Ciba-Geigy AG v Allergan Inc

[1996] ATMO 1

TRADE MARKS ACT 1955

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

Re:     Opposition by ALLERGAN INC to the registration of Trade Mark application
           number 612538 in the name of CIBA-GEIGY AG

Application No 612538 was lodged on 27th September 1993 in the name of CIBA-GEIGY AG (the applicant).  The application was for the word TEARDROPS and was advertised accepted in the Official Journal of 2nd December 1993 for the statement of goods: “pharmaceutical preparations; products for contact lens care including cleaning, rinsing, disinfecting and storage solutions”.

Notice of opposition to the mark’s registration was lodged on 2nd March 1994 by ALLERGAN INC (the opponent).  Various grounds constituted the basis of opposition; however, the main grounds, as addressed by the opponent related to s 24 of the Act, that the mark has direct reference to the character or quality of the goods of this application, that it is not capable of becoming distinctive in terms of s 25, and that it is not inherently adapted to distinguish under s 26, and to s 33, that the subject mark is substantially identical with or deceptively similar to the opponent’s registered mark. 

The evidence
The service and lodgment of the opponent’s and applicant’s respective evidence were completed by 26th June 1995.  The evidence in support comprises a statutory declaration with exhibits NP-1 to NP-4 by Nilesh Patel.  A statutory declaration with exhibits KMC1 to KMC3 by Kerry Moore Chrysiliou and a declaration by Barry Abrahams form the evidence in answer.  The evidence in reply consists of a statutory declaration with exhibits MKR-1 and MKR-2 by Mark Kemball Roberts.

Mr Patel, whose declaration constitutes the evidence in support material, is the senior product manager for therapeutic products of Allergan Australia Pty Ltd, a wholly owned subsidiary company of the opponent.  He is a registered pharmacist and has been employed by the company since September 1991.  He states that the opponent has a registration in Australia, No 554534, for the mark TEARS PLUS in respect of “ophthalmic preparations, being eye drops” in class 5.  This mark has been extensively used in all states of Australia in relation to eye drops and to substantiate this use he has provided sales and advertising figures from 1988 to 1993.  In May 1994, sales of the product accounted for approximate market share of 14.2%.  He further states that the eye drop product bearing the trade mark has been extensively promoted with a tear drop device which has also appeared on the product packaging since 1986, as evidenced in exhibits NP-3 and NP-4.  Eye drops bearing the subject mark, he says, are available on prescription from medical practitioners and optometrists and also over the counter from pharmacies without a prescription.  In his opinion, the applicant’s mark is substantially the same as and is confusingly similar to the mark TEARS PLUS in view of a number of factors: the common element “tear”, the word TEARS in TEARS PLUS conveying the idea of tear drops, artificial tears being in the form of drops, and the tear drop device being used in conjunction with the opponent’s mark.  

In the first declaration of the evidence in answer, Ms Chrysiliou, a qualified patent attorney holding a Bachelor of Science degree from the University of Sydney and who has had considerable experience and involvement in chemical and pharmaceutical matters both in industry and her patent attorney profession, provides details of registrations for marks in class 5 which contain the word TEAR or TEARS.  As exhibit KMC2, she has annexed copies of pages from MIMS ANNUAL 1990, listing marks for ophthalmic preparations in the market place.  Commenting on these marks and marks, which she has extracted from the Australian Prescriptions Products Guide, Ms Chrysiliou observes that the word TEAR featuring or contained in the marks appears in the plural form.  From her research, she concludes that the word TEARS is a common particular to a number of trade marks and cannot be claimed as the exclusive property of any one particular trader.  From the marks listed in her declaration, she believes that the word TEARS would direct one’s attention to the ophthalmic field and if, for example, one compares POLY-TEARS and TEARS PLUS one can see the fine area for distinction between this type of mark.  This, she says, is due to the common nature and field identifier function of the word TEARS.  Since therapeutic preparations are available on a doctor’s prescription, by advice from a pharmacy, or by making an informed choice, in her opinion, the consumer is unlikely to obtain the wrong product.

Mr Abrahams is the managing director of Ciba Vision Australia Pty Ltd, a company financially controlled by Ciba-Geigy Ag.  He is a pharmacologist with extensive experience and exposure to the pharmaceutical/ophthalmic field in Australia.  He agrees with Ms Chrysiliou that the products under the marks TEARS PLUS and TEARDROPS are either prescribed, or the patients are otherwise directed to the appropriate product for purchase in the treatment of the complaint.  Since TEARS PLUS product is on the pharmaceutical benefits list, he believes there is a financial advantage in obtaining a doctor’s prescription for the product.  From his knowledge, TEARS PLUS and TEARDROPS have co-existed in the market place without any confusion occurring. 

In the evidence in reply comprising Mr Roberts’ declaration, Mr Roberts, a technical assistant of the patent and trade mark attorneys firm Davies Collison Cave, refers to the statutory declarations in the evidence in answer, first commenting that in instances where patients themselves selected the product for the treatment of dry eyes, given the lack of a distinctive element within the TEARDROPS mark, they could mistakingly select a different product on the basis of incorrect recollection of the trade marks.  He further notes that Mr Abrahams in his declaration has ignored the fact that the present application is seeking registration in respect of “pharmaceutical preparations”, and therefore some of the products could be available for sale in supermarkets or convenience stores. 

Referring to Mr Abrahams’ declaration and the annexures KMC2 and KMC3 of Ms Chrysiliou’s declaration, Mr Roberts makes the observation that eyedrop products have been described as “artificial tears”.  Commenting that this decription appears to be very common in the trade, he annexes as exhibit MKR-1 samples of product packaging sold under the trade marks TEARS NATURALE and POLY-TEARS where the eyedrop products are called “artificial tears”.

In his opinion, the word TEARDROPS, when used in relation to ophthalmic preparations or eyedrops, is directly descriptive of the goods and in support he exhibits a page from the Macquarie Concise Dictionary under MKR-2.  He also comments that the form or shape of a tear from an eye is commonly described as a “teardrop”.  Hence, as the eyedrops, which are in fact frequently described as artificial tears and which take the form of teardrops, are included in the present statement of goods, the mark TEARDROPS lacks any inherent distinctivenss and is incapable of distinguishing an artificial tear product which is packaged and sold to be administered in the form of drops.

The hearing on the opposition was set down before me, as the Registrar’s delegate, in Sydney on 20th October, 1995.  The opponent was represented by Dr Peter Stearne, of Davies Collison Cave, patent and trade mark attorneys of Sydney.  Mr Spiros Pappas of Chrysiliou Moore Martin, patent and trade mark attorneys, also of Sydney appeared for the applicant.

Submissions
Dr Stearne commenced the submissions by stating that the opponent would contend the applicant’s mark was not registrable in terms of paragraph 24(1)(d) of the Act, as the mark had direct reference to the character or quality of the applicant’s goods, and that it offended against the provisions of s 33 by being deceptively similar to the mark of registration No 554534.

He then directed my attention to the exhibits annexed to Ms Chrysiliou’s declaration where the dosage of administering the ophthalmic preparations is indicated as one or two drops, and where these preparations are described as “artificial tears”.  Similarly, he said, Mr Abrahams referred to the applicant’s product as “artificial tears” for the treatment of the dry eyes condition.  The goods, therefore, which are included in the scope of the present application were inherently artificial tear products.  From the definitions of the word “tear” in The Macquarie Dictionary, second revision, and Human Histology  by Leslie Brainerd Arey, copies of which were tendered at the hearing, it was clear that it described a drop of fluid which bathes the eye.  It was therefore the opponent’s contention that a tear was a teardrop, which was supported by The Macquarie Dictionary.  The goods “artificial tears” of the application then were represented by the trade mark meaning “tears”, i.e. an application for the mark TEARDROPS which means “tears”.  The ophthalmic preparations were administered as drops.  From this he adduced that the mark was directly descriptive of the character and quality of some of the goods specified in the application and the mark was to be clearly differentiated from TUB HAPPY, Mark Foy’s Ltd v Davies Coop & Co Ltd and SHEER RELIEF, Kolotex v Sara Lee Personal Products 26 IPR 1.

By referring to exhibits NP-3 and NP-4 of Mr Patel’s declaration where the mark TEAR DROPS appears with a large representation of a tear drop and, according to Mr Patel, had been used extensively in relation to eye drops for 9 years, he argued that other traders in the ordinary course of their business had a desire to use a mark which was the same or closely resembled the applicant’s trade mark (see W & G du Cros Ltd’s Appn [1913] 30 RPC 660). Consequently, the subject mark TEARDROPS could not be regarded as inherently distinctive or capable of becoming distintive.

In relation to s 33, Dr Stearne emphasized that a comparison of marks was made under fair and notional use.  This, he said, was highly relevant in the present situation where the opponent’s mark had been used in concert with the tear drop device since 1986.  Further, in considering the marks for deceptive similarity , the marks were not viewed side by side, therefore the test of imperfect recollection was a critical aspect (Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] 58 CLR 641). In this connection, he also cited Rysta Ltd’s Appn (1943) 60 RPC 87 and (1945) 62 RPC 65, as well as de Cordova v Vick Chemical Co (1951) 68 RPC 103. Bearing in mind that the applicant’s and the opponent’s goods were sold by optometrists and pharmacists or obtained on prescription from a doctor, as stated by Mr Patel and Ms Chrysiliou, the fact that the opponent’s mark comprises two words TEARS PLUS and a tear drop device, a customer who had used a tear drops product some time in the past was likely to remember the prominent aspect TEAR in the mark as well as the depiction of a tear drop. There was every reason to believe that such persons, on seeing the applicant’s mark, would be caused to wonder whether the products originated from the same source (Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd [1954] 91 CLR 592).

He also submitted that costs should follow the cause.

Introducing the applicant’s submissions, Mr Pappas first pointed out that no evidence on the alleged descriptiveness and non-distinctiveness of the applicant’s mark had been led in the evidence in support.  Therefore, believing that this ground of opposition had not been pressed, the applicant had not addressed that issue in the evidence in answer.  Further, the fact that the applicant did not have an opportunity to consider the evidence in the form of copies from the Macquarie and Human Histology, supra,  tendered by Dr Stearne, ought to be taken into account.  He also requested that no weight, or very little weight, should be given to Mr Roberts’ declaration, particularly para 7, forming evidence in reply, which introduced evidence appropriate as evidence in support, affording the applicant no opportunity to answer.

Concerning distinctiveness of the applicant’s mark, Mr Pappas argued that the mark had been found registrable in Part A by the Trade Marks Office.  He further submitted that the mark was not directly descriptive of the goods in question .  While conceding that the statement of goods of the present application did include artificial tears, he challenged the view that teardrops were directly descriptive of artificial tears because, he said, a teardrop conveyed an idea of a tear, of watery running eyes, and the action of crying, basically tears in the shape of drops which are falling out of the person’s eyes.  The purpose of the applicant’s product was to cure a condition known as dry eye symptom, as discussed earlier.  The whole idea of the applicant’s ophthalmic solution, he said, was for the solution to stay in the eyes and to keep the eyes watery and wet.  It would defeat the purpose of the product if it ran out of the eye. 

Mr Pappas then turned to Mr Roberts’ expressed views in his declaration concerning descriptiveness of the subject mark, commenting that three steps were involved in the argument to show the mark TEARDROPS was directly descriptive of the applicant’s goods.  Dr Stearne, he said, advanced a similar argument.  However, a mark could not be directly descriptive if two or three steps were needed to arrive at such a conclusion.  If one applied such reasoning, then TEARS PLUS mark could be said to be directly descriptive, where only one step would be required in the process.  In Mr Roberts’ declaration at para 7, the opponent itself had acknowledged that the form or shape of a tear from an eye was commonly described as a “teardrop”, therefore the applicant’s mark was not descriptive of the goods.

On the question of alleged deceptive similarity of the marks, Mr Pappas submitted that the test of comparison was one to be carried out by theoretic considerations, and that evidence of use of the opponent’s mark was not relevant. Having first considered the two marks in light of the criteria set out in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 and Pianotist Co’s Appn (1906) 23 RPC 774, he agreed with Dr Stearne that the marks were not substantially identical.

Concerning deceptive similarity of the marks and applying the established tests, he remarked that the sound of the second part of the marks was very different and that the words had recognizable meanings.  In this connection, he referred to Deeko v Decor 11 IPR 531. Having regard to other considerations in relation to deceptive similarity, he referred to Milton Richard Holmes v Finn Blinds (1987) AIPC 90-454 and Harrods Ltd’s Appn (1935) 52 RPC on common elements in conflicting marks, and to Societe des Produits v Magic (Wholesale) Pet Supplies Pty Ltd 1979 AOJP vol 49 No 29 on ideas conveyed by such marks, concluding that the marks were not deceptively similar.  His contention was reinforced by the fact that the word TEAR or TEARS was a common particular to a number of trade marks in the ophthalmic solution trade which was evidenced in Ms Chrysiliou’s declaration.  Moreover, similar connotations co-existed on the Register, when the meanings of the marks were compared, e.g. POLY TEARS and TEARS PLUS.  There was, therefore, a very fine distinction between marks which included the word TEARS. 

He then emphasized that, given the nature of the goods, the consumers would be extremely careful in choosing the product.  This aspect, he said, was confirmed in the evidence by Mr Abrahams and Ms Chrysiliou  Additionally, as stated by Mr Abrahams, there were financial advantages in obtaining a prescription from a doctor.  Even if the product was purchased from a pharmacist, the consumer would discuss it before the purchase.  In Roussel-Uclaf v Helopharm 27 IPR 657, the hearing officer had considered the unique trade channels through which phamaceuticals reach the consumers, concluding that, as the persons dispensing the products in pharmacies bear the reponsiblity of ensuring that the proper pharmaceutical was supplied, the consumer was the least likely person to be confused or deceived.

Mr Pappas also directed my attention to the packaging of the opponent’s marks containing the tear drop device.  The device, he pointed out, is purple in colour and a trade mark symbol appears only after the words TEARS PLUS, otherwise there was no indication that the opponent was claiming rights in the device.

He concluded by seeking costs for the applicant.

In relation to Mr Pappas’ claim that fresh evidence was introduced by the opponent, Dr Stearne explained that none of the tendered material at the hearing represented evidence, pointing out that the Registrar may refer to a dictionary, or other authority to determine the meaning of a word.  Further, the Registrar was not bound by the rules of evidence, and that he may even take into account grounds of objection not relied upon by the opponent (Miller Ltd v Minister of Housing [1969] RPC 91). The key issue here, he said, was the public interest, as found in Konckier v Amco Wrangler Ltd (1987) AIPC 90-385.

This issue was contested by Mr Pappas who argued that those precedents did not apply to the opponent or the applicant. 

Decision
Is the mark registrable under the provisions of s 24?
Before considering whether the applicant’s mark TEARDROPS offends against the provisions of s 24 of the Act, I will comment on the issue concerning Mr Pappas’ submission that evidence was introduced in the evidence in reply which had not been canvassed in the applicant’s evidence in answer.

In accordance with the provisions of r 45, para (a), the opponent’s evidence in reply must be “in reply to the declarations of the applicant” and should be confined to matter raised in the preceding evidence.  It should not be additional to material already lodged, nor evidence introducing new material - see Legal and General Life of Australia Ltd v Carlton-Jones & Assoc Pty Ltd (1986) AIPC 90-268. However, pursuant to sub-s 50(2), in determining opposition the Registrar may take into account a ground of objection whether relied upon by the opponent or not. Having said that, I must have regard to the fact that the applicant has not had an opportunity to fully scrutinize the matter concerning descriptivenss of the applicant’s mark and to appropriately respond to it, but, as Mr Pappas did present submissions in relation to it at the hearing, I will consider it and give it the weight it deserves, i.e. less than if it had been introduced as evidence in support.
.        
Paragraph (d) of sub-section 24(1) reads:

24(1) A trade mark is registrable in Part A of the Register if it contains or consists of -
...
   (d)      a word not having direct reference to the character or quality of the

goods or services in respect of which registration is sought ...

In the Macquarie Dictionary, supra, “a teardrop” is defined as “a tear”, and “a tear”, inter alia, as “1. a drop of the limpid fluid secreted by the lachrymal gland, appearing in or flowing from the eye, chiefly as the result of emotion, esp. of grief.  2. something resembling or suggesting a tear, as a drop of a liquid or a tear-like mass of a solid substance”.  “Teardrop” is similarly defined in the Webster’s Third New International Dictionary as “1: tear 2: something shaped like a dropping tear”, and in the same dictionary “tear” is listed as “1a: a drop of the clear saline fluid secreted normally in small amount by the lacrimal gland, diffused between the eye and the eyelids to moisten the parts and facilitate their motion, and passed ordinarily through the nasolacrimal duct in the nose; b tears pl: a secretion of profuse tears that overflow the eyelids and dampen the face”. 

As to whether a mark has a direct reference to the character or quality of the  applicant’s goods can be determined by applying the criteria set out in Mark Foy’s v Davies Coop, supra, and Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175.In the former Dixon CJ said at p 195:

“The test must lie in the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess”,

and in the latter, his Honour had explained that “ordinary persons” will vary, depending on the goods in question, so that the question needs to be posed as to how the mark will “be understood by a section of the community following a particular pursuit or possessing special vocational or technical interests,” or whether the public at large alone was to be considered. 

Since the purpose of the applicant’s ophthalmic solutions is to treat the dry eyes syndrome by the replacement of aqueous with artificial tears, i.e. by lubricating the eye, the product being administered by one or two drops at a time in the affected eye or eyes, the persons dealing with the product, such as ophthalmologists, optometrists, pharmacists as well as members of the general public, would expect the drops to increase the volume of fluid between the eyeball and the eyelids in order to wash the eyes.  Even though there may be instances when the lubricating action causes some excess solution to flow out of the eyes forming a tear or tears, such volume would be too minimal to be described as teardrops in the sense of this ordinary and readily understood word.  Teardrops actually fall from a person’s eyes or roll down the cheeks, whereas the ophthalmic preparations whose function is to moisten and wash the eyes, stay in the eyes when administered in the prescribed quantitities.               

In view of the above comments, I do not agree with the opponent’s view that the mark TEARDROPS directly describes the character or quality of the ophthalmic products.  I find therefore that the opponent has not succeeded in relation to this ground of opposition.

Section 33 - substantially identical or deceptively similar
Sub-section 33(1) reads:

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

From the applicant’s evidence, it is clear that the applicant’s ophthalmic solutions or artificial tears, embraced in the wide range of “pharmaceutical preparations” of the present application, bearing the mark TEARDROPS, are the same goods as those of the opponent’s registration No 554534. 

Considered in light of the tests enunciated by Windeyer J in Shell v Esso, supra, whereby the marks in question are to be viewed side by side, noting their similarities and differences, I believe no doubt exists that the marks TEARDROPS and TEARS PLUS are not substantially identical, nor was this matter argued at the hearing. 

Pursuant to sub-section 6(3), a mark is deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.

To determine whether marks are deceptively similar, Dixon and McTiernan JJ have outlined the criteria in Australian Woollen Mills v F S Walton, supra, at p 658:

“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.  The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part.  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.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.”

While it is conceded that the opponent’s mark TEARS PLUS has been used extensively with a device of a large tear drop, that device does not constitute part of the mark registered, nor is it registered separately.  Besides, a tear drop could also be seen by purchasers as merely a graphical illustration of the opponent’s ophthalmic product, namely, eye drops.  For these reasons, I can give it little weight, if any at all, when determining the issue of deceptive similarity between the marks under consideration.

Considering the net impression of the marks, when “one must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering 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” (Clark v Sharp [1989] 15 RPC 141 at p 146), I first note that both marks comprise the same number of letters and are rendered in plural form of the words. At a cursory glance, the most noticeable distinguishing features between the marks are the two words comprising the opponent’s mark and the different terminations of the marks, forming words with a distinct sound and meaning.

The applicant’s evidence indicates that the word TEAR or TEARS is contained in eleven registered trade marks in respect of goods embracing ophthalmic products, in three of the marks appearing at the beginning of those marks.  It is also evident from the applicant’s exhibits KMC2 and KMC3, as listed in MIMS and the Product Guide, both supra, that the word TEARS occurs in six marks, two at the beginning of the marks.  I therefore agree with the applicant’s submissions that TEARS is a common particular in trade marks for such goods.   While, as a general principle, the first syllable or letter of word trade marks is regarded as most important for the purposes of distinguishing the marks - see London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 at 279, where the initial syllable or prefix is common to the trade, i.e. used in trade marks by a number of different proprietors, then greater emphasis is placed on the remaining portions of the marks in order to distinguish them. In Harrods Appn, supra, the Comptroller-General expressed the criterion at p 70:

Now it is well recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trade marks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those other features.  This principle, however, clearly requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the markets in which the marks under consideration are being or will be used.”

The distinguishing elements between the marks then lie in the words PLUS and DROPS, which, being English words with a well-known different meanings, are less likely to be confused with one another than invented words (see McDowell’s Appn [1927] 44 RPC 335). Considering the marks in their entirety, as I must, the marks TEARS PLUS and TEARDROPS neither look alike nor do they sound similar. The marks may, however, convey a similar idea to a considerable number of consumers in that the former mark suggests the idea of many tears and the latter describes tears. This in itself would not be sufficient to create a deceptive resemblance between the marks if a prefix already appears in other trade marks for the same goods and the purchasers of those goods are unlikely to select the goods in a hurry (Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] 86 CLR 536). Even though the applicant’s and the opponent’ eye drops are available over the counter in pharmacies, I believe the consumers of such goods would take extreme care in ensuring they obtain the right product, given its application involves the vital and sensitive organ of the eyes. In selecting the eye drops without a prescription, the purchaser would usually consult a pharmacist or a person in the pharmacy able to provide advice on the nature and use of the product, or would carefully inspect the labels of the respective product before purchasing it. Consequently, in my opinion, imperfect recollection of the words comprising the marks does not play as important role in the present instance as submitted by the opponent’s representative, notwithstanding the inclusion of the drop device in the opponent’s mark.

Given these findings, the opponent has not established a case for deception or confusion of its mark with the mark of the present application. 

Conclusion
I have found that the opposition has neither been made out in terms of section 24 nor in terms of section 33.  In the event of no appeal against my decision, I direct that this application proceed to registration.

In accordance with the usual practice, costs should follow the event.  I therefore award costs to the applicant.

Vija Zars
Acting Hearing Officer
12th January 1996