Click Therapeutics Inc

[2022] ATMO 130

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2096214 (classes 9, 10 & 42) – CT (figurative) - in the name of Click Therapeutics, Inc.

Delegate:

Tracey Berger

Representation:

Applicant: Clare Liang of Gestalt Pty Ltd

Decision:

2022 ATMO 130

Trade Marks Act 1995 (Cth) – ex parte - section 44 – ground for rejection not established – application accepted for registration

Background

1.    This is a decision on examination of trade mark application number 2096214 (‘Application’) filed by Click Therapeutics, Inc (‘Applicant’).  The Application was filed on 16 June 2020 (‘Relevant Date’) for the trade mark below and covering the following goods and services at the time of this decision:

(‘Trade Mark’)

Class 9: Downloadable computer software for treating, targeting, and monitoring human health conditions, behaviors, and disease; downloadable computer software for collecting biometric data from patients

Class 10: Medical devices for treating, targeting, and monitoring human health conditions, behaviors, and disease; medical devices for collecting biometric data from patients

Class 42: Creating, designing, developing, and hosting a web site featuring temporary use of non-downloadable software for use in targeting, and monitoring human health conditions, behaviors, and disease; software development in the field of healthcare; software as a service (SAAS) services featuring software for monitoring, reporting on, and analyzing the use of pharmaceuticals, and nutritional supplements; providing temporary use of non-downloadable software applications for patient behavior and symptom tracking

(‘Goods and Services’)

2. The trade mark was examined as required by the Trade Marks Act 1995 (Cth).[1]  The examiner raised grounds for rejection under s 44 on the basis that the Trade Mark was substantially identical with or deceptively similar to various earlier marks containing either CT or TC covering the same or similar goods and services to those claimed by the Applicant.  During examination, the Applicant filed a number of submissions and succeeded in a partial removal application against one of the cited marks and two of the cited marks were removed from the Register for non-renewal.  In the Examiner’s 5th report, this left grounds for rejection under s 44 in respect of trade mark numbers 1336893, 1379295, 1597501, 1869809 and 1909588.  

[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (the ‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).

3.    The Applicant requested a hearing by way of written submissions in relation to the outstanding conflicting marks.  Clare Liang of Gestalt Law Pty Ltd filed written submissions on behalf of the Applicant on 30 June 2022 (‘Written Submissions’).  This matter has been allocated to me, a delegate of the Registrar, for decision.

4.    No evidence of prior use or honest concurrent use was filed in support of the Application. Accordingly, I have formed my decision based on the correspondence on file and Written Submissions.

5.    The Application is subject to a presumption of registrability under s 33. As such, if I am not satisfied on the balance of probabilities that a ground for rejection exists, I must accept the Application. I must also consider afresh the grounds for rejection under s 44 maintained by the examiner and I am not bound by the examiner’s findings. While I may consider reasoning provided by the examiner in support of the objections, ultimately I must make a decision based on my interpretation of the facts and law.

Discussion

6.    Section 44 relevantly provides:

44  Identical etc. trade marks

(1)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)  a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:       For deceptively similar see section 10.

Note 2:       For similar goods see subsection 14(1).

Note 3:       For priority date see section 12.

Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)  it is substantially identical with, or deceptively similar to:

(i)  a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)  a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

7.    Details of the registrations forming the basis of the outstanding objections are set out below:

8.    Trade Mark Number	Trade Mark	Registered Owner	Goods/Services
1336893	C.T. Asphina	Carl Zeiss Meditec AG	Class 10: Intra-ocular lenses as surgical implants
1597501	CT NOVA	Carl Zeiss Meditec AG	Class 10: Intraocular lenses
1379295	TC-PLUS	Smith & Nephew Orthopaedics AG	Class 10: Artificial knee implants; surgical  instruments and apparatus for the implantation of artificial knees
1869809	SenTec AG	Class 9:  Scientific, optical, measuring, signaling and checking apparatus and instruments; optical sensors; measuring apparatus, particularly sensors, other than for medical use; sensors (measuring apparatus); all the aforesaid goods for measuring oxygen and/or carbon dioxide concentration Class 10: Medical sensors and measuring apparatus as well as parts thereof; sensors for medical use; all the aforesaid goods for measuring oxygen, carbon dioxide and/or other vital parameters in blood, skin or tissue Class 41: Courses, seminars and training for further education in the field of measuring technology and diagnostics
1909588	SenTec AG	Class 9: Scientific, measuring, signaling and verification apparatus and instruments; optical sensors; measuring apparatus, particularly sensors, other than for medical use; sensors (measuring apparatus) for measuring the concentration of oxygen and/or carbon dioxide Class 10: Medical measuring apparatus and sensors as well as parts thereof; sensors for medical use, particularly for measuring oxygen, carbon dioxide and/or other vital parameters in blood, skin or tissue Class 41: Courses, seminars and training courses for continuing education, particularly in the field of measurement technology and diagnostics

(‘Remaining Cited Marks’)

8.    Each of the Remaining Cited Marks has a priority date earlier than the Relevant Date of the Application.  Hence, I turn to the question of whether the Trade Mark is substantially identical with or deceptively similar to any of the Remaining Cited Marks.

Substantially Identical

9.    The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

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 features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[2]

[2] [1963] HCA 66, [12] (Windeyer J) (‘Shell’).

10.   It is quite clear on a side by side comparison of the Trade Mark with each of the Remaining Cited Marks that the differences are such that there is not a total impression of similarity as each of the Remaining Cited Marks contain elements additional to the letters “CT” or “TC”.  The Trade Mark is not substantially identical to any of the Remaining Cited Marks.

Deceptive Similarity

11.   Section 10 provides that” 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”.

12.   The test for deceptive similarity requires an assessment of “the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark]”.[3]

[3] [1963] HCA 66, [13].

13.   As noted by Parker J in Pianotist Co’s Application,[4] when considering the deceptive similarity of two marks:

“You must take the two words.  You must judge of them, both by their look and by their sound.  You must consider the goods to which they are to be applied.  You must consider the nature and kind of customer who would be likely to buy those goods.  In fact, you must consider all the surrounding circumstances, and you must consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks”.

[4] Re Pianotist Co Ltd (1906) 23 RPC 774.

14.   It is necessary to consider the respective trade marks as a whole and not dissect one or both marks into constituent parts.  The presence of a common element is not conclusive to a finding of deceptive similarity.  In my view, the registrations for the Remaining Cited Marks do not confer a monopoly in the letters CT or TC solus such that a mark consisting of the letters TC or CT in stylised form cannot be registered.

15.   The impression created by the Trade Mark and each of the Remaining Cited Marks is distinct.  The Applicant argues that the Trade Mark is a figurative mark comprised of a stylised combination of the letters ‘C’ and ‘T’ configured in such a way as to resemble the left and right buttons of a computer mouse, as well as a chain link and T-bar clasp.  The Applicant argues that the letters will not be immediately apparent to consumers nor is it obvious whether the combination is ‘CT’ or ‘TC’.  I am not entirely convinced that consumers would not recognize the letters ‘C’ and “T’ in the Trade Mark but I do agree that the impression created by the Trade Mark is not simply the letters CT or TC.  The Trade Mark is highly fanciful and creates an impression beyond the plain letters CT or TC.  The Remaining Cited Marks each create a differing impression by virtue of the extra elements of those marks.  Each of these other elements is equally, if not more, prominent. 

16.   The additional elements in each of the Remaining Cited Marks also results in these marks being visually and aurally distinct from the Trade Mark.  Although the additional word elements in each of the Remaining Cited Marks has a varying level of distinctiveness, the presence of the additional elements will not be overlooked.  Even taking into consideration the doctrine of imperfect recollection, I do not believe that consumers would fail to recall that the Trade Mark is a highly stylised monogram or device mark as compared to the cited marks which are comprised of the plain letters CT or TC in combination with another word.

17.   Further, the Goods of each of the Remaining Cited Marks and the Goods and Services of the Applicant are directed to the medical field.  Accordingly, the relevant consumers of the Goods and Services and those of the goods for which Remaining Cited Marks are registered are likely to be sophisticated purchasers who are not likely to be confused between the Trade Mark and the Remaining Cited Marks particularly given that 2 letters often have a meaning in the medical field.  In this regard, the Applicant provided evidence in the Applicant’s response to the Examiner’s 4^th examination report that ‘CT’ means “centre thickness” in relation to lenses for the eyes.  Similarly, the Applicant submits that the letters ‘TC’ in cited registration numbers 1869809 and 1909588 are an acronym for ‘transcutaneous’ as evidenced by the registered owner’s Technical Manual available on its website.[5]

[5] Applicant’s response of 29 March 2022 to Examiner’s 4^th report.

18.   In all the circumstances, I am satisfied that there is no real tangible danger of confusion between the Trade Mark and each of the Remaining Cited Marks. 

19.   I am satisfied that the Trade Mark is not deceptively similar to any of the Remaining Cited Marks. I withdraw the grounds for rejection of the Trade Mark based on the Remaining Cited Marks.

Decision

20.   I am not satisfied that there are grounds for rejecting the Trade Mark.  Trade Mark application number 2096214 should be accepted for registration.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

5 August 2022