Glaxo Wellcome (Aust) Ltd v Bukwang Pharm Co Ltd - [2008] ATMO 12

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by Glaxo Wellcome Australia Ltd to protection of international registrations designating Australia 1116338(5) REBOVIR (International Registration No. 882968) and 1116339(5) REVOVIR (International Registration No 882969) - in the name of Bukwang Pharm Co., Ltd.

Delegate: Iain Thompson

Representation: Opponent: Brett Lewis of Davies Collison Cave
Holder: Unrepresented and did not appear or file written submissions

Decision: 2008 ATMO 12
Regulation 17A.29 opposition:
Ground under section 44 established – trade marks deceptively similar to opponent’s trade mark RETROVIR – protection refused.
Costs ordered against holder
Background

Bukwang Pharm Co., Ltd, (‘the holder’)[1], has requested protection in Australia for the following international registrations designating Australia (‘IRDA’):
[1] Where case-law quoted in this decision refers to an’applicant’ it should be read as having reference to a holder.
Appn No1116338
Int No882968
Priority Date 1 November 2005
GoodsClass: 5 Antiviral agents; preparations for treating hepatitis; therapeutic preparations for hepatic disease
Trade Mark
Appn No1116339
Int No882969
Priority Date 1 November 2005
GoodsClass: 5 Antiviral agents; preparations for treating hepatitis; therapeutic preparations for hepatic disease
Trade Mark
Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29.
Glaxo Wellcome Australia Ltd, (‘the opponent’), filed notices of opposition on 22 September 2006 citing grounds of opposition under sections 41, 42, 43, 44, 58, 59, and 60 of the Trade Marks Act 1995, (‘the Act’).
The opponent filed evidence in support of the opposition. However, as the holder has not nominated an address for service in Australia, there was no requirement for the evidence to be served on the holder. The holder of the trade mark did not file and serve evidence in answer.
As a delegate of the Registrar of Trade Marks, I heard the matter in Sydney on 12 November 2007. The opponent was represented by Brett Lewis of Davies Collison Cave. The holder was unrepresented and did not appear or file written submissions.
Evidence
The evidence filed in the matter is as follows:

Declarant

Date Declared

Exhibits

Evidence in support

Brett Lewis

22 March 2007

BL-1 to BL-9

Stephen Henry Peter Marty

22March 2007

SM-1 to SM-20

David Rushton Walker

21 March 2007

DRW-1 & DRW-2

Mr Walker states that the opponent is the registered owner in Australia of the trade mark RETROVIR in Australia – details of this registration are:
Reg No431749
Priority Date 15 August 1985
GoodsClass: 5 Pharmaceutical and medicinal preparations and substances; vaccines and sera
Trade MarkRETROVIR
Mr Walker also attests to the quantum of sales of goods under the trade mark RETROVIR in the three years to 2006 and to the forms in which the goods are sold. The goods are zidovudine pharmaceuticals which, as I understand it, slow down the advance of HIV and hence the progression to AIDS.
Mr Marty is Registrar of the Pharmacy Board of Victoria. He attests to the possibility of medical misadventure through the mistake…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2008] ATMO 12
Decision Date: 1 February 2008

CaseChat Overview and Summary

This matter concerned an opposition by Glaxo Wellcome (Aust) Ltd to the registration of a trade mark by Bukwang Pharm Co Ltd. The opponent, Glaxo Wellcome, sought to prevent the registration of Bukwang Pharm's trade mark on the grounds that it was deceptively similar to their own registered trade mark, RETROVIR. The delegate of the Registrar of Trade Marks heard the matter.

The primary legal issue before the delegate was whether Bukwang Pharm's trade mark was deceptively similar to Glaxo Wellcome's registered trade mark RETROVIR, within the meaning of section 44 of the *Trade Marks Act 1995* (Cth). This involved assessing the likelihood of deception or confusion among consumers in the marketplace.

The delegate reasoned that the assessment of deceptive similarity under section 44 of the Act requires a positive finding of a likelihood of deception or confusion, rather than an exercise of discretion based on broader public policy considerations. The delegate noted that unlike previous legislation, the *Trade Marks Act 1995* does not grant the Registrar a broad discretion to refuse registration on grounds such as general health policy. The delegate referred to previous decisions, including *Merck KGaA v Generic Health Pty Ltd* and *Registrar of Trade Marks v Woolworths*, to support the interpretation that the focus must be on concrete evidence of marketplace impact and the likelihood of consumers being deceived or confused. The delegate also distinguished the present case from *Edward's Application*, which involved an exercise of discretion that is not available under the current Act.

The delegate found that the evidence presented did not establish a likelihood of deception or confusion. Consequently, the opposition was dismissed, and the trade mark application proceeded to registration.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

As a delegate of the Registrar of Trade Marks, I heard the matter in Sydney on 12 November 2007. The opponent was represented by Brett Lewis of Davies Collison Cave. The holder was unrepresented and did not appear or file written submissions.Evidence The evidence filed in the matter is as follows: Mr Walker states that the opponent is the registered owner in Australia of the trade mark RETROVIR in Australia – details of this registration are:Reg No431749Priority Date 15 August 1985GoodsClass: 5 Pharmaceutical and medicinal preparations and substances; vaccines and seraTrade MarkRETROVIR Mr Walker also attests to the quantum of sales of goods under the trade mark RETROVIR in the three years to 2006 and to the forms in which the goods are sold. The goods are zidovudine pharmaceuticals which, as I understand it, slow down the advance of HIV and hence the progression to AIDS. Mr Marty is Registrar of the Pharmacy Board of Victoria. He attests to the possibility of medical misadventure through the mistake of one prescription for another. I will not discuss this declaration any further as this possible outcome of deception or confusion is implicit in any finding that the trade marks are deceptively similar. In Merck KGaA v Generic Health Pty Ltd [2007] ATMO 1, after discussing the specific problems with the evidence before me, I noted, at paragraph 32:The other problem with this type of evidence is that it invites an importation of general health policy considerations into the comparison of the trade marks under section 44 rather than to provide concrete evidence about the marketplace in which the goods are sold. This ‘policy’ approach to the issue appears to me to go very much to the exercise of a discretion by the Registrar of the type that was present in the Trade Marks Act 1955. However, the import of general policy issues into considerations of the type of matter before me under section 44 is one that is not appropriate under the Trade Marks Act 1995. As observed by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020: The grounds for non-acceptance of an application to be found in Division 2 of Part 4 of the Act substantially reflect grounds for non-acceptance set out in recommendation 6A of the 1992 Working Party Report. It was said in the Report: "These grounds have been formulated with the aim of excluding matters which are considered inappropriate for a bureaucracy to determine, such as matters of morality or fraud, and with general principles in mind that it should be procedurally straightforward to obtain registration of a trade mark, and procedurally straightforward to have one removed from the Register. This aim can be achieved, at least in part, by defining clearly the grounds on which an application may be denied registration, as well as those whereby the registration may be rectified or removed." (p 44)Deputy Registrar Hardie also commented on this kind of issue in Schering Aktiengesellschaft v Bracco International B.V [1999] ATMO 89: I do take note, however, of Ms Freeman's reference to Edward's Application [(1946) 63 RPC 19 - the JARDEX/JARDOX case] and her submissions that, where medical products are concerned, there is strong public interest in precluding even small risks if there is a possibility of dangerous consequences. Edward's Application however, was decided not on the basis of a real likelihood of risk, but on an exercise of the Registrar's discretion. That discretion does not exist under the Trade Marks Act 1995. The provisions of section 44 as analysed and explained by Justice French [see Woolworths, above] require a positive finding that a risk of deception or confusion is likely. [Parenthetical material added]

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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Delegate:	Iain Thompson
Representation:	Opponent: Brett Lewis of Davies Collison Cave Holder: Unrepresented and did not appear or file written submissions
Decision:	2008 ATMO 12 Regulation 17A.29 opposition: Ground under section 44 established – trade marks deceptively similar to opponent’s trade mark RETROVIR – protection refused. Costs ordered against holder

Declarant	Date Declared	Exhibits
Evidence in support Brett Lewis	22 March 2007	BL-1 to BL-9
Stephen Henry Peter Marty	22March 2007	SM-1 to SM-20
David Rushton Walker	21 March 2007	DRW-1 & DRW-2