Ferring BV v Pure Health Direct Pty Ltd
[2011] ATMO 99
•13 October 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Ferring BV to registration of trade mark application 1299321(5) - MEDIPURE – proceeding in the name of Pure Health Direct Pty Ltd.
Delegate: Iain Thompson Representation: Opponent: Ben Fitzpatrick of Counsel, instructed by Dawn Logan Keeffe of Davies Collison Cave.
Applicant: Written submissions by Cullen & CoDecision: 2011 ATMO 99
S52 opposition: sections 44, 58 and 59 – no ground establishedBackground
This matter arises out of the filing of an application to register a trade mark which proceeds in the name of Pure Health Direct Pty Ltd[1] (‘the applicant’) of Clontarf, Queensland. Current details of this application are:
Application No: 1299321
Priority Date: 15 May 2009Goods:Class 5: Dietetic substances adapted for medical use including dietetic foods and drinks; dietetic foods for use in conjunction with sports nutrition; dietetic foodstuffs and substances for invalids; functional foods being medicinal food having health promoting and/or disease-preventing property beyond basic nutrition; food for babies; food supplements for medical purposes; health food supplements made principally of minerals; health food supplements made principally of vitamins; medicated food supplements; medicated preparations for use as supplements for food; medicated supplements for food; medicated supplements for foodstuffs for human consumption; mineral dietary supplements for humans; mineral food-supplements; mineral supplements for foodstuffs for human consumption; mineral supplements to foodstuffs; nutritional supplements; nutritional supplements for medical use; fish and krill oils being nutritional supplements; plant compounds for use as dietary supplements (medicinal); herbal dietary supplements for special dietary requirements; supplements (trace element) for foodstuffs for human consumption; vitamin preparations in the nature of food supplement; vitamin supplements; vitamin supplements for foodstuffs for human consumption; protein foods for human consumption (adapted for medical purposes); protein preparations for use as additives to foodstuffs for human consumption (adapted for medical purposes); protein products for human consumption (adapted for medical purposes); aromatic teas (for medicinal use); herbs teas for medicinal purposes; sun screening preparations for medical purposes; suntanning preparations for medical use; sun skin care products for medical purposes
Trade Mark: MEDIPURE
[1] The application was filed by Yogie Lite Pty Ltd and the assignment of the trade mark to the applicant was recorded on 15 April 2010.
The application was examined in compliance with section 31 of the Trade Marks Act 1995 (‘the Act’) and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 12 November 2009.
On 15 February 2010, after seeking and receiving an extension of time in which to do so, Ferring BV (‘the opponent’) of Hoofddorp, The Netherlands, served and filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice includes all of the available grounds of opposition including those under sections 44, 58 and 59 which were subsequently argued at a hearing.
The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 9 August 2011. Mr Ben Fitzpatrick of Counsel instructed by Ms Dawn Logan Keeffe of Davies Collison Cave represented the opponent. The applicant did not appear at the hearing and relied on brief written submissions by its attorneys, Cullen & Co.
The Evidence
The evidence served and filed in support of the opposition comprises statutory declarations by:
Jean Marie Duvall dated 7 June 2010 with exhibits JMD-1 and JMD-2.
Wendy Susan Burnett dated 12 August 2010 with exhibit WSB-1
The applicant has not served and filed evidence in answer.
The opponent also served and filed further evidence, this being a statutory declaration by each of:
Anna MacIntyre dated 17 August 2010 with exhibit AM-1
Dawn Heaney Kirkbride Logan Keeffe declared on 4 April 2011 with exhibits A to G
Wendy Susan Burnett is Special Counsel of Norton Rose Australia who then acted for the opponent. Her Declaration brings into evidence details of the Australian registration of the opponent’s trade mark MENOPUR and various Internet websites which feature the opponent’s trade mark MENOPUR.
Jean Marie Duvall is General Counsel of the opponent. This Declaration explains that the Ferring group of companies (‘GOC’) to which the opponent belongs are research-driven biopharmaceutical companies, devoted to identifying, developing and marketing innovative products in the fields of reproductive health, urology, gastroenterology, endocrinology and osteoarthritis
Jean Marie Duvall continues by explaining:
In the mid 1900s, [the GOC] developed a pharmaceutical which is a “fertility stimulating hormone”. The name chosen as a brand name in order to market this pharmaceutical was MENOPUR. This trade mark has been registered throughout the world in a number of countries in the name of [the opponent] which is the owner of this trade mark throughout the world. Now shown to me and marked exhibit JMD-2 is a list of all trade mark registrations for MENOPUR throughout the world and accompanying country code list. To the extent that other members of [the GOC] use the trade mark MENOPUR throughout the world, such use is with the authorisation of and under the control of [the opponent].
Anna MacIntyre is the Managing Director of Ferring Pharmaceuticals Pty Ltd (‘FP’) which is part of the GOC and an Australian subsidiary of the opponent. Ms MacIntyre states:
On 13 February 2003 FP applied to the Therapeutic Goods Administration (TGA) to register goods to be sold in Australia under the trade mark MENOPUR. That application was withdrawn in 2004 and resubmitted in 2009 because of the need to provide additional information. Evaluation of the application is ongoing. A decision on the application is expected in early 2011 according to TGA’s current tracking system.
The Declaration thus establishes that the goods proposed to be sold under trade mark MENOPUR were not formally ‘on the market’ within Australia at the priority date of the opposed application – 15 May 2009. Ms MacIntyre in the balance of her Declaration attests to the use of the trade mark MENOPUR by the opponent or under its aegis overseas.
Dawn Heaney Kirkbride Logan Keeffe is a registered trade mark attorney and an employee of Davies Collison Cave, patent & trade mark attorneys. Ms Keeffe states:
On 21 December 2010, I conducted a search of the TGA’s database for the product name “Medipure”. The search located only one result containing or comprising the word “Medipure”, being No. 170768 for the product name “Medipure Activated Omega 3-Krill Oil”. Now shown to me and marked Exhibit A is a copy of the Public Summary obtained from the TGA database for the aforesaid product.
I note that the Public Summary contained in Exhibit A states that the that the product name was registered with the TGA on 21 April 2010 and the sponsor of the product is Yogie Lite Pty Ltd, which is the original applicant for the Application. Now shown to me and marked Exhibit B is a printout from the ATMOSS records for the Application, showing that the Application was assigned from Yogie Lite Pty Ltd to the Applicant by way of a Deed of Assignment on 29 March 2010.[2]
I further note that the Public Summary contained in Exhibit A states that the product “contains omega 3-essential fatty acids — EPA and DHA for building healthy cell membranes” and that the active ingredient is “Euphausia superba oil”. Now shown to me and marked Exhibit C is a document entitled Draft Composition Guideline for Euphausia superba oil, published by the TGA. I note that the document states that Euphausia superba oil is obtained from “crushing krill biomass”.
[2] This is the date that the assignment was advertised as distinct from ‘recorded’.
Ms Keeffe goes on to state:
On 4 April 2011, I conducted internet searches utilising the Google search engine for the term “medipure”, with an Australian restriction. Now shown to me and marked Exhibit D are copies of some of the results revealed by my search, which appear to show use of the word “medipure” in connection with fish oil supplements.
On 4 April 2011, I also conducted internet searches utilising the Google search engine for the Applicant’s name, namely “Pure Health Direct Pty Ltd”. The searches located an active website at Now shown to me and marked Exhibit E is a printout from the aforesaid website. I note that the use of the word “medipure” and images of the packaging of goods displayed at the above website is identical to the results contained within Exhibit D referred to above.
The searches referred to […] above also located an active website at Now shown to me and marked Exhibit F are printouts from the aforesaid website. I note from the content of the printouts contained in Exhibit F that:
• The name “MediPure” is listed as a brand name on the website and the manufacturer of the MediPure branded products is listed as Pure Health;
• The MediPure branded products are stated as being “from New Zealand”;
• The Conditions of Use referred to on the website specifically refer to “Pure Health Direct”; and,
• The “About Us” section of the website states that “Pure Health Direct offers a range of goods including nutritional supplements, liquid herbs, functional foods; therapeutic creams, herbal teas, gluten free food products and organic foods and skin, body and hair care products” and specifically states it sells goods which are “chemical free”.
On 4 April 2011, I also conducted internet search utilising the Google search engine for the name, “Yogie Lite Pty Ltd” in connection with the word “medipure”. Now shown to me and marked Exhibit G are printouts of the list of results located by the search. I note that only 5 results were obtained and that those results refer to one of the following:
• The TGA registered product name referred to at paragraph 3 above;
• The Application; and,
• The IPONZ Journal of Trade Marks for January 2010.
I further note that none of the aforesaid results evidence any use of the name MEDIPURE as a trade mark by Yogie Lite Pty Ltd.
Onus
After reviewing the precedents in Pfizer Products Inc v Karam [2006] FCA 1663, in particular whether such matters should be decided in summary manner only on clear proof, Gyles J said (at paragraph 26) of the onus in trade mark oppositions:
I am faced with the clear words of the statute, on one hand, and the opinions of various judges, on the other. There is no binding Full Court authority. I cannot find any instance where a single judge has actually applied the higher standard. In my opinion, in this case, comity does not demand that I depart from my view as to the meaning of the statute. ‘The fundamental responsibility of a court when it interprets a statute is to give effect to the legislative intention as it is expressed in the statute’ per Mason J in Babaniaris v Lutony Fashions Pty Ltd [1987] HCA 19; (1987) 163 CLR 1; cited with approval by Mason CJ, Wilson, Dawson, Toohey and Gaudron JJ in John v Federal Commissioner of Taxation [1989] HCA 5; (1989) 166 CLR 417 at 439. I will, therefore, approach the matter on the basis that the opponent has to establish a ground of opposition, although not clearly establish such a ground, whether in a summary fashion or otherwise.
The opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051.
I will accordingly decide this matter on the balance of probabilities.
Section 59
Section 59 of the Act provides:
Applicant not intending to use trade mark
59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
Put briefly, Mr Fitzpatrick’s submissions were that:
In terms of section 59 of the Act, there is a presumption in favour of the applicant from the act of filing the application. However, when an opponent adduces evidence which fairly raises the question of the applicant’s intention to use the opposed trade mark, the evidentiary burden shifts to the applicant to evidence its intention to use the opposed trade mark.
Otherwise, Mr Fitzpatrick drew my attention to the generally applicable principles of trade mark law which are outlined in his written submissions. Specifically, Mr Fitzpatrick drew my attention to the Declaration of Ms Keeffe and the results of her search of the TGA data base which showed that the product under the name MEDIPURE was then proceeding on behalf of Yogi Lite Pty Ltd. The product under TGA consideration was oil derived from krill. Taken together with the researches on the Google Internet search engine, they show, said Mr Fitzpatrick, that the applicant only uses the trade mark on arctic cod liver oil and krill oil which are omega 3 fish oils.
Mr Fitzpatrick submitted that these materials, together with the grounds of opposition in the Notice, ought to have put the applicant on notice that its intention to use in respect of the broader claim in the specification of goods in the opposed application was challenged. As such, submitted Mr Fitzpatrick, the evidentiary onus should shift to the applicant to demonstrate its intention to use the trade mark on, or in relation to, that broader claim. In this regard Mr Fitzpatrick drew my attention to my recent decision in Adbri Masonry Group Pty Ltd v Ecopave Australia Holdings Pty Ltd [2011] ATMO 42 (‘Adbri’) and to the principle enunciated by Kitto J in the High Court case of Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298 at 312:
“(i) that the absence of the defendant Hegedus as a witness cannot be used to make up any deficiency of evidence; (ii) that evidence which might have been contradicted by the defendant can be accepted the more readily if the defendant fails to give evidence; (iii) that where an inference is open from facts proved by direct evidence and the question is whether it should be drawn, the circumstance that the defendant disputing it might have proved the contrary had he chosen to give evidence is properly to be taken into account as a circumstance in favour of drawing the inference”.
However, I do not agree with the opponent that it has established its case so as to transfer the onus onto the applicant. In McDonald’s Corporation v McBratney Services Pty Ltd [2006] ATMO 71 (2 August 2006), Hearing Officer Windsor wrote:
It is accepted that the making of a trade mark application is prima facie indication of an intention to use.[3] According to section 27 of the Act, the requirements for a person to apply for a trade mark are that the person claims to be the owner of the trade mark, and there is either use already taking place, or an intent to use in the future, by the person himself or by another person under authorization.
[3] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391
In Aston v Harlee (footnote 2) it was stated:
There is another element mentioned by Dixon J. in the Shell Co.’s Case (1949) 78 CLR, at p 627, which is stated as essential to the proprietorship of an unused trade mark. That element is the intention of the applicant for registration to use it upon or in connexion with goods. As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time. A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use. If he in fact does not use any of them for the period specified in s. 72, the unused mark or marks may be expunged under that section. On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars: the effect of In re Registered Trade-Marks of John Batt & Co. (1898) 2 Ch 432; (1899) AC 428, is, I think, correctly stated in the first paragraph of the headnote to the report of the case before Romer J. and the Court of Appeal. (at p401)
As observed by Hearing Officer Lyons in Americana International Limited v Suyen Corporation [2008] ATMO 4 (‘Americana’) at paragraphs 34 to 36:
… unused trade marks occupy a frail position in the law. In the case of Estex Clothing Manufactures Pty Ltd v. Ellis and Goldstein Ltd [1966] HCA 81; (1967) 116 CLR 254, it was said:
“It is for an applicant who seeks to have a mark removed to prove his case. The onus is on him to show an absence of use in good faith during the period. If persons who, by reason of their connexion with the relevant trade, might be expected to have seen or heard of the mark if it were used as a trade mark upon goods for which it is registered, swear that they had not seen or heard of it in use as a trade mark at any time during the relevant period, that is prima facie evidence of the fact which the applicant must prove. Slight evidence may suffice at this stage, for the applicant has the task of proving a negative and the registered proprietor is probably in a better position to prove user than is the applicant to prove non-user. But if evidence be given for the respondent to controvert the applicant’s prima facie case, then when all the evidence is complete the question is still, has the applicant proved his case? I do not for a moment accept the proposition of the applicant in these present proceedings that the ultimate burden of proving its case does not rest upon it.” (at p259)
That was a case involving section 23(1)(b) of the Trade Marks Act 1955 and an action for removal of a registration for non-use. Nevertheless, under that now repealed legislation, the removal applicant bore the initial onus to show non-use and so stood in a similar position to the opponent here.
So the presumption the applicant enjoys of an intention to use the trade mark deriving solely from the act of filing the application is a prima facie presumption, which can be rebutted by slight evidence.
Here the opponent’s evidence has established only that the applicant has started to use its trade mark on cod liver oil and krill oil. The opponent has not evidenced any lack of intention in relation to the balance of the goods, only a lack of actual use. A lack of actual use is what pertains in common in relation to all of the unused trade marks in respect of which registration is sought; however, if lack of intention to use is alleged, the evidence of such lack of intention must go to some other factor other than the lack of use in itself. I thus distinguish the facts before me now from those which were before me in Adbri.
The cases confirm this stance by Delegates of the Registrar of Trade Marks in such matters. As summarized by Hearing Officer Lyons in Americana at paragraph 51 after a comprehensive review of the cases:
1 filing an application for registration raises a prima facie presumption of intention to use in favour of the applicant (Aston v Harlee et. al.);
2 that presumption is rebuttable (Sapient; Danjaq);
3 once rebutted, the onus of proof shifts to the applicant (Sapient; Danjaq);
4 where, under the Trade Marks Act 1955, a non-use applicant carried the initial onus of proof, case law supported the view that only slight evidence was required to shift the onus to the proprietor of the registration (Estex Clothing);
5 a mere allegation of lack of intention to use is not enough by itself to shift the onus (Medley Distilling Co; NSW Lotteries Commission; Torrag);
6 inferences can be drawn to indicate a lack of intention to use (Danjaq; Sapient);
7 prior or concurrent actions between the same parties can be a source of inference (Phillip Morris; Sapient; Danjaq);
8 non-use does not by itself infer lack of intention to use (Aston v Harlee; Torrag);
9 failure to respond to an allegation can draw an adverse inference (Jones v Dunkel);
10 under section 59, it is the applicant who is best placed to know its own business and show evidence of intent when it is properly challenged (Danjaq; Wal-Mart Stores).
Here there is only a contention of a lack of intention with nothing more substantial than argument in support of the allegation. There is nothing, therefore, for the applicant to respond to and no inferences may be drawn from its lack of response.
The opponent has not established its opposition under section 59 of the Act.
I additionally observe that the use of the opposed trade mark which the opponent necessarily concedes (since that use is both evidenced and argued by the opponent) establishes the opponent’s ownership of the trade mark at least in relation to arctic cod liver oil and krill oil for health supplement purposes. Use of the trade mark in relation to particular goods extends the ownership of the trade mark to goods which are the ‘same kind of thing’. As observed by Kenny J in Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184 at paragraph 6:
“The owner’s right to registration in this circumstance is not limited to the identical goods or classes of goods but extends to goods or classes of goods ‘of the same kind’: see Jackson & Co v Napper (1886) 35 Ch D 162 at 178 and In re Hick’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636 at 640”:
In Jackson v Napper, above, Stirling J stated:
[The Respondents] said there was a little difference in the size, as I understand, and a little difference in the shape; but can it be, that a man having made goods of a particular size, which might be designated as small axes – which in fact is the definition given in Johnson’s Dictionary of a hatchet – is to be precluded from putting his mark upon things of the same description or belonging to the same class of goods, but of a different size and a different shape? The objection of course is founded on Edwards v Dennis [30 Ch D 454], in which it was held that a man having registered a mark for iron goods and having manufactured, I think, sheet-iron, and applied his mark to that, was not entitled to stop another man from using the same mark in respect of iron wire which he had never used at all. That to my mind is a totally different thing from saying that a man who has used a mark on hatchets of a particular size and shape is not entitled to use a trade-mark as applied to an axe, which is a thing of the same kind but a little different in size and a little different in shape. No doubt at first the classes of goods under the Trade Marks Act were drawn too wide, and that has led to difficulty, but if I were to accede to this notion and say that because a man had merely manufactured small axes, he was not to be allowed to register in respect of axes, the logical consequence would be that he would have to register the shapes and sizes of everything to which he attached his mark. That was an inconvenience that was never intended to be imposed on an applicant, and I hold that a man who has manufactured and applied his mark to small axes is entitled to register it in respect of axes generally.
It is apparent that the applicant’s use of the trade mark on cod liver oil and krill oil for dietetic purposes entitles it to be regarded as the owner of the trade mark in respect of a wider range goods than those on or in relation to which the trade mark has been used. It is not essential that I decide what the wider range of goods is, but I observe that many of the goods in respect of which registration is sought may encompass goods which are apparently ‘the same kind of thing’ as health promoting substances comprised of, or prepared from, fish oil and krill oil. Thus, even if the ground had been to some extent established by the opponent, much of the specification of goods of the opposed application is not obviously inappropriate.
Section 44
Section 44 of the Act relevantly provides:
Identical etc. trade marks
44.(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.
Here, and relevant to the circumstances of this opposition, the opponent must establish to my satisfaction that the registered trade mark on which it relies has:
· An earlier priority date than that of the opposed application; and has,
· A trade mark which is deceptively similar[4] to that of the opposed application; and that;
· The goods in question are similar goods.
[4] Substantial identity was not argued by the opponent.
The trade mark on which the opponent relies is its own registration, relevant details of which appear below:
Application No: 819351
Priority Date: 10 January 2000
Goods: Class 5: Fertility stimulating hormoneTrade Mark: MENOPUR
The registered trade mark on which the opponent relies has an earlier priority date than that of the opposed application and I must consequently decide whether the goods in question are similar goods and if the trade marks are deceptively similar.
It is usual to consider whether the goods of the parties are similar goods before considering whether the trade marks of the parties may be substantially identical or deceptively similar. In Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020; (1999) 45 IPR 411; (1999) AIPC 91-499; [1999] FCA 1020, French J stated:
Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second …
Similar considerations ought to apply to the goods of the parties as it is against the context of the goods that the comparison of the trade marks occurs.
Section 14 of the Act relevantly provides:
14Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
Mr Fitzpatrick submitted that the expression ‘dietetic substances adapted for medical use’ should include goods of the same description as the opponent’s ‘Fertility stimulating hormone.’
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 at page 607 the Court said:
The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd. (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd. v. Boden per Latham C.J. [1945] HCA 12; (1945) 70 CLR 84, at p 90. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application (1946) 63 RPC 59. Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case (1946) 63 RPC 59 the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application (1946) 63 RPC 59, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”: In re an Application by JohnCrowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden (1945) 70 CLR 84 when he said: “What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments” (1945) 70 CLR, at p94.
More recently Kenny J said in McCormick & Co Inc v McCormick [2000] FCA 1335, 51 IPR 102 at paragraph 18:
The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.
The word ‘dietetic’ is defined within the Oxford Dictionary in several ways:
A. adj.
Of or pertaining to diet, or to the regulation of the kind and quantity of food to be eaten, especially as a branch of medical science.
B. n. [In sense B. 1, repr. Latin diætēticus , the adj. used abs.; in sense B. 2 repr. Greek ἡ διαιτητική (sc. τέχνη ) the dietetic art, in modern Latin diætētica , French diététique (Paré 16th cent.): see -ic suffix.]
1. One who studies dietetics.
2. dietetics n. less usually dietetic: The part of medicine which relates to the regulation of diet.
In view of these definitions, it is difficult to comprehend how dietetic goods or supplements within the goods of the opposed application might be goods of the same description as a ‘Fertility stimulating hormone’. It seems to me that the goods are of a dissimilar nature and are bought for quite different purposes. It is possible that the opponent relies on some intricacy or technicality in the composition of the goods which is not obvious to me; however, there is no evidence before me which goes to such issues and establishes that these goods are of the same description. I therefore do not find that the goods are not goods of the same description but, rather, that the opponent has not established to my satisfaction that the goods are of the same description.
On this basis, the opponent has not established its ground under section 44 of the Act. However, for the sake of completeness, I will also decide whether the trade marks under consideration are deceptively similar.
Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:
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 television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106.
It is apparent that the opponent’s trade mark has been coined with the use of the trade mark in mind. That is, it is derived from both the Latin word for ‘month’ which is ‘menses’ and the English word ‘pure’ to presumably suggest that the goods are connected with the menstrual cycle and are uncontaminated or pure. The ‘prefix’ in the opposed trade mark has also been coined in a way which suggests the purpose of the goods but is from a quite different English source – the words ‘medicine’ or ‘medical’.
In view of this it is likely, in my estimation, that the trade marks will be remembered, recalled and recognized in quite different ways and as such they are not deceptively similar.
This is not to suggest that the trade marks in question lack for any inherent adaptation to distinguish but rather to say that the differently descriptive shading in meaning of the respective trade marks presents them in quite different ways: Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864.
Additionally, the major difference between the trade marks occurs in the first syllable of each of the trade marks: in In the Matter of London Lubricants (1920) Limited’s Application to Register a Trade Mark (1925) 42 RPC 264 at 279, Sargant LJ said:
“But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.”
As the opponent has not established that the goods are the same goods or are goods of the same description, and as the trade marks are not deceptively similar, the ground under subsection 44(1) does not succeed.
Section 58
Section 58 of the Act provides:
Applicant not owner of trade mark
58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.
Mr Fitzpatrick drew my attention to the Declaration of Ms Keeffe to explain how this ground is put. He observed that the application was filed in the name of Yogie Lite Pty Ltd and subsequently assigned to the applicant. However, the Google® search which is Exhibit B to Ms Keeffe’s Declaration could be interpreted so as to indicate that it is not the applicant which is using the opposed trade mark on or in relation to the goods arctic cod liver oil and krill oil and it also indicates that the goods are made in New Zealand.[5] Ms Keeffe’s Declaration also establishes that Yogie Lite Pty Ltd was the sponsor of the TGA application after the assignment of the application to the applicant. The material might thus (submitted Mr Fitzpatrick) be collectively read as tending to suggest that the applicant is not entitled to regard itself as the owner of the trade mark.
[5] I note that the records of IPONZ show that the trade mark MEDIPURE is registered in New Zealand by applicant under registration number 815808 for the same goods as those in respect of which registration is sought in Australia and was similarly assigned by Yogie Lite Pty Ltd to the applicant on 15 April 2010.
The submission therefore (if I have understood Mr Fitzpatrick correctly) goes to the kinds of issues which were canvassed in Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196 and Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605.
I observe, as I did at the hearing, that the absence or presence of material in a Google® search may (in circumstances such as issues of ownership) be suggestive but not conclusive. I also observe that the probity of much material on the Internet may be suspect, drafted economically by third parties, or may be advertising puffs, or be mischievous (or might otherwise for either good motives or bad put a gloss on the verities of a situation).
Further, Google® search results are affected by the indexing by Google® of material which is on the Internet and not all material on the Internet is indexed. Any search result is thus a partial result. And, if the material is indexed and recovered, it should (in circumstances such as issues of ownership of trade marks) not be regarded as being of particularly high probity unless it is recovered via the Internet from well regulated databases such as those of ASIC or the TGA.
Obviously, in other circumstances such as considerations under section 41 of the Act, results from searches on Google® or Yahoo® will be of assistance in establishing how particular traders are using particular signs[6].
[6] Section 6 of the Act: ‘sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.’
The evidentiary material before me is consistent with the proposition that Yogie Lite Pty Ltd authored and applied for the registration of the opposed trade mark and subsequently (for whatever reason) assigned it to the applicant. I do not know what to make of the fact that Yogie Lite Pty Ltd sponsored the TGA application after it assigned the trade mark to the applicant but I do note that the registered address of Yogie Lite Pty Ltd lies in Newport and that of the applicant is within Clontarf and that these places are neighbouring suburbs on the Redcliffe peninsula in Queensland. At most this seems to suggest some deeper connection or collaboration between Yogie Lite Pty Ltd and the applicant than is immediately apparent but which might not be surprising.
As to the suggestion that the goods are made by a third party in New Zealand or that the trade mark is used by a third party, while this has not been convincingly established by the opponent, it is common for traders to arrange for goods to be made for them and later affix their trade mark to the goods. The applicant has registered its trade mark in New Zealand and might be both making the goods and using its trade mark there. It might well be that, if the use of the trade mark is not by the applicant, the use is by an authorised user. However, as I have indicated, the opponent’s evidence which goes to these questions does not tend to authoritatively indicate or establish anything of substance which might, on the balance of probabilities, tip my considerations towards any particular conclusion.
The opponent has not established its ground under section 58.
Decision
Section 55 of the Act relevantly provides:
55Decision
(1)Unless the proceedings are discontinued or dismissed, 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.
Note:For limitations see section 6.
The opponent has not established a ground of opposition.
The trade mark application may then proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s order or direction.
Costs
Having been successful in this matter, the applicant is entitled to its costs which I award against the opponent at the official scale.
Iain Thompson
Hearing Officer
Trade Marks Hearings
13 October 2011
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