Biofarma v Paratek Pharmaceuticals Inc

[2018] ATMO 51

TRADE MARKS ACT 1995

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

Re:Opposition by Biofarma to extension of protection to Australia of trade mark application 1747501 (international registration 1283825) in class 5 - NUALTO - filed in the name of Paratek Pharmaceuticals, Inc.

Delegate:	Nicole Worth
Representation:	Opponent: written submissions prepared by Georgina Hey of Norton Rose Fulbright law firm. Holder: written submissions prepared by Jenny Mackie of Pizzeys Patent and Trade Mark Attorneys.
Decision:	2018 ATMO 51 Trade Marks Act 1995 (Cth) – Regulation 17A.34 – opposition to extension of protection to Australia - grounds of opposition under ss 44 and 62A – trade marks deceptively similar – ground under s 44 established – extension of protection refused.

Background

1. This decision is pursuant to an opposition by Biofarma (‘the Opponent’) to the extension of protection to Australia of the trade mark detailed below, filed in the name of Paratek Pharmaceuticals, Inc. (‘the Holder’).

Application No.

1747501

International Registration No.

1283825

Filing date

15 December 2015

Convention Priority date

16 June 2015

Goods

Class 5: Pharmaceutical preparations, namely, antibiotics[1]

Trade mark

NUALTO

(‘the Trade Mark’)

[1] The goods were amended on 24 January 2018. Prior to that date the goods specified were ‘pharmaceutical preparations’.

1. After the application was filed it was examined in due course and accepted for possible extension of protection. Its acceptance was advertised in the Australian Official Journal of Trade Marks on 18 February 2016.

2. On 15 April 2016 the Opponent filed a Notice of Intention to Oppose the application, and on 12 May 2016 it filed a Statement of Grounds and Particulars, particularising grounds of opposition under ss 44 and 62A of the Trade Marks Act 1995 (‘the Act’).

3. The parties filed evidence in due course, discussed further below. Both parties were informed of their right to be heard, and although neither elected to avail themselves of this option both parties did file written submissions for the Registrar’s consideration. Now in order that the matter may be decided, it has been allocated to me, one of the Registrar’s delegates, for a decision based on the written record comprising the documents already mentioned and discussed in more detail below.

Evidence

1. The evidence in this matter comprises declarations by the following persons:

Evidence in support

·     Georgina Stacy Hey, lawyer of Norton Rose Fulbright Australia, with exhibits GSH-1 and GSH-2, made 16 September 2016.

Evidence in answer

·     Jennifer Ann Mackie, attorney of Pizzeys Patent and Trade Mark Attorneys, with exhibits JAM-1 to JAM-6, made 9 December 2016.

·     Adam Woodrow, Vice President Chief Commercial Officer of the Holder, with exhibits AW-1 and AW-2, made 20 December 2016.

Evidence in reply

·     Georgina Stacy Hey, with annexures GSH-A to GSH-C, made 10 February 2017.

1. Ms Hey’s first declaration exhibits an extract from the International trade mark register[2] which shows that the Opponent is the owner of an international registration designating Australia (‘IRDA’), the details of which are below.

   [2] Being the register administered by the World Intellectual Property Organisation, which can be searched at

Registration No.

1726919

International Registration No.

1267809

Filing date

4 August 2015

Convention Priority date

5 March 2015

Goods

Class 5: Pharmaceutical preparations; veterinary preparations; sanitary products for medical purposes; implants for pharmaceutical use; implantable medicines; dietetic substances for medical use; dietetic substances for veterinary use; food for babies; dietetic preparations and food supplements; food supplements for animals; plasters, materials for dressings; teeth filling material; dental impression materials; disinfectants; products for destroying vermin; fungicides; herbicides

Trade mark

NOALTA

(‘the Opponent’s Trade Mark’)

1. Ms Mackie’s declaration exhibits various extracts from the Australian trade marks register which were the results of searches she undertook in class 5 for all trade marks containing: (a) the prefix NOA, (b) the suffix ALTA, (c) the prefix NUA, or (d) the suffix ALTO. A summary of the results of these searches is below:[3]

[3] Reproduced from Ms Hey’s written submissions.

(Note that ‘ECLATA’ in row 3, column 2 should be ‘ECALTA’)

1. Mr Woodrow, in his declaration, explains the nature of the products upon which the Holder intends to use the Trade Mark (being a specific type of antibiotic) and explains the relevant market, in that the Holder’s antibiotic would be made available to patients only by prescription from a medical practitioner. He also declares that the Trade Mark was selected in good faith and exhibits a branding presentation, in which the Trade Mark was considered amongst a selection of names, dated 21 January 2015.

2. Ms Hey’s declaration in reply exhibits a decision of the Opposition Division of the European Union Intellectual Property Office regarding the parties’ trade marks (in respect of largely the same goods).[4] There, the Opponent successfully opposed registration of the Holder’s trade mark on the basis that ‘there is a likelihood of confusion on the part of the Swedish-speaking part of the public’ and ‘a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application’. The decision is silent as to whether confusion is likely in respect of the other parts of the European Union.

   [4] EUIPO Opposition No. B 2 583 337.

The Law

1. Section 44 of the Act, under which I will decide this matter, relevantly provides:

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.

1. Subsections (3) and (4) are provisions under which acceptance of an application may be granted, notwithstanding the existence of prior substantially identical or deceptively similar trade marks. They relate to honest concurrent or prior continuous use, or other circumstances which would make registration proper, none of which have been asserted here nor is there any evidence filed in respect of these provisions. Accordingly, I need not consider sub-ss (3) or (4).

2. To establish the ground under s 44 the Opponent must establish that another trade mark exists which has an earlier priority date than the Trade Mark; which is substantially identical with, or deceptively similar, to the Trade mark; and which is in respect of similar goods or services closely related to the goods of the Trade Mark. For this purpose the Opponent relies upon the IRDA detailed in paragraph 6. For ease of reference the details of the parties’ trade marks are below.

Holder’s Trade Mark	Opponent’s Trade Mark
NUALTO	NOALTA
Priority date: 16 June 2015	Priority date: 5 March 2015
Goods: Class 5: Pharmaceutical preparations, namely, antibiotics	Goods: Class 5: Pharmaceutical preparations; veterinary preparations; sanitary products for medical purposes; implants for pharmaceutical use; implantable medicines; dietetic substances for medical use; dietetic substances for veterinary use; food for babies; dietetic preparations and food supplements; food supplements for animals; plasters, materials for dressings; teeth filling material; dental impression materials; disinfectants; products for destroying vermin; fungicides; herbicides

1. The priority date of the Opponent’s Trade Mark is earlier than that of the Trade Mark, a matter which is not contested.

2. The goods of the Trade Mark, being ‘pharmaceutical preparations, namely, antibiotics’, are implicitly included within the description ‘pharmaceutical preparations’, specified in the Opponent’s registration.

3. I turn then to the core of this matter, being whether the parties’ trade marks are substantially identical or deceptively similar.

4. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’)[5] Windeyer J described the test for substantial identity as:

   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.

   [5] [1963] HCA 66, [12].

5. I do not consider that the Trade Mark is substantially identical to the Opponent’s Trade Mark. In a side-by-side comparison, the difference in the prefixes ‘NU’ and ‘NO’ are likely to be noted, as is the difference in the suffixes ‘O’ and ‘A’. Accordingly, where the trade marks in question are side by side before the observer, they are not so similar that a total impression of resemblance emerges and hence they are not substantially identical.

6. Deceptive similarity on the other hand relies upon impression rather than a side by side comparison. The expression ‘deceptively similar’ is defined in s 10 of the Act as ‘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’. Windeyer J continued his discussion in Shell as follows:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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 [Opponent’s Trade Mark] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [Trade Mark]. To quote Lord Radcliffe again: "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": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "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" (1937) 58 CLR, at p 658.[6]

   [6] Above n. 5, [13].

7. The considerations relevant to deceptive similarity were restated in Registrar of Trade Marks v Woolworths.[7] In summary these are: a real tangible danger of deception or confusion must exist rather than a mere possibility of such; confusion is likely where some people will wonder or be left in doubt as to whether the goods or services of interest come from the same source; all the surrounding circumstances must be taken into account; the rights of the parties are to be determined as at the date of the application (here the priority date of the opposed application); and the assessment must be considered in respect of all the goods or services specified in the application. In respect of the last proposition it was observed in Berlei Hestia Industries Ltd v The Bali Company Inc[8] that the likelihood of deception or confusion is to be considered not by how the trade mark has been used in the past, but by how it may be used (should registration be granted).

   [7] [1999] FCA 1020, [50].

   [8] [1973] HCA 43, [11].

8. I consider that the trade marks are deceptively similar. Unlike the assessment of substantial identity, one does not have the benefit of both trade marks present in a side by side comparison. Rather it is the impression that is taken away and possibly imperfectly recalled that is to be considered.

9. Both trade marks are invented words such that there is no conceptual differentiation that might be made by the purchasing public. I am not persuaded by the Holder’s argument that its trade mark suggests the phrase ‘NEW-ALTO’ and thus creates the impression of a new singing voice or new musical sound. There is nothing in the word NUALTO or the context within which it would appear, being upon antibiotics, which would bring this to the public’s mind. The same applies to the Holder’s argument that the Opponent’s Trade Mark suggests the phrase ‘NO-ALTA’ and thus the impression of ‘no alternative’.

10. Both trade marks are constructed similarly, in that they are both three syllable words beginning with ‘N’ and each of those syllables sound similar (or, in the case of the middle syllable ‘ALT’, identical). I consider that the visual and aural differences between the respective prefixes (‘NU’ and ‘NO’) and suffixes (‘O’ and ‘A’), in the context of the entirety of the words, are minor and of the type that may well be imperfectly recalled. I bear in mind also the comments of Luxmoore J in Rysta Ltd’s Application:

    The answer to the question whether the sound of one word resembles too nearly the sound of another...must nearly always depend on first impressions, for obviously a person who is familiar with both words will neither be deceived or 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.

I consider that it is only by the ‘meticulous comparison’ of the two words where they are side by side that the differences might be sufficiently significant to conclude they are not similar.

1. I repeat also the words of the decision by the EUIPO, referred to earlier, that ‘the signs have the same vowel structure, rhythm and intonation’. (Moreover, although the EUIPO decision has little bearing on the matter here, I note that the appeal mounted by the Holder in that jurisdiction was dismissed).

2. Nor am I persuaded that the state of the register shows any relevant coexistence of words visually or aurally similar to either party’s trade mark. All of the examples raised by Ms Mackie differ to a significantly greater degree than do the two trade marks in question here, either because they contain entirely different prefixes or suffixes, or they are entirely different in length, or both.

3. Lastly, I bear in mind that the relevant market is likely to pay more attention to the names of the products relevant here (than, for example, the names of inexpensive disposable or consumable products purchased by the public at large). Nonetheless, given that notionally the parties’ trade marks may be used on precisely the same goods, I do not consider that the risk of confusion is sufficiently mitigated by the differences between the NUALTA and NOALTO marks, notwithstanding the higher degree of attention that medical professionals are likely to pay to the various names they encounter.

4. Accordingly, I am satisfied that the Trade Mark is deceptively similar to the Opponent’s Trade Mark and the ground of opposition under s 44 is established.

Decision and costs

17A.34NDecision on opposition

(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

(2)The Registrar must notify the International Bureau of the Registrar’s decision.

1. The Opponent has established a ground of opposition. Accordingly, I refuse to extend protection to Australia of trade mark application 1747501 (International Registration 1283825).

2. Both parties sought an award of costs. Costs normally follow the event, and as there is no apparent reason to depart from the principle I award costs against the Holder in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Nicole Worth
Hearing Officer
Hearings and Oppositions
11 April 2018