Boehringer Ingleheim Pharma GmbH & Co . Kg v Johnson & Johnson

[2013] ATMO 72

TRADE MARKS ACT 1995

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

Re:Opposition by BOEHRINGER INGLEHEIM PHARMA GMBH & CO . KG. to registration of trade mark applications 1419074  (5) – STARIBA - and 1419076 (5) – ABIRIBA - filed in the name of Johnson & Johnson.

Delegate:	Bianca Irgang
Representation:	Opponent: Ms Marion Heathcote and Ms Lena Balakrishnan of Davies Collison Cave Applicant: Mr Sean McManis of Shelston IP
Decision:	2013 ATMO 72 Section 52 opposition: sections 44 and 60 pressed at the hearing – s. 44 the trade marks are not substantially identical or deceptively similar - s. 60 opponent establishes market presence but failed to demonstrate the there was likely to be any deception or confusion in the marketplace – no ground of opposition established.

Background

1. Johnson & Johnson (‘the applicant’), filed trade mark application numbers 1419074 and 1419076 on 8 April 2011 in class 5 of the International Classification of Goods and Services (‘Nice’ classification). Current details of the applications are set out below.

Trade mark:  STARIBA

Trade mark application:        1419074

Filing Date:  8 April 2011

Specification:  Class 5: Human pharmaceuticals  

Trade mark:  ABIRIBA

Trade mark application:        1419076

Filing Date:  8 April 2011

Specification:  Class 9: Human pharmaceuticals

1. Both of the applications were accepted for possible registration and the official notices of acceptance were published in the Official Journal on 4 August 2011. On 1 November 2011 Boehringer Ingleheim Pharma GmbH & Co . Kg.  (‘the opponent’) filed Notices of Opposition (‘the Notices’) to registration of the applications. Thereafter the parties served and filed evidence in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Sydney as a delegate of the Registrar of Trade Marks on 17 June 2013. The opponent was represented by Ms Marion Heathcote and Ms Lena Balakrishnan of Davies Collison Cave. The applicant was represented by Mr Sean McManis of Shelston IP.

Grounds of Opposition

1. The Notices 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

2. 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 sections 44 and 60 of the Act. However, the opponent has not provided any evidence specific to prosecute any of the remaining grounds of opposition. Without more information than the opponent has provided in its evidence these grounds cannot be established. 

Evidence

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

Declarant	Position	Date Made	Exhibits
Evidence in Support
Christine Dumke	Trade Mark Counsel of Boehringer Ingelheim	31 August 2012	MK1 to MK5
Evidence in Answer
Sean Francis McManis	Solicitor and Principal of Shelston IP	9 October 2012	SFM-1 to SFM-5

Section 44 - Identical etc. trade marks:

1. Section 44 of the Act relevantly provides:

1. Identical 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.

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

Øa 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;

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

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

1. The opponent has specified one trade mark registration in support of the section 44 ground of opposition. Details of this registration are as follows:

Trade mark:  SPIRIVA

Trade mark application:        769233

Filing Date:  3 August 1998

Specification:  Class 5: Pharmaceutical preparations

1. The opponent is the registered owner of the above trade mark which has an earlier priority date to that of the applicant’s trade marks. The trade mark registration covers the same class 5 goods as the goods of the applicant. The key issue to be decided is whether either of the applicant’s trade marks is substantially identical or deceptively similar to the opponent’s SPIRIVA trade mark.

2. It is clear the applicant’s trade marks are 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].

   [3] (1963) 109 CLR 407 at 414

Applicant’s Trade Marks

Opponent’s Trade Mark

STARIBA

ABIRIBA

SPIRIVA

1. While all the trade marks are seven letters long, there exist such differences in spelling that there is a clear picture of dissimilarity between the trade marks. The trade marks are not substantially identical.

2. According to the authorities[4] any consideration of whether trade marks are deceptively similar must take into account that consumers may have an imperfect recollection of a trade mark. As a general principle one needs to estimate the impression consumers are likely to form of each trade mark as a whole. Confusion may result if a trade mark incorporates the distinguishing features of another’s trade mark. Justice French in Registrar of Trade Marks v Woolworths Ltd[5] observed in relation to the expression “likely to deceive or cause confusion”:

   [4] Clark v Sharp (1898) 15 RPC 141 at 146; Re Application by the Pianotist Co Ltd (1906) 23 RPC 774; Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641; Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87; Cordova v Vick Chemical Co (1951) 68 RPC 103; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536; Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411

   [5] supra

   … The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring” …

3. The concepts ‘deceive’ and ‘cause confusion’ were considered in Pioneer Hi-Bred  Corn  Co v Hy-Line Chicks Pty Ltd[6] where it was stated :

   [6] (1979) RPC 410 at 423

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

4. The decisive question is whether the use of the trade marks STARIBA and ABIRIBA on the goods in class 5 given the previous registration for SPIRIVA for goods in class 5 would result in a tangible danger of confusion or deception. I do not believe it would. In coming to this decision it is important that trade marks are considered in their entirety – ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[7]

   [7] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

5. In comparing the respective trade marks it becomes apparent that STARIBA and ABIRIBA do share some phonetic similarities with the opponent’s trade mark SPIRIVA. Visually, all the trade marks are seven letters long. STARIBA and SPIRIVA both begin with an “S”, have an “R” as the fourth letter and end with the letter “A”. ABIRIBA and SPIRIVA have the same three letter sequence “IRI” appearing in the middle of the trade mark and both trade marks end with the letter “A”. However, it is also clear that all the trade marks begin with very different prefixes being “SPIR-“ in comparison to “ABIR-“ and “STAR-“ which are all very different in look and sound.

6. Ms Heathcote, the representative for the opponent, has submitted that it is well accepted the consonants such as “b” and “p” and “b” and “v” are often interchangeably mispronounced. She referred me to the decision in Protiviti Inc v Probiti Pty Ltd [2005] FCA 1114, where Justice Heerey considered the marks “Protiviti” and “Probiti” to be similar, as they commence with the same syllable “Pro” followed by a similar sounding suffix that commenced with either the letter “b” or the letter “v” (at [22] at [23]):

   “]i]mportantly they both end with the letter “I” pronounced “ee”. This is an unusual ending for words in the English language. The internal consonants “v” in the one word and “b” in the other can often be confused (…)

   This is more so when both words are invented words and the person reading or hearing them does not have reference to a tangible thing to fasten one meaning in his or her mind compared with another.”

7. Ms Heathcote further submitted that the applicant’s trade marks ABIRIBA and STARIBA as well as the opponent’s SPIRIVA trade mark are all invented words , and therefore none of the trade marks are likely to conjure up specific impressions that would otherwise distinguish the trade marks. Additionally, Ms Heathcote also suggested that the letters which are different in the applicant’s trade marks when compared to the opponent’s trade mark are all letters that are either readily slurred or interchangeably mispronounced.

8. While it is true that the trade marks all contain some similar letters and some letters may be interchangeably mispronounced, I am not satisfied that the applicant’s trade marks are deceptively similar to the opponent’s trade mark, particularly when the trade marks are considered, as they must be, as wholes. The spelling differences between the ‘coined’ terms is significant and even though all the trade marks may share some of the same letters and end with the letter “a”, the trade marks are likely to be pronounced a number of different ways by the general monolingual Australia consumer particularly when the suffixes of the trade marks are so different. I do not believe that ABIRIBA or STARIBA would be pronounced inm any similar fashion as is SPIRIVA by a significant number of consumers. The differences in spelling between the trade marks is simply too great.  

9. The nature of the goods in question and the usual manner in which they are sold is also particularly relevant to determining whether there is a tangible danger of deception or confusion arising. While deception or confusion may arise when trade marks are used either visually or aurally, aural deception is unlikely to occur with goods which are generally inspected before purchase, such as the pharmaceutical goods claimed in class 5. The likelihood of visual deception is also reduced as the goods are ‘likely to be subjected to a careful visual examination by any intending purchaser’.[8] I am not satisfied there is a real tangible danger of these respective trade marks being confused in the marketplace when applied to the applicant’s goods in class 5 and the opponent’s goods, particularly when the goods are being sold in pharmacies as advised by the opponent.

   [8] Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, per Burchett J at 510

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

Section 60 – use of trade mark likely to deceive or cause confusion because of the reputation of another trade mark in Australia

1. Section 60 of the Act provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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.

2. To establish the ground of opposition under section 60, the opponent must demonstrate:

ØThat, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and

ØThat because of the reputation of the second trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

1. Unlike section 44 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be similar to the applicant’s goods of interest, nor is there a requirement that the trade marks be substantially identical or deceptively similar. It is now for me to determine whether the opponent has acquired a reputation in Australia for its SPIRIVA trade mark which is such that use of the opposed trade marks would be likely to deceive or cause confusion. This is more than merely indicating prior use, the opponent’s trade mark needs to be “associated in the minds of the Australian public”[9].

   [9] Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

2. In relation to reputation Kenny J states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

   In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

3. At 129 Kenny J continues:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product:…

4. Exhibit MK-3 accompanying the statutory declaration of Christine Dumke (‘the Dumke declaration’) consists of a table detailing sales of SPIRIVA products in Australia and worldwide on a monthly basis from January 2006 to July 2013. These sales are very significant. Exhibit MK5 consists of a copy of a press release dated 23 September 2008 and extracted from the archival records of the opponent’s website. In this press release IMS Health data identifies SPIRIVA branded goods as "the most prescribed medication for the treatment of chronic obstructive pulmonary disease in the world”.

5. It is clear from the evidence that the opponent has engaged in a significant level of advertising which has resulted in growing sales as the years have progressed. It is also clear that the opponent has been using its SPIRIVA trade mark for a period of time which predates the opposed trade marks’ priority date. I am satisfied that within the Australian marketplace specific to the opponent’s goods –the opponent does have a reputation in its SPIRIVA trade mark for its inhalation powder. However it needs to be determined if, given this reputation in Australia, use of the opposed trade marks would be likely to deceive or cause confusion.

6. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[10] the Registrar’s delegate observed that:

   [10] [2012] ATMO 124 at [40]

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties.  Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

7. In the present matter the applicant’s trade marks will be used in relation to the same goods for which the opponent’s SPIRIVA trade mark is registered; namely human pharmaceuticals.  However, I have already found that the opponent’s trade mark is not deceptively similar to either of the applicant’s trade marks. Indeed, the respective trade marks are so dissimilar that, notwithstanding the substantial reputation for the SPIRIVA trade mark, I see no reasonable basis for consumers being confused by use of the applicant’s trade marks.

8. Additionally, there is no evidence before me of actual confusion in the marketplace in relation to the origin of the applicant’s and opponent’s respective goods provided under the respective trade marks. I am not satisfied that applicant’s use of its trade marks will result in any significant degree of deception. The opponent has not established the section 60 ground of opposition

Decision

1. 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.

1. 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

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

Bianca Irgang
Hearing Officer
Trade Marks Hearings
10 September 2013