Aventis Pharma SA v Alphapharm Pty Ltd

[2005] ATMO 15

TRADE MARKS ACT 1995

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

Re:Opposition by Aventis Pharma SA to registration of trade mark application 935861(5) - ROXIMYCIN - filed in the name of Alphapharm Pty Ltd.

Delegate:	Terry Williams
Representation:	Opponent: Robert Kelson of Callinan Lawrie, patent attorneys Applicant: FB Rice: Written submissions by Joanne Martin
Decision:	S 52 opposition: Ss 41 and 42 not established - s 43: derivation of Roximycin from Roxithromycin requires appropriate condition of registration - Registration to proceed on that condition

Background

1. Trade mark application 935861 has been filed by Alphapharm Pty Ltd.  The Trade Marks Office has examined the application and advertised it for possible registration.  The trade mark is the word ROXIMYCIN, sought to be registered for “Pharmaceutical and medicinal preparations containing antibiotics”.

2. Such registration is now opposed, as provided for in Part 5 of the Trade Marks Act 1995, by Aventis Pharma SA (Aventis).  Both Aventis and the applicant have filed and served evidence to support their positions and in due course the matter was set down for me to hear and decide under delegation from the Registrar of Trade Marks.

3. At the hearing Aventis was represented by Robert Kelson of Callinan Lawrie, Patent Attorneys.  The applicant did not appear.  It has made written submissions to which I will refer as necessary.

   Grounds of opposition

4. Aventis pressed only three of the grounds nominated in its notice of opposition.  The genesis of all three grounds, however, is that trade mark ROXIMYCIN is claimed to be too close to the recognised international non-proprietary name (INN) ROXITHROMYCIN.  ROXITHROMYCIN is an antibiotic, prescribed in high volumes and therefore of particular economic importance.  As Mr Kelson noted, ROXITHROMYCIN is a potent drug, to be used with due caution.

5. Aventis asserts that ROXIMYCIN falls foul of sections 41, 42 and 43 of the Trade Marks Act 1995. It is said to be, firstly, not capable of distinguishing the applicant’s goods from the comparable ROXITHROMYCIN products of other traders. Consistently, it is said that the trade mark has a connotation such that, if used on goods other than ROXITHROMYCIN, it would deceive or cause confusion for the purposes of s 43, and contravene the misleading or deceptive conduct provision of s 52 of the Trade Practices Act 1974, thereby establishing a ground of opposition under s 42 under the Trade Marks Act.

6. Essentially, the heart of the applicant’s written submission is that the only relevant issue is the substantial identity or otherwise of ROXIMYCIN and ROXITHROMYCIN. 

7. At the hearing, Mr Kelson noted the relevant provisions of the Trade Marks Manual of Practice and Procedure.  Paragraph 4.3 of part 29 of the Manual (August 2004 version) sets out the history of the matter and sets out current examination practice.  Firstly:

   In the 1950s, the World Health Organisation (WHO) began a program for identifying each pharmaceutical substance by a unique, universally available generic or non-proprietary name. (…)

   WHO advises member states of names proposed and later of recommended International Non-Proprietary Names (INN).  Notification is accompanied by a request that the name should be recognised as the non-proprietary name for the particular substance and that member states take all steps necessary to prevent acquisition of proprietary rights in the name, including prohibiting registration of the name as a trade mark.

   Ground of opposition under Section 41

8. Mr Kelson went on to note that the Manual states, emphasis added:

   Grounds for rejection under Sections 41 and 43 exist if a trade mark to be used in relation to pharmaceutical substances or closely related goods and services, is the same as or confusingly similar to, a notified INN or generic drug name.

9. Mr Kelson noted the words “confusingly similar” used above.  Those words are not defined in the Act.  He argued they would be such as to cover situations where the trade mark sought to be registered was “deceptively similar”[1] to an INN. 

   [1] Deceptive similarity, of course, is defined by s 10: “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.”

10. I am not sure that this concept is a proper part of the correct approach to s 41. The classic test for s 41 purposes is well known and was conveniently abstracted in the Full Federal Court decision of Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks[2].  As so abstracted it reads (with my emphasis added, and omitting citation details):

    Kitto J, in Clark Equipment, referred to the way in which the question was approached by Lord Waddington in Registrar of Trade Marks v W & G du Cros Ltd when he said:

    The applicant’s chance of success in this respect [ie in distinguishing his goods by means of the mark, apart from the effects of registration] must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods.

    In FH Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd, Kitto J again referred to the general principle:

    … that the question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their goods.

    [2] [2002] FCAFC 273, 56 IPR 30

11. I note that, in the later re-statement, Kitto J felt no need to refer to marks “nearly resembling”.  I therefore think that it puts too much stress on the words “some mark nearly resembling it” to say that this necessarily includes all cases of deceptive similarity.  Deceptive similarity covers a range of differences, from substantial identity, through trivial alterations, to those that merely cause confusion.  The case law suggests that trivial alterations of common words are not enough to create marks that are capable of distinguishing, but only to the extent that the “trivial” alterations are such that, on the balance of probabilities, they might equally be made by other traders acting without improper motives.

12. As to the triviality of the differences, Mr Kelson made submissions about the extent of the resemblance of ROXITHROMYCIN and ROXIMYCIN. I will come to the detail of these in due course, under the heading of s 43.

13. Mr Kelson at first instance submitted that the s 41 ground of opposition was established because the two words were substantially identical. I cannot agree with this at all.

14. Mr Kelson identified the relevant principle as follows, from Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 47 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 importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

15. However, he went on to argue that case law on invented words under the (now repealed) Trade Marks Act 1955 has relevance to this.  To quote from his submissions:

    The word ROXIMYCIN in the Trade Mark is a mere variation of the INN achieved by the elision of the letters THRO from the middle of the word ROXITHROMYCIN. It has the same prefix and suffix.  See Schweppes Ltd v E. Rowlands Prop Ltd - High Court of Australia (1913) 16 CLR 162, where the word SARILLA was found to be a mere colourful variation of the word SARSAPARILLA, and where Griffith CJ held that "a mere colourable omission has the same effect as a mere colourless addition. In my judgement, a word which at once conveys to the eye and ear the same idea as a known word is not an invented word".

    In the present case, we submit that the mere elision of the middle syllable “THRO” in the Trade Mark is a mere colourable omission, which is not sufficient to suppress the total impression of resemblance that emerges from the comparison of the Trade Mark with the INN.

16. While this is an interesting argument, I think I would be doing the application of precedent on substantial identity a considerable violence if I were to agree that the obvious visual differences between ROXITHROMYCIN and ROXIMYCIN could do anything but rule out substantial identity.

17. Mr Kelson went on to note Glaxo Group Ltd v Pathstream Ltd, 9 IPR 95, as did the applicant’s written submissions. In that case the Hearing Officer referred to the Registrar's obligations in respect of the WHO agreement. I quote from Mr Kelson’s written submissions, with bolding present in the original and with my own underlining added:

    In that case, the Hearing Officer had to compare the trade mark SALBUTAREMED to the INN SALBUTAMOL and found that in that particular instance "SALBUTAREMED could be sufficiently distinguished from SALBUTAMOL both visually and phonetically, so as to discharge any obligations the Registrar has in respect of the WHO agreement".  These last words are an explicit reference to the Registrar's obligations in respect of the WHO agreement.  The Hearing Officer further referred to the WHO's recommendation that it is desirable that trade marks close to INNs be refused, not just trade marks identical to INNs.  Although the Hearing Officer acknowledged that the Australian Trade Marks Office's past practice has so far mostly been to take objection when there is a complete identity, the Hearing Officer did not rule out the possibility that objection could be taken when there is a "close similarity" between an INN and a trade mark.  Reference was made to a particular instance that came to an examiner 's attention in the past and where the trade mark MEPRAMIDE was refused because it was considered deceptively similar to the INN MEPRAMIDIL.

18. The applicant’s submissions suggest that the WHO agreement is “irrelevant”.  I do not agree with this and I think that, within the legislative framework, practice can always be informed by the context of the provision, though clearly there is no “obligation”.  As to the remaining issues, what the hearing officer actually said was, with my own underlining added:

    Certainly, my own knowledge of past and present practice of the Australian Trade Mark Office in respect of this type of mark is that objection is only taken when there is complete identity between the proposed mark and an INN, or where the difference is very slight, for example, only one or two letters changed, leaving the word visually and phonetically almost indistinguishable from the INN. The only instance of which I am aware where this sort of similarity gave rise to an objection to registration of a proposed trade mark involved the INN “mepramidil” and an application to register MEPRAMIDE. Objection was taken in terms of ss 24(1)(d) and 28(a) of the Trade Marks Act 1955: if applied to goods consisting of mepramidil, the proposed mark could not serve to distinguish them from similar goods identified with the INN, and if applied to goods which did not consist of mepramidil, the proposed mark would be deceptive.  The application lapsed in the face of this objection.

    However, where there is no such close similarity between INNs and proposed marks, no such objection applies, although the inclusion of an INN stem[3] within an otherwise registrable mark will probably require some restriction of the goods claimed in the application..."Azochlormid" Trade Mark [1974] RPC 655.

    [3] A stem word is a word element that, in the proper context, indicates the pharmacological classification of a drug.  Familiar example would be the suffix –mycin, indicative of a Streptomyces strain of antibiotic, and the element barb, indicative of barbiturates

19. The decision quoted by Mr Kelson thus shows that the deciding officer gave the MEPRAMIDE example as the “only” instance within her knowledge.  The deciding officer at that time was Susan Farquhar, whose experience in these matters is something that I respectfully acknowledge.  If an officer such as Ms Farquhar was familiar with only a single example, the practice was likely to have been very rare.  Moreover, the MEPRAMIDE application lapsed in the face of an examiner’s objection - it was not, as Mr Kelson suggested, “refused”.  The 1955 legislation was, quite notoriously, applied with attention to the fact that the onus was on the applicant to establish that a ground of objection did not apply.  Therefore I think that the existence of a single example of an examiner’s objection of this sort is neither surprising nor convincing.

20. Be those matters of history as they may, I will accept the formulations of “close similarity”, as defined and used by Ms Farquhar in Glaxo, or “confusingly similar” as used in the Manual, are reasonable reformulations of the issue under s 41.

21. Mr Kelson’s arguments about the alleged deceptive similarity of ROXITHROMYCIN and ROXIMYCIN, on the other hand, are, as I have said, not necessarily a proper part of the application of s 41. In terms of Kenman, supra, there is no evidence that anyone but the applicant has been minded to use ROXIMYCIN as an indication of its goods. There is no particular need for others to completely remove the “thro” syllable of ROXITHROMYCIN. While doing so is not a particularly inventive step, the determination of an invented word is something that passed into history with the advent of the current legislation. It is simply not an indication of the s 41 threshold. There is no reason to suppose that the available set of variations of this magnitude is particularly limited. In any case, in Kenman, supra, French J said, at [50], with my italics added for emphasis

    The shape of the millennium bug involves a symmetrical disposition of projections (legs) and recesses (eyes).  Theoretically it may be the case that the number of possible symmetrical arrangements of projections and recesses is not infinite. Assuming that to be so, it is speculative, absent evidence, to draw conclusions about that number and whether the particular arrangement has any significant impact upon the access of other traders to the use of insect like shapes as trade marks.

22. In total, the extent of the differences between ROXITHROMYCIN and ROXIMYCIN, about which I will set out Mr Kelson’s arguments in relation to s 43 (below), is significant. Whatever might be said of deceptive similarity, this is not a case where the trade mark and the INN term are either examples of “close similarity”, as defined and used by Ms Farquhar in Glaxo, supra, or “confusingly similar” as set out in the Manual.

23. Accordingly, the ground under s 41 is not established.

    Ground of opposition under Section 43

24. This provision is, as Mr Kelson noted at the hearing, the other side of the s 41 argument. It reads as follows:

    An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

25. Section 43 specifies that the trade mark must either have a connotation or contain a sign that itself has a connotation. ROXITHROMYCIN obviously has a connotation. However, I do not think that s 43 can be triggered unless I am satisfied that ROXIMYCIN, the subject mark, also has a connotation, and it could have one only if this is engendered by the extent of its resemblance to ROXITHROMYCIN.

26. Mr Kelson has formulated the points of similarity between ROXITHROMYCIN and ROXIMYCIN as follows:

    ·     The INN consists of the word Roxithromycin.  The prefix “ROXI” is a fancy prefix, which is not common in the pharmaceutical industry[4].  In particular, the prefix ROXI is neither a recognised INN nor a recognised stem.  The prefix ROXI is also phonetically very strong and is likely to make a lasting impression on people’s minds.

    ·     The suffix “MYCIN” is a recognised stem for "antibiotics produced by Steptomyces strains"[5].

    ·     Finally, the middle syllable “THRO” is not a strong syllable.  When spoken, it is likely to be slurred and not heard by the ear.  When looked at, it is likely to be overseen by the eye, which is likely to focus on the strong first syllables “ROXI” and on the recognised stem “MYCIN"[6].  

    ·     The trade mark, on the other hand, reproduces both the strong prefix “ROXI” and the recognised stem “MYCIN”.  For the above reasons, we submit that the mere omission of the middle syllable “THRO” is not significant and is unlikely to suppress the total impression of resemblance with the INN.

    ·     If the word ROXITHROMYCIN were registered as a trade mark, we submit that the word ROXIMYCIN would be one so nearly resembling it as to be likely to deceive. Furthermore, use of the word ROXIMYCIN would be an infringement of that trade mark.

    ·     We reiterate that a total impression of resemblance emerges from the comparison between the Trade Mark and the INN, which is likely to lead the ordinary observer to identify the word in the Trade Mark as it stood before its alteration, ie as in the INN.

    [4] The evidence in support, exhibit JSH-5(2)

    [5]Exhibit JSH-5(1) in the evidence in support, and also the appendix to part 29 of the Manual

    [6] Mr Kelson put it at the hearing that this was a case of the ends overshadowing the middle

27. I do not agree that the assertions about the alleged insignificance of the middle syllable of ROXITHROMYCIN, “thro”, are correct.  While I do not dispute that the derivation of ROXIMYCIN from ROXITHROMYCIN is obvious, that is the end of the matter.  Indeed, such obvious derivations are features of the trade marks for pharmaceuticals that the applicant’s evidence in answer shows to be both registered and used.  Mr Kelson was dismissive of this and I agree that there is no one example in the evidence that is directly comparable to the merits and elements here present.  The applicant’s evidence suggests no more than that this trade mark is not at all out of step with the patterns of usage and derivation in the trade.  Even so, the fact that in the present case the applicant has been able to thereby form an apparently desirable trade mark leaves the word ROXIMYCIN, as a consequence of its obvious derivation, with a connotation that the goods are, or are probably, ROXITHROMYCIN.  

28. As to any possible further restriction of the use of the mark, it might be said that this would be redundant. There is, after all, no evidence that the actual proposed use of the trade mark for antibiotics would be misleading or deceptive in the hands of the applicant since the use and dispensing of antibiotics is tightly regulated. Significantly, however, the applicant’s evidence does not go to its own intentions or motivations but consists of a simple declaration from its patent attorney, dealing only with trade marks used and registered by others. When s 43 is invoked in the opposition context and supported by cogent evidence, I think that I am entitled to deal fully with that issue in a way that might not always be appropriate in the examination forum, which is an ex parte situation.

29. At the hearing, Mr Kelson also noted paragraph 4.3.3 of part 29 of the Manual, which arguably suggests that the goods of the subject application could have been further restricted to more fully accord with the INN stem “mycin”.  However, in view of my finding about the connotation of the trade mark ROXIMYCIN, it will not be necessary to deal with that point.

30. It would clearly be confusing if the applicant were to use the trade mark on goods containing other sorts of antibiotics.  The evidence supports a finding that this ground of opposition has been established to the extent necessary to authorise a condition of registration suitably restricting the use of the trade mark.

    Ground of opposition under Section 42

1. Restriction as above would remove any reasonable apprehension that the use of the trade mark by the applicant would, as opposed to could[7], be either misleading or deceptive. 

   [7] I note here the distinction drawn by Madgwick J in Advantage Rent-A-Car Inc v Advantage Car Rental (2001) 52 IPR 24; (2001) AIPC 91-724; [2001] FCA 683.

   Conclusion

2. On the evidence open to me in the opposition forum, the s 43 ground has been established, albeit to a limited degree. This makes it appropriate to register the application subject to the following condition:

   It is a condition of registration that the trade mark will be used only on goods of which the antibiotic component is ROXITHROMYCIN.

3. I will so endorse the application and it may then proceed to registration after 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 decided or discontinued. 

4. Since both sides have enjoyed a measure of success I make no award of costs.

   Hearing Officer
   31 March 2005