Bayer AG v O'Hagan Medical Pty Ltd
[2015] ATMO 46
•5 June 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Bayer AG to registration of trade mark application 1561812 (5; 44) - cognate - filed in the name of O'Hagan Medical Pty Ltd.
| Delegate: | Heath Wilson |
| Representation: | Opponent: Lena Balakrishnan of Davies Collison Cave. Applicant: Stephen O’Hagan for the Applicant. |
| Decision: | 2015 ATMO 46 Opposition to registration of the trade mark under section 52 of the Trade Marks Act 1995 – ground pursued under section 44 – opposition not established. |
Background
On 13 June 2013, O’Hagan Medical Pty Ltd (‘the Applicant’) applied for the registration of a trade mark. The current details of that trade mark are detailed below:
Trade Mark No: 1561812
Trade Mark: cognate
(‘the Trade Mark’)
Specification: Class 5: Dietary nutritional supplements; Dietetic foods for use in clinical nutrition; Lactose (nutritional supplement); Maltodextrins (nutritional supplements); Medicated nutritional additives for animal foodstuffs; Medicated nutritional creams; Milk calcium concentrate (nutritional supplement); Milk powder for nutritional purposes for babies; Milk sugar (nutritional supplement); Mineral preparations for use as nutritional additives to foodstuffs for animals; Mineral preparations for use as nutritional additives to foodstuffs for humans; Nutritional additives to animal feed; Nutritional additives to fodder; Nutritional animal feed supplements; Nutritional feed supplements for animals; Nutritional meal replacement powders; Nutritional meal replacements; Nutritional media for bacteriology; Nutritional preparations for medical use; Nutritional products for medical use for intravenous infusion; Nutritional solutions for medical use for intravenous administration; Nutritional supplements; Nutritional supplements for animal feed; Nutritional supplements for animals; Nutritional supplements for medical use; Parenteral nutrition solutions for medical use
Class 44: Advisory services relating to nutrition; Consultancy relating to nutrition; Counselling relating to nutrition; Nutrition consultancy; Nutritional advisory services; Provision of information relating to nutrition
The Trade Mark was examined under the provisions of the Trade Marks Act 1995 (‘the Act’) and accepted for possible registration. The acceptance was advertised in the Australian Official Journal of Trade Marks on 7 November 2013.
On 6 February 2014 a notice of intention to oppose was filed by Bayer AG (‘the Opponent’) along with a statement of grounds and particulars setting out grounds of opposition under sections 42(b), 44, 60 and 62A of the Act. The evidence stages of the opposition commenced.
As evidence in support of the opposition the Opponent filed the declaration of Katherine Kemp (trade mark searcher at Davies Collison Cave) made 4 June 2014 with exhibits KK-1 to KK-9.
The Applicant filed, as evidence in answer, the declaration of Stephen O’Hagan made 12 August 2014 with exhibits SO-1 to SO-12. No evidence in reply was filed.
Both parties requested to be heard on the opposition. After being invited to do so, written submissions were provided by both the Opponent and the Applicant to be considered. The Opponent’s submissions made it clear that the sole ground of opposition to be pursued would be section 44 of the Act. I find, for completeness, that the remaining particularized grounds of opposition have been abandoned.
As a delegate of the Registrar of Trade Marks I heard the opposition matter in Canberra on 24 April 2015. Ms Lena Balakrishnan of Davies Collision Cave made oral submissions on the Opponent’s behalf via telephone. Mr O’Hagan appeared in person and made submissions on behalf of the Applicant.
Onus
The rights of the parties are to be determined as at the date of application[1] which is generally, but not always, the filing date.[2] The Opponent bears the onus of establishing a ground of opposition.[3] The standard of proof is the balance of probabilities.[4]
[1] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
[2] See sections 6, 12 and 72 of the Act.
[3] Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 at [32].
[4] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].
Reasons
Section 44 of the Act relevantly provides:
44Identical 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.
(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.
Section 14 of the Act provides:
14Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
(2)For the purposes of this Act, services are similar to other services:
(a)if they are the same as the other services; or
(b)if they are of the same description as that of the other services.
Section 10 of the Act provides:
10Definition of deceptively similar
For the purposes of this Act, 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.
For the purposes of the ground of opposition the Opponent relied on trade mark registration no. 516628 seen below:
Trade Mark: KOGENATE
Filing Date: 9 August 1989
Owner: Bayer AG
Specification of Goods:
Class 5: Pharmaceutical preparations and all other goods included in this class.
The Opponent’s trade mark above clearly has an earlier priority date to the Trade Mark. The first question[5] is whether the goods of the respective trade marks in class 5 are similar and whether the Applicant’s services in class 44 are closely related to the Opponent’s goods in class 5. In the course of that analysis, I will address a point of contention, namely the issue of notional use on goods and services in the respective specifications.
[5] See Registrar of Trade Marks v Woolworths [1999] FCA 1020 at [39].
The second question I must address is whether the trade marks are in fact substantially identical and/or deceptively similar to each other. The Applicant did not provide any evidence of prior use, honest concurrent use or other circumstances should the ground under s44 apply. Accordingly, if both of the above questions are answered in the affirmative, the ground of opposition under section 44 is established.
Notional Use
In the overall consideration of whether two trade marks are deceptively similar under section 44 neither trade mark under comparison need be in use. The wording of the section contemplates the conflicting trade mark registered (or seeking to be registered) in respect of its particular goods/services, not whether it has been used in relation to those goods or services. In other words, the consideration is a normal and fair use on all goods and services covered by the application. It has been said that the “question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.”[6]
[6] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; 45 IPR 411; [1999] FCA 1020 at [50].
In addition, Lord Parker stated in Re Pianotist Co Ltd’s Application[7]:
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 normal way as a trade mark for the goods of the respective owners of the marks. [Emphasis added]
[7] (1906) 23 RPC 777.
Further, Mason J in Berlei Hestia Industries Ltd v Bali Co Inc[8] observed:
…The question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion. [Emphasis added]
[8] (1973) 129 CLR 353 at 362; 1 ALR 443 at 450
The purpose of including the above commentary is to make the point clear. Mr O’Hagan made submissions regarding the actual use of the Opponent’s trade mark to date. However, the above precedent indicates that despite the Opponent only having used its trade mark in relation to a prescription only, intravenously administered product to prevent and treat bleeding (normally for patients with haemophilia A), that is not relevant to the consideration.
Similar Goods
At the outset I note that the Opponent’s trade mark registration claims “all other goods in this class”, being all the goods in class 5. The Applicant’s specification of goods includes specific items in class 5 and, from a notional use perspective, it follows that these goods must be similar. If it were necessary to analyse the respective specifications further, I would find that pharmaceutical preparations is such a broad expression there are inevitable similarities with the Applicant’s nutritional additives, supplements and preparations. Such a finding takes into account the guiding principles of the Assistant Comptroller in Re an Application by John Crowther & Sons (Milnsbridge) Ltd[9]:
`In the case of Jellinek's Application (1946) 1A IPR 393; 63 RPC 59, Romer J. classified these various factors under three heads, viz, the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself'
[9] (1948) 65 RPC 369 (at 372).
The goods in class 5 of the specifications are similar.
Closely Related Goods
The Opponent submits that the nutrition advisory services in class 44 and the Opponent’s specification in class 5 are closely related. The Opponent’s written submissions provide:
There is a clear overlap between pharmaceutical preparations and nutrition, with a number of pharmaceutical preparations being used to support nutrition.
It follows that any consultancy services relating to nutrition would by its very nature be closely related to pharmaceutical preparations…
In terms of goods and services that may be closely related, Lockhart J in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co[10] said:
It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programmes) on the other.
[10] [1983] FCA 145; (1983) 48 ALR 511 at 522
With reference to further guidance provided in the decision of Aussat Pty Ltd, Re[11], nutritional advice and consultancy are not performed directly by means of pharmaceutical preparations or other goods in class 5, the technical training of the persons producing the goods and those dispensing advice may be quite different, and the services are not ancillary to the goods. Nutritional advice does not usually involve the provision of pharmaceutical preparations. The goods and services may not come from the same source, nor would the goods cease to exist without the services (or vice versa).
[11] [1993] ATMO 55; 27 IPR 309.
While pharmaceutical preparations may include nutritional supplements it is a further step to find that services involving nutritional advice are closely related to pharmaceutical preparations. I am therefore not satisfied that pharmaceutical preparations and consultancy services for nutrition are closely related.
Substantially Identical
The comments of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[12] set out the relevant test for comparison:
[the trade marks] 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 dissimilarity that emerges from the comparison…
[12] (1961) 109 CLR 407 at 414-415.
On a side by side comparison, the visual, aural and conceptual differences between the trade marks ‘cognate’ and ‘KOGENATE’ are such that they are not substantially identical. The Opponent’s primary submissions argued that the trade marks were deceptively similar and that deception or confusion in the Australian marketplace would be the likely result. An analysis of that issue follows.
Deceptively Similar
In Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[13] the Court said:
[T]he marks ought not … 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 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.
[13] (1937) 58 CLR 641at 658
I firstly observe that there are both similarities and differences between the trade marks in this matter. It must be kept in mind, as was stated in the case of Clark v Sharp[14] that:
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.
[14] (1898) 15 RPC 141 at 146.
On a visual comparison, the trade marks have identical suffixes (‘-nate’) and similar prefixes (‘Cog-' and ‘Kog-‘). The importance of the prefix in the comparison was highlighted in the case of London Lubricants (1920) Ltd’s Appn[15] in the following way:
[T]he tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.
[15] (1925) 42 RPC 264 at 279.
Despite the above comments, variation in the initial letter in the words is in this case not necessarily determinative as that initial sound, whether ‘C’ or ‘K’, would be identical. However, London Lubricants mentions the first syllable being the most important for comparison. If that is so, there is a further difference in that the likely pronounciation of the letter ‘G’ in the trade marks is different.
Furthermore, the extra syllable occurring in the middle of the Opponent’s trade mark is likely to be noticeable in an aural sense although perhaps not visually.
In addition to the above, the word ‘Cognate’ has a particular meaning whereas ‘Kogenate’ does not. A definition of the word ‘cognate’ as provided by the Macquarie Dictionary is:[16]
[16] Macquarie Dictionary Online © Macmillan Publishers Group Australia 2014.
cognate
/ˈkɒgneɪt/ (say 'kognayt)
adjective 1. related by birth; of the same parentage, descent, etc.
2. related in origin: cognate languages; cognate words.
3. allied in nature or quality.
–noun 4. a person or thing cognate with another.
Conversely, the Opponent’s trade mark ‘Kogenate’ is an invented word. In terms of pronunciation, the definition above indicates that the Trade Mark is pronounced with a hard ‘G’ (as in ‘gun’). The same cannot be said of the Opponent’s trade mark which is more likely pronounced with a soft ‘G’ (as in ‘giraffe’). This is a further point of differentiation but again, not a determinative one by itself, as it is important to allow for differences in pronounciation in the consideration of deceptively similar trade marks. In that regard, said in Luxmoore LJ in Rysta Ltd’s Application[17]:
The answer to the question whether the sound of one word resembles too nearly the sound of another so as bring the former within the limits of s 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.
[17] (1943) 60 RPC 87 (at 108-109).
There is no doubt that the aural similarity of trade marks may be a deciding factor in the comparison. In recent years (for example) the Federal Court in Solahart Industries Pty Ltd v Solar Shop Pty Ltd[18] found ‘SOLAHART’ and ‘SOLARHUT’ to be deceptively similar in relation to an infringement action. In Vivo International Corporation Pty Ltd v Tivo Inc[19] the Full Federal Court unanimously found ‘TIVO’ and ‘VIVO’ to be deceptively similar. That said, I do not believe that the current matter is on all fours with the above cases. The initial letter is different here but most importantly in TIVO the remainder of the trade mark was visually and aurally identical. The same cannot be said here. Likewise, the pronunciation of SOLAHART and SOLARHUT is similar in a way that the pronunciation of COGNATE and KOGENATE is not. I must observe the two trade marks in their entirety and doing so reveals differences in overall impression.
[18] [2011] FCA 700; (2011) 92 IPR 165.
[19] [2012] FCAFC 159; (2012) 99 IPR 1.(‘TIVO’)
For completeness, I am also of the view that the current matter may be distinguished from other decisions of the office. Examples include Glaxo Wellcome (Aust) Ltd v Bukwang Pharm Co Ltd[20] (where ‘REBOVIR’ and ‘REVOVIR were’ found to be deceptively similar to ‘RETROVIR’ in relation to pharmaceutical preparations), Intervet International BV v Randlab Australia Pty Ltd[21] (‘REGUMATE’ and ‘REG-U-LATE’ determined as deceptively similar trade marks in relation to veterinary preparations) and more recently, Takeda GmbH v Actegy Limited[22] where I found REVITIVE and REVESTIVE to be deceptively similar in relation to pharmaceutical preparations. Again, those decisions take into account particular similarities and circumstances that are not present here.
[20] [2008] ATMO 12; [2008] AIPC 92-282.
[21] (2010) 88 IPR 391.
[22] [2014] ATMO 38.
Turning to the nature of the goods, pharmaceutical preparations is a broad specification which encompasses prescription and non-prescription medication. Having noted that some of the goods may be purchased in a hurried fashion, nutritional supplements (especially those intended for babies, for example) would attract a level of scrutiny such that the particular visual, aural and conceptual differences in the current matter are likely to be noted by the average consumer.
A consideration of deceptive similarity is not concerned with the mere possibility of deception or confusion between trade marks but a real, tangible danger of it occurring.[23] I have considered the different initial letters (‘K’ and ‘C’), the difference in syllables and sound in the middle of the words, and the fact that one word is invented and the other is a recognizable English word. None of these factors would be determinative by themselves; however taken together they generate an overall visual, aural and conceptual impression of difference.
[23] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (at 594-595).
Despite the fact that the trade marks contain some similarities, I find that there does not exist a real, tangible danger of deception or confusion between the two. I find that a notional use of the Trade Mark in relation to the goods in class 5 would be unlikely to result in deception or confusion. The trade marks are not deceptively similar.
The ground of opposition under section 44 has not been established.
Decision
Section 55 of the Act provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)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.
Note:For limitations see section 6.
The Opponent has not established a ground of opposition under the Act. Accordingly, unless the Registrar is notified of an appeal and assuming the registration fee has been paid, I direct that trade mark application no. 1561812 proceed to registration.
Costs
A ground of opposition under the Act has not been established. As costs follow the event, I award costs against the Opponent in accordance with the amounts allowed under Schedule 8 of the Trade Marks Regulations 1995.
Heath Wilson
Hearings Officer
Trade Marks Hearings & Opposition
5 June 2015
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