget Astra (1991) AIPC ¶90-845) were therefore distinguishable particularly in light of the evidence of both products being capable of being sold without prescription . The common first parts of the words also highlighted the likelihood of confusion if the words were handwritten: Johnson & Johnson v Boehringer Ingelheim KG (1995) 30 IPR 563 (ALDOLES and HALDOL deceptively similar); Elf Sanofi SA v The Upjohn Company [1996] AIPC ¶90-230 (APROVEL and PROVELLE deceptively similar).

With reference to s28 of the Act Mr Williams submitted that account might be taken of any peculiarity in the actual manner of use of the opponent’s mark likely to increase or decrease the risk of confusion : Coldstream Refrigerators Ltd v Aircraft Pty Ltd (1950) 20 AOJP 1491. In this the evidence showed, he said, that no similar NITRO- or NITRA- products were sold in respect of the relevant pharmaceutical goods. It also showed that the NITRADISC product was able to be sold without prescription as well as the serious consequences of any deception or confusion. The Mannell and Boyd declarations in particular showed the likelihood of oral and aural confusion (telephone prescriptions) and the likelihood of pharmacists misinterpreting a doctor’s handwritten prescriptions (if applicable).

Also in connection with s28 Mr Williams submitted that the concept of “blameworthy conduct” as applied in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Limited (1990) 171 CLR 363 should apply only in expungement proceedings and not in opposition proceedings.

Finally, in relation to s28 Mr Williams submitted that while the opponent carried the burden of establishing prior use or reputation: Arthur Fairest’s Appn (1951) 68 RPC 197, there was a general onus on the trade mark applicant to show that there was no reasonable likelihood that the trade mark would not deceive or cause confusion and that the Registrar had a general discretion to refuse registration: Hermes SA v E T Swift & Co Ltd (1984) 2 IPR 432 at 435-436.

Mr Williams stated that in relation to s33 the opponent relied on two registered trade marks, NITRODISC (357959) and NITRADISC (357553), both registered in respect of “nitroglycerin preparations for the treatment of heart disease”. For the purposes of s33, he said, Astra’s mark NITROMIST had to be compared with each of those marks in the light of notional fair use, being a normal and fair use on all the goods or services covered by the registrations. In the case of “substantial identity”, he said, the marks had to be compared side by side and the similarities and differences noted and their importance assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerged: Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 405 at 414-415. Deceptive similarity, on the other hand involved a different test. In that case the marks were not looked at side by side but the comparison was based on the recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have and the impressions that such persons would get from the defendant’s notional use of its mark: Shell v Esso, supra. Mr Williams contended that the applicant’s mark was both substantially identical to and deceptively similar to both of the opponent’s registered trade marks. He referred to the evidence in the Mannell declaration concerning likely aural deceptive similarity in use of NITROMIST and NITRODISC as a result of emphasis in speech on the first syllable and the likely slurring of the last syllable: Re Trade Mark “Cameo” (1974) 1 NZEPR 1 at 6.

Mr Royal began his submissions with an objection to the admission of the Mannell declaration which formed part of Searle’s evidence in reply but which he claimed was not in fact in reply to anything in Astra’s evidence in answer and should have been put in as part of Searle’s evidence in chief. He submitted that therefore there was no onus on Astra to respond to that evidence and it had chosen not to do so although it did not agree with the points made in it. At the same time he argued that it would be a denial of natural justice to rely on that declaration which raised an entirely new matter and was untested. With respect to the first Hendry declaration he claimed that the search of the Trade Marks Office database which was exhibited as Exhibit 5 of that declaration was incomplete and gave no indication that it was a limited search. There was also an implication, he said, that marks which were not listed in that Exhibit were unused, whereas there were other marks which were used and were available in the market. The evidence on this point, he alleged, was selective and composed of half-truths. It also avoided mentioning the fact, he said, that the common name used in the trade in relation to the relevant goods was “nitroglycerin” where the Hendry declaration referred throughout to “glyceryl trinitrate”. He submitted that the common chemical name was very relevant to the issue in the case and that therefore the evidence was unsatisfactory on that point. In his submission therefore the words NITRADISC and NITROMIST did not consist of the single words “mist” and “disc” with a prefix but were in fact two-word marks, “nitro” being a common abbreviation of “nitroglycerin”. The second word of each trade mark therefore assumed much more importance since the first word was descriptive and common to the trade. He submitted that there was very little in common between the words “mist” and “disc” and it would be a very careless professional person who would be confused by them in connection with the relevant goods which were very specialised products. He dismissed as fanciful and not a real possibility the chance of any professional person confusing NITRADISC or NITRODISC with NITROMIST, especially in view of the large number of products on the market with names beginning with NITRO-.

Turning to decided cases Mr Royal referred firstly to several passages from the judgment of Lord Greene MR in Bayer Products Ltd’s Appn (1947) 64 RPC 125. In that case the Master of the Rolls had observed, at 138:

It is not for the Court to construct imaginary and unlikely cases in order to bring Sec.12(1) of the Act into operation. The burden is, of course, on the applicant; but his case is not to be defeated by constructing rather fantastic or far-fetched imaginary cases involving a combination of circumstances which, however possible it may be, has no reasonable probability in any business sense.

In this connection he referred to a submission of Mr Williams that the typical heart patient could be old, nervous etc. But, said Mr Royal, there was no evidence that the patient was likely to be elderly or anxious and such a thing could not simply be assumed. Likewise, in answer to another submission of Mr Williams that prescribing by telephone was more common today than previously, Mr Royal again responded that there was no evidence for that proposition either. He reminded me that by law prescriptions must be in a doctor’s own handwriting. In any case there was no evidence as to how the respective marks would be perceived over the telephone.

He referred also to Johnson and Johnson v Boehringer Ingelheim KG (1995) 30 IPR 563 in which a delegate of the Registrar held that the trade marks HALDOL and ALDOLES were not substantially identical but that there was a small but still reasonable chance of deception or confusion being caused to purchasers of non-prescription pharmaceuticals. He held that no such risk existed in respect of prescription pharmaceuticals. He concluded that the application should be registered if the applicant amended the statement of goods to exclude non-prescription pharmaceuticals.

He referred also to Aktiebolaget Astra v Schering Corporation (1991) 22 IPR 485 in which the delegate of the Registrar, Mr Williams, found in the case of the marks IMDUR and UNI-DUR that there was no reasonable possibility of confusion between them. In referring to the Bayer case, supra, he said, at 489:

...I must allow for the fact that doctors and pharmacists are skilled professionals, used to dealing with potent drugs which can only safely be used and dispensed with caution...I can only conclude that the deliberate requirement by the regulations in relation to prescription writing, of a written instruction in “own hand” has been found to be a satisfactory way of recording such matters...

In Otsuka Pharmaceutical Co Ltd v Roussel-Uclaf (1992) AIPC ¶90-911 the delegate found that, despite the evidence of a handwriting expert, the marks GLACOLAN and CLAFORAN were not deceptively similar. She referred to the words of the delegate in Astra v Schering, supra, emphasising the fact that doctors and pharmacists are skilled professionals.

In an earlier case, Dow Chemical Co v Boehringer Sohn KG (1987) 9 IPR 360, Mr Williams had found that whereas there was no likelihood of verbal confusion between PERSANTIN and PRIFANTIN, there was a risk of confusion where the word marks were written. However, Mr Royal said that that case could be distinguished from the present inasmuch as in the marks concerned here the only common element was descriptive and common to the trade.

In relation to s28 Mr Royal submitted that the Office practice with respect to the requirement of blameworthy conduct was appropriate and that there was no evidence of such conduct on the part of Astra.

Mr Williams replied that there was no mischief or denial of natural justice involved in the Mannell declaration and that Astra had chosen not to respond to that evidence by applying to the Registrar for leave to adduce further evidence. As to the Hendry declaration he said that there had been no intention to limit the search of the Register and that I was entitled to look for myself at the state of the Register bearing in mind the relevant date which for the purposes of this opposition is 29 June 1992 the date of lodgment of the application. At that date some of the relevant marks had been removed and in the case of others there was no suggestion of use in Australia which was relevant under s28. In any case the registered marks were all very dissimilar to the marks at issue and to that extent were not relevant to these proceedings. He also contended that there was no intention to avoid the use of the word “nitroglycerin” in the Hendry declaration.

Mr Williams submitted that the Johnson v Boehringer case, supra, was not relevant to the present opposition and reiterated the proposition that the first syllables of marks were the most important element: London Lubricants, supra.. He also argued that while the common elements of word marks had of course to be considered, the words had to be considered as wholes.

That telephone prescribing was more common nowadays than before and that heart patients were liable to be aged he said were matters of record rather than for evidence. In 1947 when the Bayer case was decided people took much fewer drugs than today, 50 years later on. Angina was a serious medical condition and the consequences of confusion between drugs could be correspondingly serious. In any case, he said, Bayer was only relevant on the particular facts of the case and the circumstances of the time.

Decision

I wish to deal first with Mr Royal’s submission on the matter of the opponent’s evidence in reply and with the question of opinion evidence in general. In a letter to the Registrar dated 28 August 1996 Mr Royal requested that the Registrar exercise his discretion to give a direction in terms of regulation 5.16 that the evidence of Robert Hedley Mannell be disregarded on the ground that it was not in reply to any evidence in answer. He claimed that the applicant was severely prejudiced by the admission of the evidence because it had not had the opportunity to adduce its own evidence from an expert linguist. On 15 November 1996 a delegate of the Registrar replied that the Registrar would not give the direction sought, that it was not unusual for arguable misuses of the evidence in reply stage to occur in opposition proceedings under the 1955 Act. He added that it would be difficult to give the sort of direction asked for without a cumbersome process of gaining full submissions on the matter which could necessitate hearing the parties on the matter. It would not be in the interests of efficiency to establish such a practice. He concluded that the proper course was to seek leave to adduce further evidence.

In Phipson The Law of Evidence, 9th ed, it is stated that:

Evidence in reply, whether oral or by affidavit, must, as a general rule, be strictly confined to rebutting the defendant’s case, and must not merely confirm that of the plaintiff.

In Ernest Scragg & Sons Ltd’s Application [1972] FSR 219, an appeal in a patent opposition, where the hearing officer upheld the applicant’s objection to evidence sought to be adduced as evidence in reply, Graham J referred to Halsbury’s Laws of England in support of the proposition that:

When the onus of proof on all issues is on one party, that party must ordinarily, when preventing his case, adduce all his evidence, and may not, after the close of his opponent’s case, seek to adduce additional evidence to strengthen his own case.

His Honour said that that was a sound principle which applied to oppositions in the Patent Office just as it did to any other case. He dismissed the appeal, refusing to admit the evidence.

Regulation 5.16, which Mr Royal invoked, was made under the Trade Marks Act 1995 whereas it is clear that the present opposition is proceeding under the repealed 1955 Act. There is no equivalent provision in the latter Act.

In paragraph 19 of his declaration which constitutes the applicant’s evidence in answer Mr Salt makes the following statement:

It is my opinion that the medical profession, pharmacists and the public will readily distinguish the trade mark NITROMIST and the trade mark NITRADISC without any risk of confusion.

Dr Mannell, who is Associate Director of the Speech, Hearing and Language Research Centre at Macquarie University states at paragraph 9 of his declaration:

Based upon my studies, research and experience in linguistics and phonetics, I believe that, in ordinary speech, the word NITROMIST is extremely likely to be confused with the words NITRODISC and NITRADISC.

In stating his opinion as an expert that the two words were likely to cause confusion in ordinary speech Dr Mannell was clearly replying to the opinion evidence of Mr Salt that the two words would not cause confusion. I therefore find that the Mannell declaration is directly in reply to the evidence in answer.

The common law rule with regard to opinion evidence of an expert witness is that the witness may not be asked the question which the court itself has to decide. This rule is said to be based upon the undesirability of allowing the expert to become involved in the decision-making process. In Anchor Mortlock Murray and Wooley Pty Ltd v Hooker Homes [1971] 2 NSWLR 278, for example, which was a suit for breach of copyright which the plaintiff claimed to have in architects’ plans for the construction of project houses, evidence was led by each party from expert architects as to the similarity or otherwise between the plaintiff’s design and the alleged infringing design. Street J at 286 observed that in such a case the role of the expert is unusual:

The decision upon the issue of similarity is an original decision for the court itself. It is to be reached upon an assessment of such similarities and dissimilarities as appears to the court between the plans or buildings under consideration. The fact that one particular expert of the highest authority and of unimpeachable credit is permitted to swear to an opinion on similarity or dissimilarity does not relieve the court of the responsibility of forming its own opinion on this issue. In this sense the expert evidence in a suit such as the present fills a somewhat unusual role. It is almost as if each side calls an expert to argue out with counsel in examination-in-chief and cross-examination the similarity or dissimilarity which that particular expert sees between the plans and houses. By attending to the progress of this argumentative process between counsel and expert the court is enabled to perceive and more readily to appreciate the points of similarity and dissimilarity. In this way the tendering of expert evidence is of value in exposing the facets of the ultimate question which the expert opinion evidence is directed. But the important point is that, in distinction from the judicial process in relation to expert evidence such as is normally encountered in litigation, a court in the present type of litigation is entitled, and, indeed, bound to form and act on its own original opinion.

In Payton & Co Ld v Snelling, Lampard, & Co Ld 17 RPC 628, at 635 Lord Macnaghten said:

One word with regard to the evidence I should like to say. I think, as I have said before, that a great deal of the evidence is absolutely irrelevant and I do not myself altogether approve of the way in which the questions were put to the witnesses. They were put in the form of leading questions and the witnesses were asked whether a person going into a shop as a customer would be likely to be deceived and they said they thought that he would. But that is not a matter for the witness; it is for the Judge. The Judge, looking at the exhibits before him and also paying due attention to the evidence adduced, must not surrender his own judgment to any witness whatever.

That was followed by Lord Halsbury in North Cheshire and Manchester Brewery Company v Manchester Brewery Company [1889] AC 83 where he said in relation to the words of Lord Macnaghten above:

...which I take to mean this, that the judge is not to take the answers of witnesses on the very question that he is to try to the surrender of his own judgment

Again, in Addley Bourne v Swan and Edgar, Ld 20 RPC 105 Farwell J said, at 118:

It only remains then to call the evidence of people who can say that they themselves would be deceived. Now it is obviously extremely difficult to get any such evidence. Nobody likes to admit that he is so extremely foolish, as in many cases he would have to do. The result is that unless it is left to the eyesight of the Judge to judge for himself, there is practically no evidence open to the Plaintiff in an action of this sort.

He went on to say (1903) 1 Ch 211 at 224:

It appears to me that there is also another reason against the admissibility (that is, of expressions by witnesses of the opinion that a particular mark is or is not calculated to deceive the public), and that is that I do not see how you can call any individual to give what is in truth expert evidence as to human nature, because what they are asked in this form of question is, not what would happen to them individually, but what they think the rest of the world would be likely to suppose or believe. They are not experts in human nature, nor can they be called to give such evidence, and, apart from admissibility, one cannot help feeling that there is a certain proneness in the human mind to think that other people are perhaps more foolish than they really are. I do not think that Carlyle is alone in his estimate of the intelligence of the majority of the inhabitants of these islands. Therefore that is ruled out as a matter of evidence.

In Claudius Ash, Sons & Co Ltd v Invicta Manufacturing Company Ltd (1911)28 RPC 597 at 608 Buckley LJ said:

To my mind, in all these cases the judge necessarily must proceed upon evidence . You cannot put to any particular witness the question: “Is this article calculated to deceive?”. That is for the judge to determine - it is the point in issue; you can only ask a witness: “Would this deceive you?” And if he says it would, then ask him how it deceives him. Of course that would involve all the various articles which are sold in the trade, but it is for the judge to determine upon the evidence adduced by persons competent to give evidence upon the subject, and to give evidence which satisfies the mind of the tribunal, that they, or certain of them, are deceived or to assign reasons why they would be deceived, and then it is for the judge to say whether there is deceit or not.

The judgment in Bourne v Swan & Edgar, supra, was approved by the High Court of Australia in Don v Burley (1916) 22 CLR 136. Barton J quoted the passage cited above and went on to say:

I am of the same opinion. I do not think that much value is to be attached to such declarations concerning the likelihood of deception as we have in this case, and, in fact, I think they are not evidence on that question. I judge by my eyesight , and I think that there is no likelihood of deception arising out of the use of these two devices concurrently. I do not think that a person of ordinary intelligence - and that is really the hypothetical purchaser - would be likely to be deceived, or, as I put it in William Charlick Ltd v Wilkinson & Co Proprietary Ltd 16 CLR 370 at 377, “Looking at these two labels not placed closely in juxtaposition and putting oneself as nearly as possible in the position of an intending purchaser, it seems to me that a person having an ordinary recollection of one label would not be deceived into asking for a packet bearing the other label, seeing it in a shop. I am talking of a person of ordinary sense, not such a person as Farwell J spoke of in the passage I have quoted”. Using my own observation and intelligence in the way I am called upon to do in a case of this sort, I do not think that a person of ordinary intelligence and memory would be deceived after first seeing one of these labels and then within a reasonable time seeing the other. He would not take one for the other....There is a common supposition that the criterion is, would an ignorant customer be deceived? That is not the criterion.

In Thomas Bear & Sons (India) Ld v Prayag Narain & Jaggennath (1941) 58 RPC 25, a decision of the Privy Council, Viscount Maugham said:

Evidence of actual deception may be available, and if available may be very valuable. There is no such person as an expert in human nature, and it is now well settled that a witness cannot be called to say that it is likely that purchasers of the goods will be deceived. This can only be a matter of opinion formed after the dispute has arisen and too often without any judicial consideration of the opposing contentions. On the other hand a person who is accustomed to buy the articles in question may be called to say that he would himself be deceived, and cross-examination will often show what weight should be attached to such a statement.

A more recent case in which the same principle was affirmed is Mothercare UK Ltd v Penguin Books Ltd [1988] RPC 113. In that case Dillon LJ said, at 116:

The question whether there is a misrepresentation, like the question whether there is a likelihood of deception, is a question for the tribunal and not a matter for a witness.

There is one recognised exception to the acceptability of evidence as to the likelihood of deception and confusion. It was stated by Lord Evershed in George Ballantine & Son v Ballantyne Stewart & Co [1959] RPC 273 at 280:

It is no doubt true ... that the question whether a mark is likely to cause confusion or lead to deception is the question for the court’s decision and, accordingly, that it is not legitimate for a witness to state or suggest, by way of evidence, expressed in general terms, the answer which it is the court’s duty to give. But it is, in my opinion, going too far to say that a witness expert in the trade which is involved in the proceedings before the court, may not legitimately say, in giving evidence, that according to his experience of how the business in which he is and has been concerned is conducted, traders or customers will adopt certain characteristics or practices; though the weight to be attached to such evidence must always be a matter for the court.

A similar view was expressed by Lord Diplock in “GE” Trade Mark” [1973] RPC 297 at 321:

My Lords, where goods are of a kind which are not normally sold to the general public for consumption for domestic use but are sold in a specialised market consisting of persons engaged in a particular trade, evidence of persons accustomed to dealing in the market as to the likelihood of deception and confusion is essential. A judge, though he must use his commonsense in assessing the credibility and probative value of the evidence is not entitled to supplement any deficiency in evidence of this kind by giving effect to his own subjective view as to whether he himself would be likely to be deceived or confused. In the instant case this would apply to the large industrial electrical machinery ... But where goods are sold to the general public for consumption or domestic use, the question whether such buyers would be likely to be deceived or confused by the use of the trade mark is a “jury question” ... The judge’s approach to the question should be the same as that of the jury. He, too, would be a potential buyer of the goods. He should, of course, be alert to the danger of allowing his own idiosyncratic knowledge or temperament to influence his decision, but the whole of his training in the practice of the law should have accustomed him to this, and this should provide the safety which in the case of a jury is provided by their number.

This exception was applied by Knox J in Island Trading Co and Others v Anchor Brewing Co and Another [1989] RPC 287 to admit opinion evidence from persons in the relevant trade.

On the other hand, however, in Bayer Products Ld v A Wander Ld (1947) 64 RPC Wynn-Parry J said of such evidence:

A number of persons, all members of the Pharmaceutical Society of Great Britain, have made statutory declarations on behalf of the Appellants in which they say that, if a product is put on the market under the name “Diasil”, there is bound to be confusion between the two marks.

Such evidence as this is, in my view, quite inadmissible, and I leave it entirely out of account in considering this matter.

On behalf of the Respondents a number of persons, enjoying the same qualification, have each expressed the view for himself that he would not confuse the two names if used in regard to two different pharmaceutical preparations.

This type of evidence has the initial advantage of being admissible and, on the view that I take of the matter, is not without importance.

Being a potential buyer of the goods here in question and having no idiosyncratic knowledge or temperament to declare it seems that I should treat the question whether such buyers would be likely to be deceived or confused by the use of the applicant’s trade mark as a “jury question”. However, these cases were of course all court cases and it is commonly said that the Registrar acting as a tribunal in opposition proceedings is not bound by the strict rules of evidence as they apply to a court.

In Anthony Hordern & Sons Ltd v Hotels Arcadia Ltd (1934) 4 AOJP 767 in an appeal to the Law Officer from the decision of the Registrar in an opposition the argument in effect was confined to the question whether or not evidence was improperly received and acted upon by the Registrar. It was contested by the appellant that the Registrar on the hearing before him was bound by the legal rules of evidence and that he had admitted statements as evidence which, according to those rules, were inadmissible as evidence. It was further contended that, if regard were had only to such matters as were legally admissible as evidence before the Registrar, the opposition should not have succeeded and that the application should have been granted. The appellant submitted that the word “evidence” had a technical meaning and that when that word was used in a statute or regulation, then, unless the contrary intention appeared, either expressly or by necessary implication, the word must be given its technical meaning, and that this imported that only such matters as were admissible in accordance with the legal rules of evidence were receivable before the Registrar. It was said also that in opposition proceedings, at least, the Registrar was required to proceed quasi-judicially.

The Law Officer found some support for the appellant’s arguments, at 768:

Some support for the appellant’s argument is found in the proposition stated in Halsbury’s Laws Of England, Volume 13, p.419, paragraph 580 that - “the necessity of applying the law of evidence presupposes two things -
(a) The existence of a Court, or of some tribunal, in the nature of a Court, whose duty it is to ascertain the facts;
(b) An issue to be determined”

No authority is cited in Halsbury for the above proposition. It is, however, in accordance with statements of text-writers on the Law of Evidence-see Phipson 7th Ed. pp. 1 and 2; Best 9th Ed. p20; Powell 9th Ed. p. 29. But even if the proposition be well-founded, the question arises whether or not the Registrar in opposition proceedings is a “tribunal in the nature of a Court”.

He went on to say, at 769:

For purposes other than judicial proceedings , the word “evidence” has a very wide and general meaning ... If the Registrar is not a “tribunal in the nature of a Court”, or if, in other words, proceedings before him are not “judicial proceedings” then it appears clear that the rules laid down by the Courts regarding the admissibility of evidence, have no application in such proceedings

As I have previously stated, the matter is a very important one affecting seriously the administration of the Trade Marks Act

He also referred to the wording of ss42, 43 and 44 of the Trade Marks Act 1905 and said, ibid:

It will be observed that the function of the Registrar, of the Law Officer, and the Court respectively, under Sub-section (2) of each of those Sections, is stated in substantially the same words, and this supports the contention that the Registrar, in respect of opposition proceedings, is a tribunal in the nature of a Court.

On the other hand, from the decisions of the High Court and of the Privy Council, on the interpretation of Section 71 of the Constitution, it would appear that no part of the judicial power of the Commonwealth is vested in a tribunal such as the Registrar, and that he is not a federal Court within the meaning of that Section

In the event, however, it was not necessary for the Law Officer to decide the question in the appeal because at the close of the hearing counsel for the respondent requested him to concede the technical question raised by counsel for the appellant and to find on the facts. He therefore expressed no opinion on the question whether the Registrar, on the hearing of opposition or other proceedings before him, is bound by the legal rules as to the admissibility of evidence. He did go on, however, to reject every statement which consisted of hearsay, or of opinion, or of an irrelevant matter.

The similarity in the wording of ss42-45 of the 1905 Act relied on in the Anthony Hordern case, supra, gave rise to an action challenging the power of the High Court to hear appeals from the Registrar in opposition cases In Farbenfabriken Bayer Aktiengesellschaft v Bayer Pharma Pty Limited (1959) 101 CLR 652I it was claimed that the legislature had attempted to confer an administrative function on the Court, that the purported jurisdiction to decide appeals from the Registrar was not in aid of the exercise of judicial but of administrative power. Dixon CJ said, at 658:

The statute might have drawn a clear distinction between on the one hand the administrative decision to give effect to an opposition and refuse registration or to overrule an opposition and grant registration and on the other hand a jurisdiction conferred upon the Court to entertain a challenge to the administrative decision and determine judicially that the title to registration did or did not exist and to do so by a binding and enforceable decree. If that had been done no difficulty could be found in treating the provision conferring such a jurisdiction upon the Court as a valid exercise of the legislative power conferred by s76(ii) or s77(iii) [of the Constitution] as the case might be...But the distinction was not maintained in the language which the legislature adopted with reference to the registrar, the Law Officer and the Court in ss42 to 45...In other words, the contention advanced before us is to be attributed to the use by the legislature of the same or similar terms in describing the administrative power which ss42 and 43 purport to confer and the judicial power which ss44 and 45 purport to confer. It is not surprising that similarity of expression has given rise to the argument that one or the other provision must be bad; and since it is not assumed that judicial power has been conferred on administrative officers the contention is that the truth must be that it was intended to confer an administrative power on the Court.

His Honour went on to conclude:

There is therefore in s44 a provision which is apt to confer judicial power and relates to a fit subject for judicial power; the subject involves a matter within the meaning of s76(ii) of the Constitution; in the character of the provision itself, in the manner in which the power is to be exercised or in the subject no reason can be found for denying that it forms a proper exercise of the constitutional power conferred by that provision and the provision contained in s77(iii) of the Constitution.

However, in another case involving the same two parties, Farbenfabriken Bayer Gesellschaft v Bayer Pharma Pty Limited (1964-65) 113 CLR, a differently constituted High Court held that the Registrar of Trade Marks or an Assistant Register, exercising a delegated authority, acting under s21 of the Trade Marks Act 1955, that is, the power to amend a registered trade mark, exercises a quasi-judicial function which affects the rights of private persons and in a proper case he may be controlled by prohibition. On that occasion the Court said:

Counsel also submitted that prohibition would not go to the Assistant Registrar because, so he contended, his functions under s21 were purely administrative. In support of this contention he referred us to R v Commissioner of Patents; Ex parte Weiss (1939) 61 CLR 240, in which there was some discussion of the question whether prohibition would, in any circumstances, lie to the Commissioner of Patents. Latham CJ and Evatt J rejected the view that it would not, while Starke J thought that the particular function which the Commissioner had performed in that case was a purely administrative one, not involving any duty to act judicially, and that the writ would not lie. It seems to us, however, to be beyond question that the Registrar or an Assistant Registrar, exercising a delegated authority, acting under s21 of the present Act, exercises a quasi-judicial function which affects the rights of private persons and that in a proper case what he does may be controlled by prohibition.

In the Weiss case referred to by the Court, which concerned a patent opposition, Latham CJ had approved the proposition of Atkin LJ in R v Electricity Commissioners (1924) 1 KB 171 where that Lord Justice in dealing with both certiorari and prohibition had said:

It is to be noted that both writs deal with questions of excessive jurisdiction, and doubtless in their origin dealt almost exclusively with the jurisdictions of what is described in ordinary parlance as a court of justice. But the operation of the writs has extended to control the proceedings of bodies which do not claim to be, and would not be recognized as, courts of justice. Wherever any bodies of persons having legal authority to determine questions affecting the rights of subjects, and having the duty to act judicially, act in excess of their legal authority they are subject to the controlling jurisdiction of the King’s Bench Division in these writs.

In R v Quinn and Another; ex parte Consolidated Foods Corporation (1977) 138 CLR which was a return of an order nisi granted to Consolidated Foods for prohibition against the Registrar to show cause why a writ of prohibition should not issue prohibiting him from proceeding further in certain applications made under s23 of the Trade Marks Act 1955 for the removal of trade marks for non-use, it was argued that the legislature had purported to confer a judicial power on the Registrar. This was the reverse situation to that in the Bayer case, supra, where it was contended that an administrative power had purportedly been conferred on the High Court. The Court held unanimously that s23 did not confer a judicial power on the Registrar and that the order nisi should be discharged. Aickin J said, at 21:

In my opinion the present case differs from the Bayer case only in that the jurisdiction in s23 of the Act is conferred by a single expression, ie “High Court or the Registrar may... order etc”, upon a judicial body and a non-judicial body in the alternative, whereas the jurisdiction in the 1905 Act is conferred on a judicial body by separate sections (ss44-45 and ss42-43 respectively) but in virtually identical language. In the Bayer case, as in this case, “it is not surprising that similarity” [identity] “of expression has given rise to the argument that one or other provision must be bad” though the attack is made on the power of the Registrar and not on the power of the Court.

I am unable to see any material distinction between the provisions dealt with in the Bayer case and the provision now in question. The fact that the former dealt with an opposition to registration of a mark and the latter with an application to remove a mark from the register for non-user is not a sound basis for distinguishing them. The provisions, and the nature of the function to be performed, are not materially different.

It is for those reasons that I am of the opinion that this case is concluded by the Bayer case and that the order nisi should be discharged.

The decisions in the above cases are not at all easy to reconcile but I think it can be said at least that the function of the Registrar in opposition proceedings is an administrative one but that in certain circumstances he may be obliged to act judicially or, alternatively, that the power he exercises is a quasi-judicial one. The position which has traditionally been taken by the Registrar is that he acts as an administrative tribunal and is not therefore bound by the strict rules of evidence For example in Re Application by Simac SpA Macchine Alimentari (1986-1988) 10 IPR 81 the Chief Assistant Registrar said, at 87:

I appreciate that I must be cautious first in deciding whether I can take into account any of this evidence of instances of alleged actual confusion, and secondly, assuming that I can take evidence of an instance into account, in deciding what weight, if any, should be placed on that evidence. The evidence is at least "second hand", and in some cases "third hand". None of the persons allegedly confused has put a declaration in evidence. On a strict application of the rules of evidence, I do not think that any of the material would be admissible. However, an administrative tribunal such as the Registrar or his delegate is not bound by the strict rules of evidence. It was said by Lord Denning MR in T.A. Miller Ltd. v. The Minister for Housing and Local Government and Another [1968] 1 WLR 992 that a tribunal (of this kind) is master of its own procedure provided that the rules of natural justice are applied, and that tribunals are entitled to act on any material which is logically probative, even though it would not be evidence in a court of law. Similarly Deane J., sitting in the Federal Court of Australia, issued a judgement including the following paragraph:
"These technical rules of evidence, however, form no part of the rules of natural justice. The requirement that a person exercising quasi‑judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non‑existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event the occurrence of which would be relevant."

(See Minister for Immigration & Ethnic Affairs v. Pochi 31 ALR 666 per Smithers, Evatt and Deane JJ).

Similarly, in Strata Welding Alloys Pty Ltd v Charles & Reid Associates (1985-87) 9 IPR 539 at 541 the Chief Assistant Registrar observed:

It was agreed at the outset of the hearing that all 3 applications would be dealt with as one, the grounds of opposition and the evidence being common to all 3. It was also acknowledged by both sides that the ordinary rules of evidence do not apply in proceedings of this nature, the hearing officer having the authority to receive material not normally receivable by a Court but giving it only such weight as its nature deserves. For example, first hand factual evidence will be given greater weight than hearsay or argumentative matter. Both Mr. Simos and Mr. Ireland submitted that the other party's evidence is susceptible to criticism on the latter grounds. It is appropriate for me to note at this point that I have been guided, when considering the evidence before me in these proceedings, by the observations of Lord Denning M.R. in TA Miller Ltd v The Minister for Housing & Local Government (1968) 1 WLR 992, and of Deane J. in Minister for Immigration & Ethnic Affairs v Pochi 31 ALR 666, to the effect that tribunals of this kind are entitled to act on any material which is logically probative, provided that the rules of natural justice are applied, and both sides have had a fair opportunity to comment upon or contradict any such material.

On the other hand the Assistant Comptroller in Bayer v Wander, supra, acting for the Comptroller-General had no compunction about ruling the opinion evidence of members of the Pharmaceutical Society of Great Britain as inadmissible:

The opponents’ trade declarants all refer to their knowledge of the mark “Alasil”, and the express view that if a product under the name “Diasil” were introduced into the same market confusion would be bound to ensue, but they do not speak, as would be expected, to their own personal reactions in this regard. It seems that the confusion which their evidence is intended to establish falls for consideration both under Sec 11 and Sec 12, but in my view the opinions expressed by these declarants on the question of likelihood of confusion are in any event inadmissible for the purpose for which they were tendered, since they merely suggest the conclusion at which I am to arrive, namely, as to whether or not deception or confusion would be likely because of the resemblance between the two marks concerned.

It appears to follow that while I am not bound to rule inadmissible opinion evidence on the very issue which I am required to decide, that is, the deceptive similarity of the trade marks, I think I am entitled in light of the strong condemnation by the courts of such evidence to give that evidence no probative weight at all. I intend to treat the opinion evidence in the declarations of Hendry, Salt, Mannell and Boyd in that way. All have expressed opinions as to the likelihood of deception or confusion of doctors, pharmacists and/or the general public by the applicant’s mark, which is the very matter which I have to decide.

Sections 28 and 33

The tests to be applied under ss28 and 33 may be stated as follows, paraphrasing the words of Evershed J in Smith Hayden & Co Ltd's Application (1946) 63 RPC 97, in which he compared the tests under ss.11 and 12 of the Trade Marks Act 1938 (UK), which correspond to ss28 and 33 of the Trade Marks Act 1955 (Cth):

The questions for my decision ... have been formulated, and I think accurately formulated, as follows:
(Under s.28) "Having regard to the reputation acquired by the name NITRAdisc or NITRODISC, is the Registrar satisfied that the mark applied for, if used in a normal or fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?";
(Under s.33) "Assuming user by the opponent of its mark NITRADISC or NITRODISC in a normal and fair manner for any of the goods covered by the registration of that mark ... is the Registrar satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant also uses its mark NITROMIST normally and fairly in respect of any goods covered by their proposed registration?"

I will consider each of those sections in turn.

Section 33

In deciding whether the marks under consideration are substantially identical it is necessary to compare them side by side, per Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil )Aust) Ltd (196) 109 CLR 407 at 414-415:

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 similarity that emerges from the comparison ...

In such a comparison between NITRODISC and NITRADISC on the one hand and NITROMIST on the other the differences are obvious. While two of the marks have the prefix NITRO- in common and two of them have the prefix NITR- in common, the words DISC and MIST are everyday words with quite different appearance and meaning.

With respect to deceptive similarity I refer to the well-known words of Parker J in Pianotist Co’s Appn (1906) 23 RPC 774 at 777:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

Also in relation to deceptive similarity: Dixon and McTiernan JJ. in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 said at page 658

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.

There is no evidence of actual cases of deception just as there is no evidence of the use in Australia of the trade mark NITROMIST by Astra.

Despite the London Lubricants case, supra, I think that each of the words, although the primary stress may fall on the initial syllable, would have in pronunciation a strong secondary stress on the final syllable, that each of the words “disc” and “mist” would be clearly pronounced without any “slurring” or weakening of the vowel. In that case the combination of a dental and a palatal in the former word and of a labial and a dental in the latter produce quite different sounds. The words would therefore be clearly distinguishable aurally.

In considering whether two marks are likely to deceive or cause confusion one is entitled to take into account the circumstance that the names of a number of trade marks having a common prefix or suffix are registered and used in Australia: Mond Staffordshire Refining Co Ltd v Harlem (1929) CLR 474. There was disagreement between the parties as to the number of such marks having the prefix NITR-. Exhibited to the Hendry declaration at Exhibit 5 is a copy of an online search of the Trade Marks Office database showing details of trade marks having such a prefix. The present state of the Register is set out below:

Number	Mark	Proprietor	Status	Goods
152374	NITROMIN	Takeda Chemical Industries	Removed - Not Renewed	Palliatives for neoplastic diseases
180395	NITRIN	Johnson & Johnson	Registered	Pharmaceutical preparations for human use particularly cardiac stimulants included in this class
216106	NITROSPAN	Rorer International (Overseas) Inc	Registered	Cardiac stimulant
287603	NITROGLYN	Forest Laboratories Inc	Registered	Pharmaceutical preparations and substances for human and veterinary use
300288	NITRONG	US Ethicals Inc	Registered	Pharmaceuticals products, preparations and compositions
301658	NITRO-BID	Marion Merrel Dow Inc	Registered	Pharmaceutical and medicinal preparations and substances, all containing nitrogen
313384	NITROL	Rorer International (Overseas) Inc	Registered	Medical preparation in ointment form containing nitroglycerin for topical use for the relief and prevention of anginal attacks
332284	NITROBAAT	NV Organon	Expired - Renewal Possible	Pharmaceutical preparations containing nitro-compounds for human use
345470	NITRO-DUR	Key Pharmaceuticals Inc	Registered	Pharmaceutical preparations for the treatment of heart conditions, all containing nitroglycerin
345598	NITRODERM TTS	Ciba-Geigy Ltd	Registered	Pharmaceutical preparations for application to the skin and for absorption through the skin to the circulatory system
347313	NITRADOS	Revlon Health Care (UK) Ltd	Registered	Goods in this class consisting of or containing a nitrogen compound or compounds
357553	NITRADISC	GD Searle & Co	Registered	Nitroglycerin preparations for the treatment of heart disease
357959	NITRODISC	GD Searle & Co	Registered	Nitroglycerin preparations for the treatment of heart disease
360371	NITROLINGUAL	G Pohl-Boskamp GmbH	Registered	Pharmaceutical preparations for sublingual and oral administration containing nitroglycerine
360372	NITRONAL	G Pohl-Boskamp GmbH & Co	Registered	Pharmaceutical preparations containing nitroglycerin in different ampoule forms for intravenous infusion for hospital use only
416957	NITROCINE	Schwarz Pharma Aktiengesellschaft	Registered	All goods in this class containing nitrogen or nitrogen or nitrogen compounds including pharmaceutical, veterinary and sanitary preparations
455666	NITRO-SPRAY	Rhone-Poulenc Australia Pty Ltd	Removed - Not Renewed	Pharmaceutical and veterinary preparations and substances containing nitro-compounds
473555	NITROCOR	Riker Laboratories Inc	Registered	Pharmaceutical preparations containing nitro-compounds for use in the treatment of heart disease
534240	NITRONOX	Air Liquide Australia Limited	Registered	Gases and gas mixtures for medical purposes, including oxygen gas mixtures, mixtures of oxygen and nitrous oxide, analgesic gas mixtures and anaesthetic gas mixtures, all being goods included in class 5
581299	NITROPUFF	Astra Aktiebolag	Registered	All goods in class 5; pharmaceutical preparations and substances
581300	Nitromist	Astra Aktiebolag	Opposed	Pharmaceutical preparations for the treatment of cardio vascular diseases
646002	NITRADISC	GD Searle & Co	Registered	Pharmaceutical preparations for the treatment of cardio vascular diseases
700322	NITREK	Bertek Inc	Registered	Transdermal patches including transdermal patches for application of nitroglycerine
710608	NITROPOINT	BAYER Aktiengesellschaft	Accepted	Pharmaceutical preparations
710609	NITROSPOT	Bayer Aktiengesellschaft	Accepted	Pharmaceutical preparations
724102	NITRON	Alphapharm Pty Limited	Pending	Pharmaceutical preparation used for prophylaxis of angina pectoris

It seems to me to be abundantly clear from the state of the Register that the prefix NITR- is common to the trade not only in pharmaceutical substances in general but to products for the treatment of heart disease in particular. Nevertheless Mr Hendry declared that he was aware, as at 5 April 1995, apart from the opponent’s own NITRADISC mark, of the use of only the NITRO-BID and NITROLINGUAL marks, the former in respect of an ointment and the latter of a spray. He is borne out in this by copies of the MIMS Annuals for the years 1992, 1993 and 1994 which list only those three trade marks. The same publication for the year 1995 which is exhibited to the Boyd declaration also lists only the same three trade marks. Also, exhibited to the declaration of Mr Salt for the applicant is a copy of the Australian Prescription Products Guide for the year 1996 which appears to list the same three trade marks as well as NITRO-DUR TRANSDERMAL DELIVERY SYSTEM as used on adhesive patches containing glyceryl trinitrate to be released into the circulatory system. The product is indicated for the prevention of chronic stable angina pectoris due to coronary artery disease. I am unable to explain the discrepancy between the large number of marks on the Register and the handful which appear to be available on the market. However, taking the two groups of facts together I am satisfied that to doctors and pharmacists at least a trade mark beginning with NITR- would immediately suggest a substance containing a nitrogen compound and, depending on the surrounding circumstances, quite probably one for the treatment of heart disease.

There is a class of cases known as the “pharmaceutical cases”. This is because, as the Assistant Comptroller said in the Bayer case, supra:

I might add here that in coming to this conclusion I have had due regard to a consideration which in my view falls within the general discretionary powers of the Registrar, namely, that he is entitled to take into account the nature of the consequences which might ensue from the confusion of two marks and of the goods sold thereunder, with the result that he is generally more strict against the registration of marks for goods such as pharmaceutical preparations and drugs, which may be of a dangerous character, than he would be in the case where harmless goods, such as games and toys, are concerned.

Both Mr Royal and Mr Williams referred me to a number of such cases, including the Bayer case, and made submissions as to the likely consequences of confusion or deception resulting from the use of the marks.

With respect to the special circumstances surrounding prescription drugs and the likelihood of confusion and deception arising from the misinterpretation of doctors’ handwriting Lord Greene held in The Bayer case, supra, at 137:

...which I regard as a circumstance of the utmost importance when you have to answer the questions which the subsection propounds to the Court. Once you get the position that only a doctor can order sulphadiazine, that he must give a written prescription and that a chemist cannot supply it without such a prescription, you ensure that the article in question is only going to pass at that stage through the hands of skilled persons, who by their training, their experience and their knowledge would be most unlikely to refer to that drug in a way which would admit of any reasonable possibility of confusion

Of course, it is impossible to exclude entirely the risk of confusion. What we are concerned with are not unlikely cases which may happen once in a one hundred years, but reasonable probabilities, and we have to ask ourselves in relation to those facts: Is there such a risk that a doctor or chemist or the two of them in combination, by some carelessness in expression, some obscurity in handwriting, some slip of recollection or some careless mistake which you would not expect highly trained professional people to fall into, will refer to the product in such a way as will lead the court to say that there is a reasonable probability of confusion?

In my opinion there is not. It seems to me that, if one is really to give weight to such a risk, it involves attributing to those highly skilled, experienced and careful people to whom the legislature has entrusted, and to whom alone the legislature has entrusted, the precautions necessary under the Poisons Act, qualities of carelessness or incompetence which, although they may exist in a person here and there on occasions - that, of course, cannot be denied - are not usually found in that class of persons. We are not concerned with hypothetical possibilities, but with the ordinary practical business probabilities, having regard to the circumstances of the case.

Having considered the words here at issue as far as the look and the sound of the words is concerned, and the surrounding circumstances of the case, including the special circumstance of the nature of the goods, I find that the words are not deceptively similar in terms of s33 of the Act.

Section 28

As to s28 of the Act the evidence for the reputation of Searle’s marks is contained in the first Hendry declaration. It appears that the trade mark NITRADISC has been used in Australia since 1984 and sales and advertising figures for the years 1986-1994 show a substantial amount of the use of that mark in relation to transdermal patches, containing glyceryl trinitrate, or nitroglycerin, in the form of a disc for the treatment of angina pectoris. There is no evidence of any use of the mark in the form NITRODISC and for the purposes of s28 I will disregard that trade mark. The comparison therefore is between the words NITRADISC and NITROMIST bearing in mind the established reputation of the former. For the reasons already given above in relation to s33 I do not think that the words would be reasonably likely to cause deception or confusion among a substantial number of persons in terms of s28(a)

If I am wrong in that conclusion, there is no evidence of any blameworthy conduct on the part of Astra. Mr Williams submitted that it should not be necessary for an opponent in opposition proceedings to have to show such conduct on the part of an applicant.

The question of “blameworthy conduct” in opposition proceedings has been considered recently in Canon Kabushiki Kaisha v Robert James Brook and Rachel Brook trading as The Cannon Watch Company (1996) 36 IPR 88 per Tamberlin J. His Honour, after considering the judgments in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Limited (1990) 171 CLR 363, concluded that in his view the reasons for judgment delivered by members of the High Court left the matter open as to whether there was a need to find blameworthy conduct in opposition proceedings based on s28(a) as opposed to expungement proceedings. He went on to find that:

Notwithstanding the diverse opinions expressed by members of the High Court in New South Wales Dairy Corporation case, I consider that I should follow the views expressed by the Full Federal Court in that case, with the result that in the case presently before me the opponent to the application for registration is required to demonstrate “blameworthy conduct”.

The Full Federal Court in the New South Wales Dairy Corporation case , concluded that, as a matter of interpretation, s28(a) was qualified by s28(d) and that “blameworthy conduct” was one, but not the only, circumstance which could render a mark “not entitled to protection in a court of justice”. (see 86 ALR 549 per Gummow J), (24 FCR 370 per Lockhart, Pincus and Von Doussa JJ).

In the instant case, Canon has not established any “blameworthy” conduct or any other matter on the part of the respondents in relation to the present application, which would disentitle the mark to protection in the courts and as a result the challenge under this provision must fail....

In the present matter, the delegate of the Registrar, when considering the s28(a) ground, relied on what was described as the “fully settled” practice of the Registrar developed from the Murray Goulburn case and dismissed the opposition on this ground because in her view there was “no hint of blameworthy action”. See also Titan Manufacturing Company Pty Ltd v John Terence Coyne (1991) 22 IPR 613; Unidrive Pty Ltd v Dana Corporation (1995) 32 IPR 155. Cf Johnson & Johnson v Kalnin (1993) 26 IPR per Gummow J where the point was apparently not raised.

I therefore find that a case under s28 of the Act has not been made out

Conclusion

I have found that the opponent Searle has failed to make out a case under ss28 and 33 of the Act. The opposition is dismissed and I therefore direct, subject to the opponent’s right of appeal, that the trade mark is to be registered.

I award costs to the applicant.

Michael Homann

Hearing Officer
24 April 1997