Aventis Pharma S.A. v Mundipharma AG

[2010] ATMO 83

TRADE MARKS ACT 1995

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

Re:Opposition by AVENTIS PHARMA S.A. to registration of trade mark application 1243088(5) - RELTEC - filed in the name of MUNDIPHARMA AG.

Delegate:	Bianca Irgang
Representation:	Opponent: Rebekah Gay of Shelston IP Applicant: Did not attend the hearing
Decision:	2010 ATMO 83 Section 52 opposition: section 44 pressed – s 44 ground of opposition not established since trade marks are not substantially identical or deceptively similar – evidence insufficient to establish any other grounds of opposition - Costs awarded against the opponent.

Background

1. Mundipharma AG (‘the applicant’), filed application number 1243088 on 28 May 2008 in class 5 of the International Classification of Goods and Services (‘Nice’ classification). Details of the application are set out below.

   Trade mark:  RELTEC

   Trade mark application:        1243088

   Filing Date:  28 May 2008

   Specification:  Class 5: Pharmaceutical preparations for human use, in particular analgesics

2. The said application was accepted for possible registration and the official notice of acceptance was published in the Official Journal dated 8 January 2009. Subsequently Aventis Pharma S.A. (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 27 February 2009. Thereafter the opponent served and filed evidence in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the matter in Sydney as a delegate of the Registrar of Trade Marks on 11 May 2010. The opponent was represented by Rebekah Gay of Shelston IP. The applicant did not attend the hearing or provide written submissions.

   Grounds of Opposition

4. The Notice nominated most of the grounds of opposition available under the Act.  The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His Honour’s findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599; (2006) AIPC 92-146

   [2] [2009] FCA 891, (2009) AIPC 92-355; (2009) 82 IPR 13, para 22-27

5. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on section 44 of the Act. However, the opponent has not provided any evidence specific to prosecuting the grounds under the remaining grounds of opposition. Without more information than the opponent has provided in its evidence these grounds cannot be established. 

   Evidence

6. The evidence of the parties consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Rebekah Frances Gay	Partner of Shelston IP Lawyers	26 November 2009	RFG-1

Opponent’s Evidence

1. The statutory declaration made by Ms Rebekah Frances Gay outlines that the opponent is the owner of trade mark registration no. 614610. The details of the opponent’s trade mark registration are as follows:

Trade mark:  RILUTEK

Trade mark registration:      614610

Owner:  Aventis Pharma S.A.

Filing Date:  25 October 1993

Convention Details:              28 April 1993 FRANCE

Specification:  Class 5: Pharmaceutical products

Discussion

Section 44 - Identical etc. trade marks:

1. Section 44 of the Act relevantly provides:

   44Identical etc. trade marks

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

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

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

   (ii)…; and

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

2. To establish its opposition in terms of section 44 of the Act the opponent must show all of the following:

   Ø  There exists a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

   Ø  the trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

   Ø  the priority date(s) of the other person’s trade mark(s) is (are) the earlier than the applicant’s mark.

3. The opponent is the owner of trade mark registration no. 614610 RILUTEK which has an earlier priority date to that of the applicant’s trade mark. The opponent’s trade mark also covers the same goods as the applicant’s goods in class 5. The key issue for me now to decide is whether RELTEC is either substantially identical with or deceptively similar to the opponent’s RILUTEK trade mark.

4. It is obvious that RELTEC is not substantially identical with the opponent’s trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[3]. While both trade marks are a ‘coined’ word and do have the letter ‘R’ as the first letter, the applicant’s trade mark consists of six letters and the opponent’s trade mark consists of seven letters. The spelling of each of the words is also different. These differences between the trade marks are sufficient to distinguish them from each other.

   [3] (1963) 109 CLR 407 at 414

5. On the other hand, deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have recalling the opponent’s mark with the impression which they would get from the opposed trade mark.[4] The probability of deception must be finite and non-trivial.[5]

   [4] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, per Windeyer J at 415

   [5] Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411, per French J at [43]

6. In comparing the respective trade marks it becomes apparent that the term RELTEC shares some phonetic similarities with the opponent’s trade mark RILUTEK. Visually, both terms begin with the same letter and end with the phonetically similar three-letter suffix ‘-TEK/TEC’. Ms Gay, the representative for the opponent, has also argued that the first syllable of the RILUTEK trade mark may be pronounced as “RILL” or “RILE” and that the first syllable of the opposed trade mark may be pronounced as “RELL” or “REAL” and that the pronunciation of the respective first syllables bear a strong similarity to each other.

7. Ms Gay submitted that the applicant’s trade mark and the opponent’s trade mark are both invented words and that legal authorities demonstrate the need for caution and reluctance with regard to the making of presumptions about the way in which an invented work is most likely to be pronounced[6]. Ms Gay argued that a comparison of such trade marks should take into account all reasonable pronunciations.

   [6] Johnson & Johnson v Boehringer Ingelheim KG (1995) 30 IPR 563; Retec Ltd s Application (1988) 12 IPR 413; Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 28 IPR 193

8. I note that the applicant’s trade mark consists of two syllables and that the opponent’s trade mark comprises three syllables. Ms Gay submitted that the extra or middle
   

   [7] Glaxo Wellcome Australia Ltd v Bukwang Pharm Co, Ltd [2008] ATMO 12

   “U” syllable in the opponent’s trade mark is not likely to be pronounced as clearly as the more dominant first and last syllables of the term. She suggested that the “U” in the opponent’s trade mark would be unlikely to be pronounced as a separate and distinct syllable and was likely to be slurred into the first syllable[7]. In Ms Gay’s opinion, all of these factors meant that the two trade marks were to be considered deceptively similar to each other. However, I am not satisfied the opposed trade mark RELTEC is deceptively similar to the opponent’s trade mark RILUTEK, particularly when the trade marks are considered, as they must be, as wholes.

9. The single letter spelling difference between the ‘coined’ terms is significant and even though both marks may begin with a potentially similar sound and end with a phonetically equivalent suffix, the marks are likely to be pronounced a number of different ways by the general monolingual Australian consumer. Also, the respective trade marks are being applied to pharmaceutical products and it is also more likely that a consumer would pay careful attention when purchasing medication. Taking that factor together with the additional syllable in the opponent’s trade mark I am satisfied that the trade marks are not deceptively similar.  

10. In view of my finding that the opposed trade mark is not deceptively similar to the opponent’s RILUTEK trade mark the opponent has not established its opposition ground based on section 44 of the Act.

    Decision

11. Section 55 of the Act provides:

    Decision
    Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    to refuse to register the trade mark; or

    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.

12. The opponent has not established any of its grounds of opposition.  The trade mark application may therefore proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been discontinued or in the event of a decision from the Court, that the application be subject to that order. 

    Costs

13. As there is nothing before me suggesting that costs should not follow the general rule, I award costs against the opponent in accord with Schedule 8 of the Trade Mark Regulations 1995.

    Bianca Irgang
    Hearing Officer
    Trade Marks Hearings
    31 August 2010