Chiron Corporation v Cheironia Pty Ltd

[2003] ATMO 67

TRADE MARKS ACT 1995

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

Re:Opposition by CHIRON CORPORATION to registration of trade mark application 781801(42) - CHIRON HEALING - filed in the name of CHEIRONIA PTY. LTD.

Delegate:

Claudia Murray

Representation:

Opponent
Carmen Champion, of Counsel, instructed by F B Rice & Co, Patent and Trade Mark Attorneys
Applicant
Celia Cumming, Partner, Freehills Carter Smith Beadle, Patent and Trade Mark Attorneys

Decision:

1. Section 52 Opposition: registration allowed - s 55(b)

2. Costs awarded against opponent

Background

1. Cheironia Pty. Ltd. (the applicant) filed trade mark application number 781801 on 23 December 1998. The subject of the application is the word trade mark:

   CHIRON HEALING

2. The application was filed in class 42 of the International (Nice) Classification of Goods and Services. Grounds of rejection under sections 41 and 44 of the Trade Marks Act 1995 (the Act) were raised against the application during examination. However, following an amendment to the statement of services, and the provision of evidence of use, the citations raised under section 44 were withdrawn and the application was advertised accepted for registration in the Australian Official Journal of Trade Marks, on 11 January 2001. The application was subject to an endorsement indicating that the provisions of subsection 41(5) had been applied, and the statement of services at acceptance was:

   Body therapy services in the fields of energy medicine, spiritual counselling and healing, therapeutic body work including cranial sacral work, massage therapy, somatic emotional release work, and other body work techniques, aromatherapy, flower essences, shamanistic techniques, acupuncture, massage, acupressure, spiritual and energy healing.

3. On 11 April 2001 Chiron Corporation (the opponent) filed notice of opposition to registration of the trade mark. Five grounds of opposition were listed in the notice.

4. The parties' evidence in support, evidence in answer and evidence in reply was duly served and filed. At the end of the process, the applicant requested a hearing upon the matter. This was held before me, as a delegate of the Registrar, in Canberra, on 29 July 2003. Ms Carmen Champion, of Counsel, instructed by F B Rice & Co, Patent and Trade Mark Attorneys, Sydney, represented the opponent by telephone. Ms Celia Cumming, of Freehills Carter Smith Beadle, Patent and Trade Mark Attorneys, Melbourne, represented the applicant in person.

   The evidence

   Evidence in support

5. The opponent's evidence in support comprises a statutory declaration, dated 5 August 2002, by Anne S. Dollard, the opponent's Assistant Corporate Secretary and Patent Counsel. Ms Dollard explains that the word CHIRON was adopted as the opponent's name when the company was formed in 1981, and has been used ever since. She gives a short history of her company, declaring it to be a leader in the field of innovative diagnostic tests and the application of biological techniques to medical research, being responsible for such breakthroughs in its field as the development of the first genetically engineered vaccine. The company also developed the first approved treatment for multiple sclerosis. Ms Dollard describes the opponent as "the fifth-largest vaccine business in the world", offering over thirty vaccines, including the first preservative-free influenza vaccine. Exhibits A to Q accompany Ms Dollard's declaration.

   Evidence in answer

6. The applicant's evidence in answer comprises a statutory declaration, dated 18 February 2003, by Larraine Isobelle Crawshaw, a director of the applicant. Ms Crawshaw declares that the trade mark CHIRON HEALING was first coined and used in relation to the services of the subject application by Jan Elise Thomas (nee Trenorden) in 1982. Ms Thomas continuously used the trade mark, according to Ms Crawshaw, from that time until she assigned it to the applicant, upon its incorporation in 1997. The aim of incorporation was, attested Ms Crawshaw, "to record, preserve and protect the CHIRON HEALING principles, philosophies and techniques in their purest form and pass them on to all those seeking their own truths in the most appropriate way." Ms Thomas was one of the applicant's three original directors, but has since resigned from this role.

7. Ms Crawshaw further explains:

   Jan is a psychic who channels the techniques and philosophies of the mythological Greek god Chiron. According to myth, Chiron was the leader of centaurs and the master teacher of healers, philosophers, astrologers, mystics, writers, artists and wanderers of Chirurgon origin. Jan is the only person who has channelled these techniques and philosophies.

   Jan's body serves as a medium for entities of her spiritual stream and she began channelling information received from these entities in public in the 1970s. In the early 1980s, a group of mainly chiropractors began meeting on a regular basis, listening to what Jan had to say and learning new healing techniques, working with the body's aura to positively affect a person's energy and, in turn, improve their general wellbeing.

   ...

   Because Jan is very shy and reluctant to speak in public, [two chiropractors from the group], Trevor [Creed] and Joanne [Messenger] who were experienced public speakers and trained in seminar presentation, began to teach some of the simpler self-help techniques to the general public. Jan would be in attendance and would usually give a session of channelled information for those present.

8. Ms Crawshaw's declaration is accompanied by exhibits A and B, which provide the applicant's sales and advertising figures for the past six to eight years.

   Evidence in reply

9. The opponent's evidence in answer is a statutory declaration by Joanne Christine Martin, dated 21 May 2003. Ms Martin is a partner of the opponent's agent, F B Rice & Co, a solicitor and registered Trade Marks Attorney. Ms Martin's declaration mainly goes to information regarding the activities of other large pharmaceutical companies (not the opponent) in the area of alternative medicine. Exhibits JCM1 to JCM7 accompany her declaration.

   Grounds of opposition

10. At the hearing, Ms Champion indicated that the grounds to be pressed by the opponent were under sections 27, 42, 43 and 60. In addition, although the opponent did not rely on a ground of opposition under section 44, it wished to make submissions against any claim made by the applicant to the exceptions to that ground provided by subsections 44(3) and (4). It will not be necessary for me to refer to these latter submissions again, as the honest concurrent use, other circumstances and prior use exceptions to subsections 44(1) and (2) that may be available to an applicant do not become relevant unless an opponent relies upon those provisions.

    Section 27 - application - how made

11. An application for registration is made under section 27 of the Act, which specifies:

    (1)     A person may apply for the registration of a trade mark in respect of goods and/or services if:

    (a)     the person claims to be the owner of the trade mark; and

    (b)     one of the following applies:

    (i)     the person is using or intends to use the trade mark in relation to the goods and/or services;

    (ii)     the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

    (iii)    the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

    Note:    For use see section 7.

12. The opponent's fourth ground of opposition specified "The applicant is not the owner of the Trade Mark within the meaning of s. 27(1)(a)". However, sections 52 and 57 of the Act nominate the grounds under which registration of a trade mark may be opposed, and section 27 is not among them. By filing its application, Cheironia Pty Ltd declared itself to be the owner at that date of the trade mark CHIRON HEALING. The Registrar has accepted that claim, at face value, in accepting the trade mark for registration. There are two grounds under which an opponent might attempt to displace such a claim. Under section 58, an opponent has the right to challenge an applicant's ownership by demonstrating use of the same, or a substantially identical trade mark, on the same goods or services of interest, prior to the filing date of the application. (See Trade Mark Law in Australia, (2000) Elkington, Hall and Kell, page 77). Ms Champion did not seek to pursue this avenue, conceding that in reality the applicant and the opponent operated in non-competing business spheres.

13. The second ground under which the applicant's claim in terms of section 27 might be displaced is provided by subsection 62(b): "that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars". This seemed to be the basis for Ms Champion's submissions that, under her interpretation of the applicant's evidence, the applicant was not entitled to claim ownership of the trade mark as at the date of filing its application. Ms Champion pointed in particular to the applicant's failure to provide actual documentary evidence that Ms Thomas had assigned rights in the trade mark to the applicant, prior to filing the application.

14. I agree with Ms Champion that consideration of the evidence suggests a certain nebulousness in relation to both predecessor Jan Thomas, and also the applicant's pattern of use of the CHIRON HEALING trade mark. This is perhaps not so remarkable, when the generally nebulous nature of the field in which they operate is taken into account. Their concern at the possibility that action might be taken at some point by the opponent is likely also to have affected their actions. The opponent put into evidence a letter written to it in November 2000 by Ms Crawshaw, enquiring as to its reaction to the applicant's proposal to file a US trade mark application, together with the opponent's firmly negative reply. Ms Champion argued at the hearing that this exchange illustrated the applicant's bad faith in adopting the trade mark. Ms Cumming argued to the contrary that this showed rather the applicant's good faith in advising the opponent of its intentions, given the limitations it faced for the naming and promotion of a spiritual healing service originating from the god Chiron. In any event, I do not accept that the opponent has met its burden of proof in relation to this ground of opposition. I am satisfied, from the information in Ms Crawshaw's declaration, that at the time of filing its application, the applicant validly claimed to be owner and intended user of the trade mark, such that no contravention of section 62 had occurred. I find this ground of opposition to be unsuccessful.

    Section 42 - use of trade mark contrary to law

15. Section 42 of the Act relevantly provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. Ms Champion submitted that the applicant's use of its trade mark on any of the services specified in its application would be contrary to law under section 42. This was because such use would contravene section 52 of the Trade Practices Act 1974 (the TPA) and constitute passing off at common law. Section 52 of the TPA provides:

    (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

16. Ms Champion cited Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 and Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd (1984) FLR 82 in arguing that, for conduct to be misleading or deceptive in terms of the TPA, it must convey a misrepresentation. Further, there must be a real or a not remote chance or possibility of the relevant consumers (including the astute and the gullible, the intelligent and the not so intelligent, the well educated and the poorly educated) being misled or deceived. To succeed in an action for passing off, Ms Champion submitted, a plaintiff must establish reputation, misrepresentation and the likelihood of damage. (Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 and Betta Foods Australia Pty Ltd v Betta Fruit Bars Pty Ltd (1998) ATPR 41-624.)

17. Ms Champion argued that the opponent's evidence clearly established its reputation in the trade mark CHIRON in relation to its business and products, dating back to 1981. She said that the relevant class of consumers would be extensive in that it would cover healthcare professionals, pharmacists and chemists, persons involved in scientific research in the area of biology, pharmacy and chemistry, and users of CHIRON products. She said that use of the applicant's trade mark in respect of its services amounted to a misrepresentation by the applicant of some close connection with the opponent. Further, allowing the applicant to use the CHIRON HEALING trade mark would cause the opponent damage, by permitting it to wrongfully take an attribute of the opponent's major asset, its CHIRON trade mark.

18. Ms Cumming countered that the opponent's evidence did not establish the extensive reputation it claimed in Australia, nor any likelihood of damage to it arising from the applicant's use of its trade mark. She said that any recognised association in Australia of the opponent's trade mark could only be as a house mark applied as a secondary mark to high value cancer drugs, diagnostics such as or limited to PROLEUKIN cancer drugs and RIBA blood testing products. Whatever reputation the opponent had in Australia at the relevant date would have been almost exclusively among highly trained and aware health professionals, a class of people not likely to be confused or misled by the applicant’s use of its own mark. She said that although the opponent and the applicant's trade marks had in common the name of a classical Greek centaur, this was not sufficient to establish a misrepresentation for passing off or a likelihood of deception under the TPA. The manner of use of the respective marks was different, the classes and the goods and services were different. She observed:

    We note that the Opponent has not submitted any evidence which proves that use of the Applicant’s mark would be contrary to law under s 42(b). In particular, the Opponent has not raised a single instance of actual confusion caused by the Applicant’s mark, and hence has not established that use of the mark would constitute misleading and deceptive conduct or passing off. Given that the Applicant’s mark has been in use for two decades, it is clear that, if its use was likely to cause confusion, then the Opponent either would already have commenced proceedings on this ground, or at least would have recorded and submitted evidence of some instances of actual confusion. That the Opponent has done neither of these is strong evidence that use of the Applicant’s mark would not be contrary to law.

19. A finding under section 42 of the Trade Marks Act 1995 requires, in effect, two separate, consecutive decisions to be made. Only the second of those decisions results in a finding within the Registrar's actual jurisdiction. The first decision is, to quote Madgwick J in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, at paragraph 22, merely an "expression of an opinion upon a hypothesis". The Advantage-Rent-A-Car case discusses in some detail the principle that section 42 of the Act may require the Registrar to make determinations regarding issues of law outside of the discrete area of trade marks. At paragraph 28 Madgwick J said:

    I acknowledge the claim made by counsel for the Registrar that such an approach requires the Registrar to look at questions of law outside his or her expertise and that this can be difficult and may place a large and onerous responsibility upon the Registrar. However, the Registrar has the comfort that the criterion is that the use "would" not "could" be contrary to law...It should also be noted that what is required is that the Registrar form a view as to whether the use of a trade mark would be contrary to law.

20. The hypothetical scenarios painted at the hearing by Ms Champion are, as the applicant has observed, unsupported by any actual evidence. The mere allegation that the doctrines of section 52 of the TPA and the tort of passing off have been breached is insufficient for even hypothetical success, given their higher threshold, relative to that present in the Act. Shanahan's Australian Law of Trade Marks and Passing Off, 3^rd Edition, 2003 at page 598, discussing section 52 of the TPA, states: "Misleading conduct does not merely cause confusion; it actually directs a person towards the wrong choice". The sources cited by Ms Champion determine that the success of a passing off action depends upon being able to demonstrate that the conduct of a defendant is likely to deceive. Seeking to meet the onus upon it, the opponent has led no evidence, save for a brief expression of "mere wonderment" on the part of the opponent itself (Shanahan, supra, at page 279), in relation to these matters. Under these circumstances, I have no basis for venturing even "an expression of an opinion upon a hypothesis", in Madgwick J's terms, upon the opponent's claims. It follows naturally that I am also not in a position to form the requisite view in terms of section 42 that the applicant's use of its trade mark would be contrary to the laws identified by the opponent. The ground of opposition under section 42 is therefore unsuccessful.

    Section 43 - Trade mark likely to deceive or cause confusion

21. Section 43 provides that 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.

22. Ms Champion cited Durkan v Twentieth Century Fox Film Corporation (1999-2000) 47 IPR 656 in support of her submissions. She argued that the opponent's activities had imparted a connotation to a substantial section of the Australian public, especially healthcare providers, such that they would assume the trade mark CHIRON HEALING indicated the opponent's offering of "an alternate, more holistic means for healing particular types of health problems".

23. Ms Cumming re-iterated in response her comments in relation to the opponent's ground of opposition under section 42, arguing that the opponent's inability to produce any evidence of actual confusion relating from the applicant's use of its trade mark was equally significant in terms of the section 43 ground.

24. The conditions under which a ground of opposition under section 43 should succeed are frequently the subject of debate in opposition hearings. The kind of circumstances most clearly intended to be addressed by that section occurred in the VITAMIN and ORLWOOLA cases (J. Kitchen & Sons Pty LTD v Inman (1939) 9 AOJP 1383 (Reg.), Re Trade Mark "Orlwoola" (1909) 26 RPC 850 (C.A.)). In those cases, there was a danger the public might make a reasonable, but incorrect, assumption about a product based upon the trade mark, which could not easily be confirmed or discounted by even close inspection of the product. The situation being addressed in Durkan v Twentieth Century Fox Film Corporation, supra, was different from this, and the situation here is different from both.

25. In Big Country Developments Pty Ltdv TGI Friday's Inc, [2000] FCA 720, 48 IPR 513, at 521, Wilcox, Kiefel and Emmett JJ commented:

    The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in [section 43]. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by s 43.

1. Even the adoption of a more liberal view of the scope of section 43, than perhaps suggested by this brief observation by the Full Federal Court, would not assist the opponent here. Conditions where an opponent could demonstrate the existence of a connotation now inherent in a word, but originally derived from use of that word as a trade mark and resulting in deception and confusion of the public when used as part of another trade mark, would be rare indeed. The word CHIRON has an ordinary meaning, being the name of a mythological Greek centaur, teacher of healers. I am being asked to find that this meaning has been eclipsed by the opponent's use of CHIRON as a trade mark, such that its presence in the trade mark CHIRON HEALING causes that mark as a whole to connote association with the opponent. There is a considerable burden of proof associated with such a claim, and the opponent's evidence falls very far short of discharging that burden. I find the ground of opposition under section 43 to be unsuccessful.

   Section 60 - trade mark with a reputation in Australia

2. To satisfy section 60, an opponent must demonstrate that, at the time of filing of the opposed application, it had a reputation in a substantially identical or deceptively similar trade mark, such that use of the applicant's trade mark would likely cause the public to be deceived or confused. The opponent's trade mark need not be subject of an application or registration, in order to be able to be relied upon under this section.

3. A threshold test for the opponent's success under this ground of opposition is therefore whether the applicant's trade mark CHIRON HEALING is substantially identical or deceptively similar to the opponent's trade mark CHIRON. Ms Champion relied upon the classic tests set out by Windeyer J in Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at pages 414-415, to argue that the trade marks CHIRON and CHIRON HEALING were both substantially identical and deceptively similar. She also referred to QH Tours Ltd v Mark Travel Corporation [1999] ATMO 31 (2 April 1999) (FUN JET), and Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 26 IPR 246 (POLO CLUB). Ms Cumming argued for the opponent that, in applying the principles set out in Registrar of Trade Marks v Woolworths(1999) 45 IPR 411, I should find in the negative on both counts.

4. I have considered Ms Champion's submissions in relation to substantial identity of the trade marks, in light of Windeyer J's test. I do not believe that a side by side comparison of the two marks CHIRON and CHIRON HEALING leads to anything but an impression of dissimilarity, resulting from the presence in the second trade mark of a second essential feature, the word "healing". This is not a parallel circumstance to that in which FUN JET was found to be substantially identical to FUN JET SERVICE. The word "healing" has a significant impact upon the meaning as well as the appearance of the whole mark CHIRON HEALING, which cannot be discounted in a similar manner to that by which words with "different work to do" such as "service" or "choc" have been discounted elsewhere. (PB Foods Ltd v Malanda Dairy Foods Ltd (1999) AIPC 91-531, paragraphs 31 and 32.) I find that the trade marks at issue are not substantially identical.

5. The second question, whether the trade marks are deceptively similar, I must address differently. In Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, Burchett J found the trade marks VOGUE and EUROVOGUE with device not deceptively similar. He distinguished his earlier POLO CLUB decision, because there, "the original meaning of 'Polo' is retained and is dominant, so that a product labelled with the two words may be taken as merely the 'club' version of the Polo" (page 510). At pages 511-12, he continued:

   ... it should be borne in mind that "vogue" is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the [opponent's] registration, but the court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.

6. CHIRON too, is a word not "wholly without any direct application" to the respective goods and services of the parties in conflict here. It is, however, probably less well recognised by the buying public than the word "vogue". In Sports Cafe Ltd v Registrar of Trade Marks [1998] 1614 FCA, the Full Federal Court found the word trade mark THE SPORTS CAFE to be deceptively similar to the trade mark THE CIRCUIT SPORTS CAFE (with a border device). I accept that, similarly, and also following Burchett J's reasoning in relation to POLO CLUB, quoted above, the trade marks CHIRON and CHIRON HEALING are deceptively similar.

7. The question for me now, therefore, is whether the opponent had such a reputation in Australia at the time the applicant filed its trade mark, that the applicant's use of that mark on its services of interest would likely result in deception or confusion of the public. Ms Champion pointed out, during the course of the hearing, the opponent's recognition that the goods and services of the parties did not overlap, arguing that they did not need to, in order for the opposition to succeed. However, I disagree with her assessment on the facts of this case, and I remain unconvinced that the opponent has discharged its true burden here. By their very nature, the goods of interest to the opponent must be promoted almost exclusively to highly trained professionals - people who might in any case be expected to notice differences between trade marks more readily than members of the general public. The opponent has led no convincing evidence that its reputation, at the relevant date, was sufficiently comprehensive to create in the public mind - whether general or medically specialised - a critical leap of association. That is, a leap which would lead the applicant's customers to believe its CHIRON HEALING alternative therapies originated from the company known by healthcare professionals to use the name CHIRON (as the evidence shows) in the manner of a subsidiary house mark applied to its separately trade marked vaccines, and etc.

8. The opponent's ground of opposition under section 60 is also unsuccessful.

   Decision

9. I have found that the opponent has not succeeded under any of the grounds pursued at the hearing. For completeness, and as I have no basis to be satisfied that the other ground raised in the notice of opposition has been made out, I find that ground also to be unsuccessful. Trade mark application number 781801 may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

   Costs

10. Both sides have claimed their costs in the opposition. I award costs in these matters, to follow the event, against the unsuccessful opponent, Chiron Corporation.

    Claudia Murray
    Hearing Officer
    Trade Marks Hearings
    31 October 2003