Aventis Pasteur Limited/Aventis Pasteur Limitee v Chiron SpA

[2001] ATMO 125

TRADE MARKS ACT 1995

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

Re:      Opposition by Aventis Pasteur Limited/Aventis Pasteur Limitee to registration of trade mark application 824971(5) - TRIACELLUVAX - filed in the name of Chiron S.p.A.

Background

Trade mark application number 824971 is an application to register the word triacelluvax in class 5 for Pharmaceuticals, vaccines, and adjuvants for use with vaccines. The application was filed on 24 February 2000 ("the relevant date") by Chiron S.p.A., an Italian corporation, of Siena Italy ("the applicant"). 824971 was duly examined and, on 26 October 2000, the Registrar advertised, in the Australian Official Journal of Trade Marks, that he accepted this trade mark for registration.

On 12 January 2001, in accordance with Part 5 of the Trade Marks Act 1995 ("the Act"), Aventis Pasteur Limited/Aventis Pasteur Limitee, a Canadian company, of Ontario Canada ("the opponent") filed opposition to the registration of 824971 and, in its notice of opposition, nominated all of the grounds of opposition provided in the Act, "having particular but not exclusive regard in each of the ... grounds to the opponent's ownership of, use of and reputation in certain trade marks".

The opponent served on the applicant, and filed with the Trade Marks Office, a statutory declaration by James David Ramsey, the Vice President Marketing and Sales of the opponent company. This constitutes the evidence in support of the opposition.

There is no evidence in answer from the applicant. The applicant, through its attorney, has advised the Trade Marks Office that it does not seek to rely upon evidence in answer in this matter. It further advised that it would not seek to be represented at any hearing of the matter.

Neither party has requested to be heard in this matter. Accordingly, the matter has come to me as a delegate of the Registrar of Trade Marks to decide on the material held on the file. The opponent has filed written submissions to support its case. The applicant, however, has made no representations.`

The Evidence

The evidence in support of the opposition is a statutory declaration by James David Ramsey, the Vice President Marketing and Sales of the opponent dated 10 April 2001. Mr Ramsey has held that position since 8 March 1989.

The opponent is the proprietor of Australian registration 725830 tripacel, filed 16 January 1997 and registered in respect of pharmaceutical preparations in class 5. Mr Ramsay states that tripacel has been used by the opponent in respect of a vaccine which is an injectable booster dose for children giving protection against diphtheria, tetanus, and pertussis.

Annual sales figures of tripacel provided by Mr Ramsay for 1999 and 2000 are considerable, being multi millions of dollars.

He also states that the total promotion expenditure in respect of the promotion of the opponent's mark in 1998 was hundreds of thousands of dollars. Examples of promotional material and packaging bearing the trade mark was annexed to the Ramsay declaration, including:

• physicians' booklets containing pharmacology and clinical trail date;

• surgery brochures for parents;

• childhood vaccination schedules;

• surgery notepads;

• wall posters for clinics and surgeries;

• stickers announcing Government funding for booster doses;

• packaging for both single vial and 5-vial packages;

• information insert for dosage packages; and

• advertisements in Modern Medicine magazine.

Submissions, Considerations and Findings

The opponent's written submissions were directed to section 60 of the Act. However, the evidence and submissions also raise the issue of section 44 of the Act. Given the broad grounds in the notice of opposition, I shall therefore also consider that section.

I will refer to the opponent's submissions in the course of my considerations below.

There being no evidence to support the other grounds of opposition, I dismiss them.

Section 44 - Substantial Identity or Deceptive Similarity

Section 44 reads:

Identical etc. trade marks

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

(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

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

(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:For deceptively similar see section 10.

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

Note 3:For priority date see section 12.

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

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

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

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

(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:For deceptively similar see section 10.

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

Note 3:For priority date see section 12.

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

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

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

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

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

Note:For limitations see section 6.

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

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

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

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

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

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

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

Note 2:For predecessor in title see section 6.

Note 3:For priority date see section 12.

The opponent's trade mark has a priority date which is earlier than the applied for trade mark.

The matters for determination are therefore:

(a)whether the applicant's mark is deceptively similar to the opponent's registered trade mark in that it so nearly resembles that mark that it is likely to deceive or cause confusion (Section 10); and

(b)whether the opponent's trade mark are registered in respect of similar goods.

I will address each of these in turn.

The opponent further submits that its registered trade mark tripacel and triacelluvax are deceptively similar. In its written submissions, the opponent erroneously refers to the applicant's mark as "TRICELLUVAX"; however, this does not materially affect the submissions. The opponent says that the applicant's mark is made up of three main parts: tri, cell and vax. Given the goods are vaccines, vax is purely descriptive, the distinctive parts of the mark are, it claims, the parts tri and cell. These elements can be compared with the opponent's mark, which is made up of the two elements tripa and cell.

The opponent submits that tricel and tripacel are substantially identical, and that the applicant has simply added some non-distinctive, generic matter to a base mark. The opponent says that given the opponent's reputation in the "base mark" tripacel, it is clear that deception and confusion result from any use of the applicant's mark.

The proper comparison for substantial identity is that described in Shell Company of Australia Ltd v ESSO Standard Oil (Australia) Ltd[1], where Windeyer J states:

[1] (1963) 109 CLR 407 at 414

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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

The competing marks both commence with the prefix tri- and both contain the element cel. However, tripacel has three syllables, while triacelluvax has five. The two marks are both visually and aurally quite different. I find that they are not substantially identical.

The tests for deceptive similarity lie in the words of Windeyer J in Shell Company of Australia Ltd v ESSO Standard Oil (Australia) Ltd, supra:

The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.  To quote Lord Radcliffe again (de Cordova v Vick Chemical Co (1951) 68 RPC 103; at 106; 1B IPR 496; at 499[2]):

[2] "de Cordova"

The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him…It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

And in Australian Woollen Mills Ltd v FS Walton & Co Ltd[3]; Dixon and McTiernan JJ said:

[3] (1937) 58 CLR 641 at 658 ("Australian Woollen Mills")

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.

Further, the commercial and other surrounding contexts of the comparison must be considered and rules of comparison of trade marks apply: Parker J (as he then was) in Re Application by the Pianotist Co Ltd[4], said:

[4] 1A IPR 379 at 380; (1906) 23 RPC 774 at 777 ("Pianotist")

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. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or, rather, you must refuse the registration in that case.

The application mark and the opponent’s mark ¾  triacelluvax and tripacel ¾  clearly have a good deal in common.  They both commence with the prefix  tri ,  and contain the word element cel.  However, triacelluvax is comprised of five syllables, and looks and sound quite different to the three-syllable word tripacel.   

As the opponent has pointed to in its submissions, the final syllable in triacelluvax is vax and in terms of pharmaceutical products this element can be considered to be a reference to vaccines. However, the application statement is not restricted to vaccines. It comprehends the wide claim of pharmaceuticals, and in application to that broad range, vax loses its descriptive function.

In terms of meaning, it seems to me that in the context of the nominated goods, both triacelluvax and tripacel are composed of elements that are relatively common to the trade. Tri [5] is a reference to three and in context of vaccines and the goods illustrated in the opponent’s evidence, could well refer the vaccines designed to prevent three diseases; acellular pertussis, diphtheria and tetanus. Likewise in terms of pharmaceuticals, cell or its phonetic equivalent cel has relevant meaning.

[5] The Macquarie Dictionary - 3rd Edition - The Macquarie Library Pty Ltd,  Sydney, 1998

On a comparison of the structure and meaning, I am not satisfied that triacelluvax and tripacel are sufficiently close to be deemed deceptively similar.  The similarities are on the whole limited to elements that I consider to be common to the trade.  The words, moreover, look and sound quite different. In accordance with the directives of the de Cordova, Australian Woollen Mills and Pianotist cases (cited above) it is, however, appropriate that I consider the question in the context of the relevant market.

In respect of these goods, the relevant market is most likely to be the chain between the manufacturer, the distributor(s), and entities such as: immunisation clinics, general practitioners, hospitals, local councils, community health services and pharmacies.

The opponent's evidence shows its mark used on a prescription vaccine for the inoculation of children. In the relevant market involving the opponent's goods, the "end users", being the infant recipients and their parents, are unlikely to be involved in the trade mark use of the goods.

There is no evidence of actual use of the applicant's mark. The goods specified in the application statement do include vaccines and adjuvants (substances added to a prescription to aid the operation of the main ingredient[6]), as well as the broader pharmaceuticals (items, especially medicine, sold at a pharmacy[7]). It seems likely that trade mark use of the applicant's mark would be in similar circumstances as for the opponent's mark.

[6] ibid

[7] ibid

A feature of the circumstances surrounding the relevant market is the likelihood that the products would be used by doctors, nurses and pharmacists, who are skilled professionals. There are many authorities to support the view that skilled professionals are most unlikely to refer to the relevant products in a way that would admit any reasonable probability of confusion. For example, Bayer Products Ltd's Application[8] was applied by Hearing Officer Williams in Aktibolaget Astra v. Schering Corporation[9], who said:

[8] (1947) 64 RPC 125 at 137

[9] 22 IPR 485 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."

The subject application, however, extends beyond vaccines to pharmaceutical products, many of which do not require a prescription. Such products will be displayed on pharmacy shelves for purchase by ordinary customers. However, such an ordinary customer today is likely to exercise some care in buying pharmaceutical products. And in the main the average educated customer is likely to be broadly aware of the conventions involved in the naming of pharmaceutical products. I do not think therefore that in this market there is a real likelihood that people will wonder or be left in doubt about whether the tripacel and triacelluvax products come from the same source.

Because of these circumstances, it seems to me that triacelluvax does not so nearly resemble tripacel that it likely to deceive or cause confusion. I find that triacelluvax is not deceptively similar to tripacel.

Although it is not necessary to decide whether or not the goods are similar, I find that pharmaceutical preparations are similar goods to Pharmaceuticals, vaccines, and adjuvants for use with vaccines.

I find that the opponent has not established this ground of opposition. I therefore dismiss this ground.

The Section 60 Ground

Section 60 of the Act provides:

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

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

Accordingly, to satisfy section 60, the opponent has the burden of establishing the following elements:

(a)       a pre-existing trade mark;

(b)substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

(c)the acquisition of a reputation in Australia by the pre-existing trade mark; and

(d)a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

I have already determined the issue of substantial identity and deceptive similarity under the section 44 ground. Having already found that the competing marks are neither substantially identical nor deceptively similar, it is not necessary to consider the other elements.

I find that the opponent has not established this ground of opposition. I therefore dismiss this ground.

Decision

The opponent has not established any of its grounds of opposition. I therefore direct that the applicant's trade mark be registered unless, within one month from the date of this decision, the Registrar is served with a copy of a notice of appeal.

Costs

I make no order as to costs.

Jock McDonagh
Hearing Officer

21 December 2001