CSL Behring LLC v Chiron Behring Vaccines Pvt. Ltd
[2024] ATMO 229
•26 November 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by CSL Behring LLC to registration of trade mark applications 2150962 (5, 35, 42) – CHIRON BEHRING (Figurative) and 2151277 (5, 35, 42) – CHIRON BEHRING – in the name of Chiron Behring Vaccines Pvt. Ltd.
Delegate:
Nicholas Smith
Representation:
Opponent: Gabriella Rubagotti, Counsel, instructed by Baker & McKenzie
Applicant: Tahlia Dimech of Kings Patent & Trade Marks Attorneys Pty Ltd
Decision:
2024 ATMO 229
Trade Marks Act 1995 (Cth) - section 52 opposition: ss 44 established in respect of a subset of the goods and services – not appropriate to offer an amendment – registration refused
Background
This decision concerns oppositions brought by CSL Behring LLC (‘Opponent’) to the registration of the trade marks (collectively ‘Trade Mark(s)’) which are the subject of the applications detailed below in the name of Chiron Behring Vaccines Pvt. Ltd. (‘Applicant’):
Application Number:
2150962
Filing Date[1]:
22 Jan 2021
Goods and Services:
Class 5: vaccine formulations; Pharmaceutical vaccination preparations
Class 35: business management; business administration; office functions
Class 45: Scientific and technological services; research and development services; all of the aforesaid related to vaccines(‘Applicant’s Goods and Services’)
Trade Mark:
Endorsement:
Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
[1] Also known in this decision as the ‘relevant date(s)’. As the relevant dates for each of the Trade Marks are 4 days apart, nothing turns on the difference the filing date of each of the marks.
Application Number:
2151277
Filing Date[2]:
26 Jan 2021
Goods and Services:
Applicant’s Goods and Services
Trade Mark:
CHIRON BEHRING
Endorsement:
Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
[2] Also known in this decision as the ‘relevant date(s)’. As the relevant dates for each of the Trade Marks are 4 days apart, nothing turns on the difference in the filing date of each of the marks.
Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Following the advertisement of the applications’ acceptance for possible registration, the Opponent filed Notices of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (subsequently amended) (‘SGP’) on 11 May 2022[3]. The SGP (as amended) raised grounds of opposition under ss 42(b), 44[4], 60, 62 and 62A. The Applicant filed Notices of Intention to Defend on 4 July 2022.
[3] Technically the Opponent has filed separate SGPs for each of the Trade Marks, however the SGPs are identical and thus can be referred to in the singular for the purposes of the decision.
[4] As the Opponent relied on four registered trade marks and one protected international trade mark application as the basis of this ground of opposition, the technical ground of opposition is under both s 44 of the Act and reg 4.15A of the Regulations rather than just s 44 of the Act. However, as the terms are substantively identical for all relevant purposes and for ease of reading, I have retained the reference to s 44 in this decision. References to s 44 as considered in the present decision should be taken to read to s 44 and reg 4.15A and the Behring Mark (as defined later in the decision) should be recognised as a protected international trade mark application.
Evidence
The parties filed the following evidence in this matter:
Declarant and Position
Date
Annexures or Exhibits
Evidence in support
Frank Schöno-de la Nuez, Legal Counsel Trademarks at CSL Behring Beteiligungs- und Verwaltungs GmbH & Co. KG, (‘Schöno-de la Nuez declaration’)
3 April 2023
FSN-1 to FSN -26 and confidential exhibits 1 to 6
Aparna Watal, solicitor with Baker McKenzie (‘Watal declaration’)
5 April 2023
AW-1 to AW-4
Evidence in answer
Sai D. Prasad, Director of the Applicant (‘Prasad declaration’)
7 July 2023
SP-1 to SP-9
Evidence in reply
Shraddha Kamdar, Principal Associate, In-Licensing Regulatory Affairs, at Seqirus Pty Ltd (‘Kamdar declaration’)
13 September 2023
1 to 11
The entirety of the evidence filed by the Applicant, and the entire Schöno-de la Nuez declaration (excluding annexures), including publicly available information such as the public use of the Trade Marks and the Opponent’s Trade Marks or the contents of national trade mark registries, is claimed to be confidential. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit solely in respect of the opponent in that case) stated:
The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.
This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[5]
[5] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).
I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity, and to the credit of the Opponent, it has carefully identified confidential annexures to the Schöno-de la Nuez declaration notwithstanding its broad and incorrect claim of confidentiality in the declaration itself. If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.
Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing. On 14 December 2023 the Opponent requested an oral hearing. The matter was set down for a hearing by video-conference on 15 October 2024 and the matter was allocated to me. In line with usual practice, a notice was sent to the parties on 8 August 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Opponent filed written submissions on 30 September 2024 (‘Opponent’s Submissions’). The Applicant filed written submissions on 8 October 2024 (‘Applicant’s Submissions’). At the hearing Gabriella Rubagotti of Counsel represented the Opponent instructed by Elizabeth White of Baker & Mckenzie and Tahlia Dimech represented the Applicant instructed by Jonathan Stretton Lewis of Kings Patent & Trade Marks Attorneys Pty Ltd, all appearing by video conference.
I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)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.
In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.
The Opponent
The Opponent is part of a broader group of companies owned by CSL Limited which is a multinational biotechnology company. When referring to the activities of the companies that are part of the broader group, I use the term CSL. The Opponent holds much of the intellectual property used by CSL.
The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’). The goods and services for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods and Services’.
Number
Trade Mark
Priority Date
Goods or Services
403856
17 Feb 1984
Class 9: Medico-scientific laboratory equipment and instruments as measuring, control and analytical equipment and instruments
403857
17 Feb 1984
Class 5: Pharmaceutical and veterinary products, in vivo diagnostic agents and reagents
4038568
17 Feb 1984
Class 1: Chemical products for scientific purposes
11. 1010776
BEHRING
(“BEHRING Mark”)
28 Nov 2003
Class 5: Pharmaceutical and veterinary preparations, sanitary preparations for medical purposes; diagnostic preparations and reagents for medical and veterinary purposes
Class 10: Diagnostic apparatus for medical and veterinary purposes
2036139
CSL BEHRING
(“CSL BEHRING Mark”)
10 Sept 2019
Class 5: Pharmaceutical preparations and substances; blood plasma; blood products in this class for medical purposes; products derived from blood and products derived from recombinant DNA technology for medical purposes; vaccines; serums; antibodies; monoclonal antibodies; reagent red blood cells; medical test kits in this class; medical diagnostic products in this class
Class 9: Computer software; application software; downloadable software applications; computer software and programs; electronic or recorded multimedia publications; publications sold in an electronic format and publications distributed on line; electronic audio visual teaching materials; printed publications in electronically readable or downloadable form; educational materials in the form of computer software and programs, including applications for use on mobile devices; educational materials in the form of pre-recorded media including discs, dvds, compact discs, flash drives
Class 10: Surgical and medical apparatus and instruments; implantable medical devices; medical analysis apparatus and instruments in this class; medical apparatus and instruments in this class; medical test kits in this class
Class 16: Printed matter and publications; instructional and teaching material; brochures, pamphlets, flyers, posters; all of the above relating to pharmaceutical preparations and substances, blood products, products derived from blood, products derived from recombinant DNA technology, plasma therapeutics, vaccines, adjuvants, excipients, immunomodulators, recombinant proteins, antivenoms, diseases including immuno-deficiency diseases, patient support programs and medical research and development
Class 35: Advertising; marketing and promotion services; marketing, promotional and advertising services in this class related to the manufacture, marketing and distribution (not being transport) of pharmaceutical products and medical products and supplies; retail and wholesale services including retail and wholesale services for pharmaceutical products and medical products and supplies, veterinary and sanitary preparations and medical supplies; design of marketing material; marketing advisory services; planning of marketing strategies; preparation of marketing plans; provision of information relating to advertising, marketing, and promotion services; provision of information relating to wholesale and retail services
Class 40: Treatment of materials; treatment of biological products including custom manufacturing and fractionation of blood not for medical purposes; production of reagents and ancillary products for immunohaematology laboratories; processing of human blood plasma, namely, removing whole blood and separating red blood cells from plasma not for medical purposes; treatment of human blood and plasma; fractionation of human blood and plasma not for medical purposes; manufacturing of human blood and plasma
Class 41: Education services including medical education services; health education; consultancy services relating to education; provision of education services via an online forum; provision of training and education courses; publication of educational materials; dissemination of educational material; weblog (blog) services; electronic publication of information on a wide range of topics, including online and over a global computer network; publications provided online; electronic publications provided on line, from the internet or from any other communication network
Class 42: Scientific and technological services; research and development services, including scientific, medical, pharmaceutical and blood products research and development services; industrial analysis; clinical trials; conducting clinical trials; provision of testing facilities; rental of research facilities; laboratory analysis and research; management of scientific research projects; preparation of technical studies, technical reports, scientific reports; management of scientific research projects, preparation of scientific and medical research projects, preparation of statistics or reports relating to scientific and medical research; provision of research services and facilities, provision of research results, information and outcomes; provision of information relating to the aforementioned services; advisory and consultancy services relating to the aforementioned services; dissemination of information relating to the aforementioned services over a global computer network; medical laboratory services, namely, scientific testing and screening services, namely, testing of human blood plasma for safety and quality; medical laboratory services regarding human blood plasma
Class 44: Medical services; medical information services; health care services; health care information services; medical diagnostic services; patient support services (medical, nursing, psychological, physiotherapy, occupational therapy and speech pathology services); medical, pharmaceutical and blood products advice and consultancy services; medical advisory services; information services concerning pharmaceuticals, medical products and blood products; dissemination of information regarding the aforementioned services over a global computer network; blood bank services; operating blood and plasma collection centres; medical services; medical testing and screening services; medical testing of human blood plasma; collection, processing and testing of human blood and plasma; treatment of biological products including custom manufacturing and fractionation of blood for medical purposes; processing of human blood plasma, namely, removing whole blood and separating red blood cells from plasma for medical purposes; fractionation of human blood and plasma for medical purposes
The Opponent’s EIS consists of a series of declarations that collectively amount to over 1000 pages of material. On 8 February 2023, prior to the filing of the EIS, this office issued a direction to the Opponent as follows: ‘If more than 50 pages of evidence are submitted by a party, a summary of the evidence, referring back to the grounds set out in the filed Statement of Grounds and Particulars and the relevant page number within the documents filed, must be provided with the party’s written summary of submissions to be relied on at the hearing.’ The Opponent has not complied with this direction.[6]
[6] When I raised this issue with Counsel for the Opponent at the oral hearing, she acknowledged that the direction had not been complied with. Subsequently, the Opponent did file the document on 17 October 2024 however this does not change the fact that this direction was not complied with at the time it was required, prior to the hearing, accompanying the written submissions filed by the Opponent.
The relevant claims/statements in the Schöno-de la Nuez declaration can be summarised as follows:
· CSL is a global biotechnology business with operations over 40 countries and 30,000 employees worldwide. Its CSL Behring division provides biotechnology and plasma derived products to treat a range of medical conditions. The Behring brand traces its roots from the German medical researcher Emil Von Behring, who founded an eponymous company that, following a number of corporate transactions, was acquired by CSL in 2004 from Hoechst GmbH formally known as Hoechst AG and has traded under the CSL Behring name since 2006.
· The Opponent, CSL and their predecessors in title have used a series of marks containing the BEHRING name since the early 2000s to promote the Opponent’s Goods and Services. The Opponent has also promoted the CSL BEHRING Mark, BEHRING Mark and other marks containing the BEHRING name through a series of sponsorships, awards, grants, scholarships and donations as well as on its website, social media, product specific websites and on the name of products (and their collateral) sold by the Opponent and CSL. The annual revenue of the Opponent in FY21 was over US$8 billion and the sales in Australia of the Opponent’s products is highly significant.
The annexures to the Schöno-de la Nuez declaration display various marketing material that use the CSL BEHRING Mark and BEHRING Mark. The evidence of sales by the Opponent in Australia under the Opponent’s Trade Marks, as well as visitors from Australia to its websites is considerable.
The Watal declaration attaches copies of the results of a Freedom of Information Request into the records maintained by IP Australia of the applications to register the Trade Marks. This includes material provided by the Applicant in support of the application to allow acceptance under s 44(3)(b) (discussed later in these reasons) and the records of IP Australia in considering this material. The Watal declaration also annexes screenshots from the Australian Register of Therapeutic Goods. It also attaches searches of the Register of Trade Marks indicating a number of marks registered for the word CHIRON.
The relevant claims/statements in the Kamdar declaration can be summarised as follows:
· The declarant has conducted searches on the Australian Register of Therapeutic Goods and identified an entry for the Rabipur vaccine sponsored by CSL, not the Applicant, and was not able to find any entry for CHIRORAB. The declarant states that it is unlawful to import and supply a vaccine in Australia unless it is entered on the Australian Register of Therapeutic Goods or an exemption applies or an approval has been obtained from the Therapeutic Goods Administration and the declarant is unaware of any such exemption or approval.
· The declarant has conducted searches of the Australian Immunisation Handbook and has identified no vaccines sponsored by the Applicant.
· The declarant annexes images of the packaging of the Rabipur vaccine. The declarant gives evidence that the images of the packaging of the Rabipur vaccine that bear the Trade Marks (provided in the EIA) display packaging that complies with Indian pharmaceutical standards, which are not recognised in Australia, and hence the images depicted are for supply in India rather than Australia. In addition, the packaging of the Rabipur vaccine for sale in Australia do not bear the Trade Marks, rather they bear the trade mark of a third party on its face unrelated to the Applicant.
The Applicant
The Applicant an Indian vaccine company, incorporated in 1997, formed following a joint venture between Chiron Corporation and Hoechst Marion Roussel Limited[7].
[7] The Prasad declaration refers to a connection between the Applicant and Hoechst AG, however that is contradicted by some of the material in Exhibit SP-2 of the Prasad declaration which refers to Hoechst Marion Roussel Limited as the corporate parent. This is also contradicted by the submissions made by the Applicant’s representative to the examiner and the material provided to the examiner, in particular Exhibit CP-4 to the declaration of Clinton Priddle dated 26 September 2021 (and annexed to the EIS).
The relevant claims/statements in the Prasad declaration can be summarised as follows:
· The Applicant employs approximately 250 people and has a turnover of $36.5 million. The Applicant is a WHO prequalified manufacturer of rabies vaccine and is the largest manufacturer of rabies vaccines in the world. It has used the Trade Marks globally since 1997. Its rabies vaccine was previously marketed in Australia and globally under the name RABIPUR and now under the name CHIRORAB.
The annexures to the Prasad declaration display packaging that uses the Trade Marks, as well as marketing material from the Applicant’s website and social media promoting its products under the Trade Marks. The Prasad declaration does not provide any evidence of sales figures in Australia, marketing material targeted at Australia, or material verifying that the Applicant’s rabies vaccine is authorised to be offered in Australia.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60, 62 and 62A. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established the ground of opposition pursuant to s 44. Consequently, it is unnecessary that I consider the remaining grounds of opposition.
The onus of proof in an opposition rests upon the Opponent.[8] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[9] The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[10]
[8] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[9] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) (‘Southern Cross’), see also s 29(1) of the Act.
While noting the statement in paragraph 21 regarding the burden of proof, there is an aspect of the Applicant’s Submissions that I wish to comment on. The decision made as a delegate of the Registrar in an opposition proceeding is made independent of the decision of the examiner and it is not a review of the examiner’s decision but a fresh consideration of the grounds of opposition. In considering the s 44 ground, the burden is on the Opponent with respect to
ss 44(1) and (2). However, ss 44(3) and (4) only apply ‘if the Registrar… is satisfied’. As the material that would satisfy the Registrar of the existence of honest concurrent use, other circumstances or prior use is usually within the possession of the Applicant, the Applicant bears the burden of providing evidence to satisfy the Registrar that these provisions should be applied. It is not sufficient, as stated in the Applicant’s Submissions, to state that the examiner has applied s 44(3)(b) of the Act to allow the acceptance of the Trade Marks, notwithstanding the presence of earlier marks (including the CSL BEHRING and BEHRING marks) and then submit that the Opponent must establish that s 44(3)(b) does not apply; rather s 44(3)(b) can only apply in the event that the Delegate is satisfied on the evidence before it that it is appropriate to apply this subsection.Prior to considering the grounds of opposition I also want to set out two conclusions I have reached on the evidence before me. On the evidence before me I am not satisfied that the Applicant has used the Trade Marks in Australia and I am not satisfied that the parties have a shared corporate history.
The Applicant asserts in its evidence and submissions that it has used its Trade Marks globally and in Australia since 1997. In support of this it points to material available on its website and social media. The principles regarding use of a trade mark on a website accessible in Australia are set out in Ward Group Pty Ltd v Brodie & Stone Plc, where Merkel J held:
…use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded.[11]
and Redbubble Ltd v Hells Angels Motorcycle Corporation (Australia) Pty Limited where the Full Court held:
More recently, the Full Court (comprised of Yates, Stewart and Rofe JJ) in Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44; 170 IPR 281 (‘Energy Beverages’) dealt with a case where a commercial using a trade mark was available on Facebook and YouTube. It declined to infer that the commercial had been viewed in Australia during the non-use period merely because an emoji and a comment had been posted to those pages. The Court at [76] cited Ward and Christian for the proposition that ‘[u]nder existing authority, which has not been challenged in the present application, the mere uploading of trade mark content on a website outside Australia is not sufficient to constitute use of the trade mark in Australia.[12]
[11] [2005] FCA 471, [43].
[12] [2024] FCAFC 15, [59] (Perram, Nicholas, Burley, Rofe and Downes JJ).
The Opponent has provided detailed and uncontested evidence to the effect that the Applicant’s rabies vaccine has never been approved, and hence never been sold or offered for sale in Australia, and the packaging used by the Applicant to assert use in Australia does not comply with Australian regulatory obligations and hence does not demonstrate use of the Trade Marks in Australia. As such I am not satisfied that the material on the Applicant’s website and social media is directed or targeted at Australia in any way; and there are no submissions from the Applicant to this effect. In the absence of any evidence from the Applicant showing actual sales of its products in Australia or any other evidence establishing use in Australia, I accept the Opponent’s evidence and submissions on this point and conclude that the Applicant has not established evidence of use of the Trade Marks in Australia.
The other significant question is whether the parties have a shared corporate history. The Opponent provides detailed evidence in the EIS about its corporate history, and in particular that it acquired rights to the BEHRING name and mark (including rights to the Behring Mark) from an entity known as Hoechst GmbH formally known as Hoechst AG. While the Applicant has made various assertions of a shared corporate history in its submissions, its evidence is simply insufficient to support this claim.
The Applicant’s evidence filed before the examiner states that the Applicant was formed by a joint venture of Chiron Corporation and Hoechst Marion Roussel Limited. There is no evidence before me of any connection between Hoechst Marion Roussel Limited and Hoechst GmbH formally known as Hoechst AG.
Confusingly and in contradiction to the previous evidence, the Prasad declaration then asserts that the Applicant was formed by a joint venture between Hoechst AG and Chiron Corporation. No corporate documentation is provided to support this, instead the Applicant relies on a selection of media articles, some of which refer to Hoechst Marion Roussell being the corporate parent and some of which refer to Hoechst AG. The declaration does not explain these contradictions. Finally, extracted at SP-5 of the Prasad declaration are publicity materials produced by the Applicant, which provide the corporate history of the Applicant. They refer to the history of the Applicant as involving Hoechst Marion Roussell and Hoechst India Limited and do not make any reference to Hoechst GmbH formally known as Hoechst AG. Given the various contradictions in the Applicant’s evidence, and the fact that the closest thing to a clear corporate document provided by the Applicant refers to the Applicant’s parent being Hoechst Marion Roussell (and the absence of any connection between Hoechst Marion Roussell and Hoechst AG), the evidence before me does not satisfy me that the parties have a common corporate parent or common corporate history.
Discussion
Section 44
The relevant provisions of s 44 are reproduced below:
Section 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)it 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).
(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.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
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. …
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
Section 10 - Definition of deceptively similar
For the purposes of this Act, 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.
To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1) and/or (2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered[13] by a person other than the Applicant:
· has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);
· is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and
· is in respect of similar goods/services, and/or goods/services which are closely related to, the Applicant’s Goods and Services (‘the third requirement’).
[13] or an international registration designating Australia protected or sought to be protected
In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, there are other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.
The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks. Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Mark.[14] The Applicant has conceded in paragraph 48 of the Applicant’s Submissions that the BEHRING Mark is registered for similar goods as the Applicant’s Class 5 Goods and closely related goods as the Applicant’s Class 42 Services, and the CSL BEHRING Mark is registered for similar goods and services as the Applicant’s Class 5 and 42 Goods and Services. I accept this concession and note specifically that the entities providing pharmaceutical preparations in class 5 are often the same entities providing research services in connection with these pharmaceutical preparations in class 42. To put it another way, consumers seeing a mark used on pharmaceutical products and on research services for pharmaceutical products (such as vaccines) would assume the goods and services were provided by the same entity. The third requirement is satisfied for the Class 5 Goods and Class 42 Services.
Substantially identical and/or deceptively similar
[14] The Applicant, in its oral submissions, briefly raised the question of whether the Opponent was the proper owner of the BEHRING Mark on the basis of its registration being in breach of the Opponent’s licence with Hoechst AG. In circumstances where there is a valid registration of the BEHRING Mark on the Register and no application has been made to revoke the registration, I do not accept the Applicant’s submissions on this point.
I will now consider whether the Trade Marks are substantially identical to the Opponent’s Trade Marks. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:
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 features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[15]
[15] [1963] HCA 66, [12].
The Trade Marks and the Opponent’s Trade Marks are set out below:
Trade Marks
Opponent’s Trade Marks
BEHRING
CHIRON BEHRING
CSL BEHRING
On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of each of the Opponent’s Trade Marks and the Applicant’s Trade Marks. Indeed the only common element is the shared use of the word ‘Behring’. I move then to consider whether the Trade Marks and Opponent’s Trade Marks are deceptively similar.
The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell:
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 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].[16]
[16] Ibid [13].
The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[17] conveniently stated the relevant principles, which was summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[18] as follows:
[17] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[18] [2023] FCA 482, [55] (Jackman J).
(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[19]
[19] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).
(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[20]
[20] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
(c)the marks should not be compared side by side;[21]
(d)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 (or services), then similarities both of sound and of meaning may play an important part;[22]
(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[23]
(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[24]
(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[25]
(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [26]
(i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[27]
(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[28]
(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[29] and
(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[30]
[21] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
[22] Ibid.
[23] Ibid.
[24] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [70], [77]-[80] (Yates, Abraham and Rofe JJ).
[25] Shell, [12].
[26] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).
[27] Campomar Sociedad Limitada v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[28] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross, 594-595.
[29] Australian Woollen Mills Ltd, 658.
[30] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) (‘Hastag Burgers’) citing Australian Woollen Mills, 657.
Furthermore the Court, in the same case, noted the following[31]:
In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[32]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[33], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[34]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[35]
[31] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[32] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (emphasis added) (Gummow J), approved in Henschke (2000) 52 IPR 42, 62 [44] (Ryan, Branson and Lehane JJ), Hashtag Burgers, [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598, [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42, [73].
[33] Act, s 68.
[34] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549, 589.
[35] Swancom (2022) 168 IPR 42, 59 [89]. See also Henschke (2000) 52 IPR 42, 62 [44].
As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent’s Trade Mark is not a relevant factor.[36]
[36] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
Justice French expressed the view in Registrar of Trade Marks v Woolworths Ltd[37] (‘Woolworths’) that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter that, ‘[t] he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[38]
[37] Woolworths, [39].
[38] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).
In the present case, noting the stylisation of Trade Mark no. 2150962 is de minimus, I find that each of the Trade Marks wholly incorporates the BEHRING Mark. Such marks are often deceptively similar such as the marks MY MELODY DREAMS and MY MELODY[39] however in some cases, a trade mark conveys an overall conceptual meaning sufficiently different from another trade mark which is contained within it, such that the trade marks are not deceptively similar. This was found to be the case in, for example, REBELLION vs SOUL REBELLION[40] and JOCKEY vs THROTTLE JOCKEY.[41] In the present case I consider the BEHRING element in the Trade Marks is a distinctive and memorable feature in the marks. The addition of the CHIRON element, while it does have some impact on the visual and aural impression provided by the mark does not result in a mark that is conceptually distinct from the BEHRING Mark; rather consumers viewing the Trade Marks are likely to consider it as either a brand expansion or sub-brand of the BEHRING Mark or a combination of two marks, being CHIRON and BEHRING. While I acknowledge that the market in question for the Class 5 and 42 goods and services is likely to be more sophisticated than the market for (say) consumer goods (especially noting that the Class 5 goods are likely to be products provided by medical professionals), I am satisfied on the balance of probabilities that there is a real likelihood that some people, viewing the Applicant’s vaccines and vaccine research services bearing the Trade Marks, would entertain a reasonable doubt as to whether the additional CHIRON element simply referred to a product range offered under the BEHRING Mark and hence came from the same source as the products offered under the BEHRING Mark. While the addition of the CHIRON element creates some visual and aural difference this is not a case, such as REBELLION vs SOUL REBELLION[42] and JOCKEY vs THROTTLE JOCKEY[43] where the additional elements result in a different conceptual meaning.
[39] Eau De Cologne’s Application (1990) 17 IPR 540 (Hearing Officer Thompson).
[40] Kingsley v Scott [2011] ATMO 20 (‘Kingsley’).
[41] Jockey International Inc v Wilkinson [2010] ATMO 22 (‘Jockey’).
[42] Kingsley.
[43] Jockey.
I find that the Trade Marks are deceptively similar to the Opponent’s BEHRING Mark and the requirements under s 44(1) and (2) are satisfied. It is then necessary to consider the application of s 44 (3) and (4). The requirements under ss 44(3)(a) and 44(4) are dependent on a finding that the Trade Marks have been used in Australia and I refer to my conclusion in paragraphs 23 to 25 above that I am not satisfied that this has occurred. As such these provisions do not apply in this matter. I consider the operation of s 44(3)(b) below.
Other Circumstances
Section 44(3)(b) permits registration where ‘because of other circumstances, it is proper to do so’. This involves ‘an exercise of discretion in the circumstances as they exist at the time the discretion is exercised rather than as at the priority date of the application’.[44]
[44] Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [83].
The Trade Marks were accepted for registration in the face of the Opponent’s Trade Marks on the basis of ‘other circumstances’ justifying acceptance under s 44(3)(b). On 28 October 2021 this office issued an Adverse Examination Further Report in respect of both of the Trade Marks in which it stated that:
with regards to considering Other Circumstances based on corporate history with the cited marks, the information provided is not sufficient for the provisions of Section 44(3)(b) to be applied. It is common for large companies to routinely split various branches apart, and whilst there may be a common history, this is not sufficient to establish the current commercial relationships between the companies.
There is then a record of communication between the parties in which the Applicant agreed to amend the Applicant’s Goods and Services and the Trade Marks proceeded to registration. The evidence summary sheet provided by this office stated:
The applicant’s current ownership is derived from entities related to the owners of the cited trade mark. The varied ownership is the result of various parts of a business being sold to different parties. The historical ownership of the various entities is provided in the applicant’s submission. To allow acceptance the applicant has agreed to restrict to services related to those provided in relation to vaccines.
Various case law precedent which supports acceptance where the rights are derived from the same corporate source:
[case law provided]
It is unclear to me why the amendment of the Applicant’s Goods and Services prompted the change in the position taken by the examiner on the application of s 44(3)(b). The Applicant does not provide written submission, by reference to the EIA why s 44(3)(b) should apply, merely submitting that the Opponent has failed to establish that s 44(3)(b) does not apply (I note my comments in paragraph 22 above that the burden does not rest on the Opponent to prove the negative). However, from the submissions made by the Applicant during the examination process and during the oral hearing it is apparent that the Applicant seeks to argue that s 44(3)(b) should apply by reason of the fact that the Trade Marks and the CSL BEHRING and BEHRING marks have a common history and the parties share predecessors in title.
I do not consider it appropriate to allow registration of deceptively similar marks for the same or similar goods and services to those of the Opponent on the basis of ‘other circumstances’ unless there is a compelling case. In circumstances where I am not satisfied, for the reasons set out in paragraphs 26 to 28 above, that the parties have a shared corporate history or common predecessors-in-title and there is no other evidence before me that provides a basis to apply the provisions of s 44(3)(b) (noting in particular that I am not satisfied with the evidence of use of the Trade Marks in Australia) such a case has not been made and I do not accept the application to register the Trade Marks for the class 5 Goods and Class 42 services pursuant to s 44(3)(b). Even if I were to accept that the parties shared a common corporate history, I still would not consider that it would be proper to accept the application under s 44(3)(b). I note the significant reputation of the Opponent in the BEHRING and CSL BEHRING Marks, and the absence of any evidence of use of the Trade Marks in Australia. While there have been cases (referred to in the evidence summary sheet) where marks have been accepted where the rights are derived from the same corporate source, these are unusual and often arise where unique circumstances apply which reduces the risk of deception and confusion[45]. Such circumstances do not exist in the present case.
[45] See The Totally and Permanent Disabled Soldier's Association v The Australian Federation of Totally & Permanently Incapacitated Ex-Service Men & Women Limited [2001] ATMO 63, (Hearing Officer Nancarrow); and Fred Cavasinni v Full Throttle Custom Car Club Australia Inc. [2017] ATMO 55, (Hearing Officer Wilson), both of which involved circumstances around the use of the relevant marks that would have reduced the likelihood of confusion notwithstanding the satisfaction of the requirements of s 44(1)/(2).
The Opponent’s opposition under s 44 is successful in relation to the Class 5 Goods and Class 42 services.
Resolution of Opposition
In Apple Inc. v Registrar of Trade Marks Yates J stated that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[46]
[46] [2014] FCA 1304, [232].
In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established. I note that in in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited, Murphy J stated:
I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.[47]
[47] [2014] FCA 373, [231].
Neither party has raised the possibility of an amendment and in particular the Applicant has not suggested that I should offer an amendment nor identified a principled basis to allow the amendment of the Trade Marks to limit it to the Class 35 services. There is no evidence before me of the Applicant ever having used, or intending to use the Trade Marks for the Class 35 services or any other obvious principled basis to allow an amendment. In circumstances where the opposition has been established for a majority of the Applicant’s Goods and Services and there is no compelling evidence or submissions suggesting the need for an amendment, I do not consider it appropriate to offer an amendment in respect of the Trade Marks. If the Applicant wishes to register the Trade Marks for a more narrow range of services, such as the Class 35 services it may make a separate application.
Decision and Costs
I have found the Opponent has established the ground of opposition it raised pursuant to s 44. As the Delegate of the Registrar I accordingly refuse to register the Trade Marks. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.
The Opponent has sought an award of costs in its favour. While there is a general rule that costs follow the event, I consider that the Opponent’s decision to file over 1000 pages of evidence and then fail to comply with this office’s directions on the preparation of a summary of submissions (as outlined in paragraph 12 above) amount to a course of conduct that has increased the cost and time of the Applicant and this office. I consider this conduct is disentitling and it is appropriate to depart from the general rule. I instead order that each party pay their own costs.
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
26 November 2024
0
27
0