Baxter International Inc v B Braun Melsungen AG

[1999] ATMO 90

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF
TRADE MARKS, WITH REASONS

Re:Opposition by BAXTER INTERNATIONAL INC to the registration of trade mark application number 713520 in the name of B BRAUN MELSUNGEN AG.

Background:
The Trade Marks Office has examined application 713520 and accepted it for registration.  The applicant is B Braun Melsungen Ag and that company filed the application on 23 July 1996.  At that date, this company, which I will refer to simply as “the applicant” from this point, asserted that it was the owner of the trade mark.

The mark in question is the words NUTRIPACK and the application is in class 5.  It was filed, and accepted for registration, in respect of:

Set containing infusion and intravenous solutions, infusion and transfer sets, medihooks, all the aforesaid goods for medicinal, medical and nutrition purposes being goods included in class 5.

Since the time of acceptance, the applicant has restricted the scope of its application to read:

Set containing infusion and intravenous solutions, infusion and transfer sets, medihooks, all the aforesaid goods for medicinal, medical and parenteral nutrition purposes being goods included in Class 5

This restriction was with the express intent of averting an opposition by a third party, Buttress BV, who had sought an extension of time to oppose.  In view of that amendment, Buttress BV did not file a notice of opposition.

However, BAXTER INTERNATIONAL INC ("the opponent") had already filed a notice of opposition by the time the application was amended.  Unlike Buttress BV, the opponent was not satisfied by the amendment.  Accordingly, the opposition continued, with the filing and service of evidence in support by the opponent.  At that point, the applicant requested that the opposition be heard. 

I conducted that hearing under delegation from the Registrar of Trade Marks.  Wayne Willis, a patent attorney of the attorney firm of F. B. Rice and Co, represented the applicant.  The opponent was represented by its patent attorney, James Maxwell, of the firm of Peter Maxwell and Associates, patent attorneys.

I turn briefly to the opponent's evidence in support. This consists of a declaration made by Jan Reed, the secretary of the opponent company.  Mr/Ms Reed declares that the opponent has an Australian subsidiary, the distributor of the opponent's goods under the trade mark NUTRINEAL.  The goods sold under the opponent's mark are amino acid-based peritoneal dialysis solutions.  These are used for dialysis of patients suffering from malnutrition complications while using other dialysis fluids.  The opponent has declared to sales of over $15,000 of such goods in 1995, the year prior to filing, and to sales of over $45,000 in the following year.  Pending approval under the relevant therapeutic goods legislation, sales are under a special scheme that allows the sale of unapproved drugs to critically ill patients. As a currently unapproved product, advertising is not necessary or appropriate. 

At the hearing, Mr Maxwell pursued a number of grounds, as follows.

Not capable of distinguishing
Mr Maxwell argued that the applicant's trade mark, NUTRIPACK, was devoid of inherent adaptation to distinguish.  In furthering this, he relied on argument that the mark was neither an invented word nor one without direct reference to the character of the goods.  However, those issues are matters of only historical interest now.  They are technical questions, of only general relevance to the fundamental question under the current legislation.  I must, under the current legislation, decide if the application is fit for registration in terms of being "capable of distinguishing".

My first port of call, as Mr Maxwell argued, is to look at the degree - if any - to which the trade mark is inherently adapted to the task of distinguishing one trader's goods from another's.  As Gibbs J said in the WHOPPER case, Burger-King v Registrar of Trade Marks, (1973) 128 CLR 417 at 425:

Inherent adaptability is something which depends on the nature of the mark itself - see Clark Equipment Co. v. Registrar of Trade Marks (1964) 111 CLR 511 - and therefore is not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise.

Mr Maxwell called into aid the relevant note appearing in s 41 of the current act.  This reads:

Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)       the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)       the time of production of goods or of the rendering of services.

He argued that, because one could immediately decipher the meaning of the word "nutripack", it fell into this category.  I do not accept this for one minute.  The very fact that the word must be deciphered suggests it is endowed with a degree of inherent adaptation.  In the present case, the word is not "apt to describe" the goods, as Mr Maxwell argued, even though, after analysis, it yields the meaning "a pack of nutrients" or "a pack that nourishes". 

Mr Maxwell noted that there is an earlier registration, number 491611, of some relevance.  The two trade marks covered by the registration are a series, as follows:

The trade marks are registered for vitamin preparations, food supplements, health foods and tonics.

The owner of that trade mark registration, Bullivant's Natural Health Products Pty Ltd, as a condition of registration, agreed to a limitation of the rights flowing from the registration.  This was done as a disclaimer, under s 32 of the 1955 act.  It reads as follows:

Registration of these trade marks shall give no right to the exclusive use of the words NATURE'S OWN and NUTRIPACK (NUTRIPAK) NUTRIENTS.

That was done under the regime that governed registration in what, at that time, was Part B of the old register.  I have no idea why this was done as regards the words NUTRIPACK and NUTRIPAK.  Since Mr Maxwell brought the terms of the registration to light only at the hearing, it would be unwise to delve too deeply into the reasons for the disclaimer without allowing the applicant some opportunity to have some input into the debate.  Suffice it to say that, for reasons that will follow, the disclaimer appears to me to have been unnecessary.  However, for the sake of completeness, I will consider Mr Maxwell's arguments.

Mr Maxwell used the terms of registration of these trade marks to argue that the word NUTRIPACK "has currency in ordinary usage".  However, this does not follow:  the fact that a word occurs as part of a trade mark does not necessarily show currency as a descriptive word at all.  It may well be that a word appears in a trade mark because it is a trade mark and is not part of the ordinary English language for those goods or services at all.  Mr Maxwell's case, as based on the prior registration, therefore hinges entirely on the existence of the disclaimer.  The imposition of this, in my view, was probably unjustified, for reasons that are the same as those that underpin my conclusions below.

Returning to the case under s 41 of the present legislation, Mr Maxwell noted the analysis of s 41 by Branson J. in Blount Inc v Registrar of Trade Marks 40 IPR 498 at 404-5. The judge addressed the question of "capable of distinguishing" in the following terms:

Subsections (3) – (6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s 41 (2). Subsection  (3) requires the registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the registrar to conclude:
(a)      that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b)      that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or
(c)      that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

The structure of s 41 of the Act dictates that if the registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41 (2) and (3).

Mr Maxwell noted that the present trade mark was accepted for registration without evidence of use, entirely on the basis of its inherent adaptation to distinguish.  Such were the marks placed in category (a) by Branson J.  Mr Maxwell initially argued that this was a category limited to marks that were invented or that held no direct reference to the relevant goods.  However, he accepted, at the hearing, that those were marks that met the old standard for Part A of the 1955 register under s 26(1), being "adapted to distinguish" even without evidence of use.  This was a standard that Branson J noted was "more demanding" than the current standard of "capable of distinguishing". 

Mr Maxwell submitted that that NUTRIPACK was a trade mark that, 'at the very best, possesses just the slightest spark of inherent adaptability to distinguish'.  It still, in his view, needed the support of a considerable amount of use to show it capable of distinguishing.  Since there was none, he argued that the application must be refused registration.

Mr Willis, for his part, conceded that the meaning of the trade mark was "not opaque".  However, he argued that it provides neither obvious nor tangible information about the goods, and that it has never been a requirement for registration, even under the older and more rigorous tests of s 24, that a trade mark be meaningless.

I agree with Mr Willis.  "Nutripack" is an odd-looking expression.  For all that it may yield up a meaning when analysed, it is not an ordinary part of the English language, nor is there much substance to the meaning as so extracted.  There is no evidence that the mark has been used by the applicant but I am satisfied that, if used as a trade mark, it is capable of distinguishing the applicant's infusion sets from those of others.  The extent to which the trade mark suffers from some extent of reduced inherent adaptation to distinguish is not such that it needs the support of evidence of use.

I therefore find that the opponent has not established a ground of opposition under s 41.

Conflicting prior registrations:
Here, the relevant provision is s 44(1), which reads, with appropriate notes added:

Identical etc. trade marks

44.(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: 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.

Note 2:  For similar goods see subsection 14(1): goods are similar to other goods if they are the same as the other goods; or if they are of the same description as that of the other goods.

Note 3:  For priority date see section 12.  (For present purposes, the applicant's priority date is not earlier than the priority date of the relevant registrations on which the opponent relied and to which I refer below.)

Mr Maxwell conceded that neither of the trade marks on which he relied as sources of a conflict under these provisions was substantially identical to the applicant's mark.  With reference to the alternative test, deceptive similarity, he relied on two trade marks:

• Registration 630399 - NUTRINEAL

The goods covered by this registration, in the name of the opponent, are "Amino acid-based peritoneal dialysis solutions; and all other goods included in this class".  Accordingly, there is a direct overlap of goods and the matter is to be determined by comparison of marks.

Mr Maxwell argued that when the competing marks were compared, they differed only in their suffixes, containing, overall, many similarities, particularly visual similarities.  He argued that, given the strong shared element NUTRI, emphasising the idea of nutrition, there was a sufficient similarity.  Consumers, he argued, would be caused to wonder if the goods in question came from the same source.

I do not accept this.  The element NUTRI, I agree, alludes to nutrition or nutrients.  However, the goods specified for this application are for the intravenous administration of chemicals designed to heal, medicate or sustain the body.  Against such a background, I do not believe that the word NUTRI is likely to be seen as an indication of a particular proprietor's goods.  Accordingly, the cases that Mr Maxwell relied on, which deal with marks that appeared, because of a shared particular, to be related, are not appropriate and I will not further discuss them.

I therefore agree with Mr Willis, who pointed to the decision re application by Visco Sport Ltd (1989) 14 IPR 22 (SORBOLITE and SORBOTHANE, for clothing including footwear). As the hearing officer there found, a prefix that was readily explained as having a descriptive burden will not necessarily be fatal to the registration of a later application sharing the same prefix. A similar conclusion applied to the trade marks RAINMASTER and RAIN KING, in relation to irrigation equipment. See Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited (1952) 86 CLR 536. In both instances, while there is a common initial element, the remaining elements are strong, memorable, and pull in different directions so that, as wholes, the two marks are readily distinguishable.

• Registration 491611 - NUTRIPACK

This matter can be disposed of by reference to the other leg of s 44(1).  In my view, the relevant goods are not "similar" at all.  They are neither the same nor of the same description.

Under the latter heading, Mr Maxwell relied on Beck, Koller and Co (England) Limited 's Application, PLIO trade mark, 64 RPC 76. The formulation of the issues in that case has been approved by the High Court in Southern Cross Refrigerating Co v Toowoomba FoundryPty Ltd (1954) 91 CLR 592. There, the High Court cited with approval what was said re an application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 at 372 and this in turn drew on the words of the decision of the Assistant- Comptroller in the Beck, Koller & Co case.

As Mr Maxwell noted, the things to be assessed are:

• the nature and characteristics of the goods,

• their origin and purpose

• whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses,

• whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and

• whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. 

Under these headings, Mr Maxwell argued that the relevant goods were aimed at the same consumers, sold side by side in relevant shops or outlets and aimed at the same class of customers.  However, I find Mr Maxwell's arguments unconvincing.  The goods for which registration is sought appear to be specialised intravenous supplements, sold as a ready-to-use kit for use in hospitals.  I have no reason to believe that such goods are made by or sold through the same outlets as vitamin preparations, food supplements health foods and tonics.  Nor, as specialist items, are they aimed at the same class of people.

Therefore, the opponent has failed to establish this ground of opposition with regard to either of the earlier registrations it relied on.

Conflict with the reputation of the opponent, such that the applicant's trade mark is deceptive and confusing.
Under this heading, Mr Maxwell argued that the opponent's trade mark, NUTRINEAL, had an established reputation at the time the opposed application was filed and that the strength of this reputation was such as to trigger s 60.  He also argued that s 43 was relevant and that it too was triggered.  However, my understanding is that s 43 should be applied only where the deceptive element is inherent in the mark itself.

I will, since Mr Maxwell did not press the s 43 aspect, deal with the alleged conflict under s 60.  This provides:

60. 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.

Note 1:For deceptively similar see section 10.

Note 2:For priority date see section 12.

I have already concluded that, on the prima facie case, the trade marks NUTRIPACK and NUTRINEAL are not deceptively similar.  There is nothing in the reputation of the opponent's mark, or in any aspect of the evidence, that would at all temper this finding.  I therefore do not accept that any deception or confusion can arise because of the reputation of the opponent's trade mark.

Accordingly, the opponent has not established this ground of opposition under either s 43 or s 60.

Conclusion
The opponent has not established any ground of opposition.  My decision, therefore, in terms of s 55, is that the trade mark should, in the absence of any appeal from this decision, be registered.  I award costs, in accord with the official scale, to the applicant.  If necessary, and on payment of a taxing fee, these costs will be taxed, allowed and certified by an officer of the Trade Marks Office.

T. Williams
Hearing Officer
31 August 1999