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

1. 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

2. Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29. 

3. 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’).

4. 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.

5. 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

6. 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

1. 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

2. 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.

3. 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]

4. Thus evidence of this sort goes to the effects of confusion and deception – not the causes.  To take account of this kind of evidence in the analysis of whether trade marks are deceptively similar is to put the cart before the horse and consequently to confuse cause and effect.

5. Mr Lewis appends to his declaration a list of trade mark registrations in Class 5 whose ‘suffix’ is -VIR.  Mr Lewis provides a similar list from the Register of Therapeutic Goods which shows the registered trade marks that occur on the Register of Therapeutic Goods.  Other documentation attached to the declaration of Mr Lewis shows that the trade mark REVOVIR was refused registration in the United Kingdom and that registration of the trade mark REBOVIR has been opposed in that country.

6. A further document exhibited to this declaration is from INPI – the Trade Marks Registry in Portugal – a registry decision which shows that the trade mark REBOVIR was refused registration in that country because of its similarity to the trade mark RETROVIR.

   .Grounds of Opposition

   13. Regulation 17A.31 sets out the grounds for opposing an IRDA. These include sections 39 to 44 of the Act (by virtue of 17A.31(1) and 17A.28(1)), and sections 58 to 61 of the Act (by virtue of 17A.31(3)). Regulations 17A.28(2) and 17A.31(3) establish that:

   ·    Where the relevant section refers to an “application” an IRDA is to be understood; and

   ·    Where an “applicant” is referred to, the holder of the IRDA is to be understood.

7. At the hearing, Mr Lewis pressed grounds of opposition under the provisions of sections 42, 44, and 60 of the Trade Marks Act 1995.  The remaining grounds were not pressed and I formally find that they have not been established.

   Submissions and the Law

   15. Mr Lewis made submissions concerning the onus in these proceedings. The relevant sections of the Act which govern onus for the purposes of these proceedings are section 33 as it relates to the opposition in terms of sections 42 and 44, and the overarching section 55 as it relates to the opposition under sections 42 and 44, and section 60 of the Act.

   16.  In the end, there is little practical difference between sections 33 and 55 – in order for the opposition to succeed on any of the grounds I am required to be satisfied, on the balance of probabilities, that the opponent has established its opposition.

   17.  As observed recently by Sundberg J, in Scotch Whisky Association v De Witt [2007] FCA 1649 at paragraph 8:

   The onus is on the opponent to establish that one of the grounds is made out. Before the delegate the applicant was the opponent. Different views have been expressed in the authorities as to the standard at which the onus must be discharged. There are decisions to the effect that the opposition should be upheld only if the Court is satisfied that the trade mark should clearly not be registered: Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901; (2003) 59 IPR 318 and Kowa Company Ltd v N V Organon [2005] FCA 1282; (2005) 66 IPR 131. See also Lomas v Winton Shire Council (2002) FCAFC 413 at [17] to [19], Austereo Pty Ltd v DMG Radio (Aust) Pty Ltd [2004] FCA 968; (2004) 61 IPR 257 at [4] and McCorquodale v Masterson (McCorquodale) [2004] FCA 1247; (2004) 63 IPR 582 at [24].

   On the other hand, Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 was of the view that the opponent has simply to establish a ground of opposition; not clearly establish a ground.

   I need not enter upon this controversy, because the outcome of the appeal does not differ according to which approach is adopted.

   18.  The registrar’s practice is to accept the view of Gyles J in Karam, though in this case even if the higher standard applied it would not affect my decision.

   19.  Further, in the absence of any evidence from the holder, Mr Lewis submitted that I should be guided by the approach in Camelot Design Industries Group Pty Ltd v Bernard Leser Publications Pty Ltd AIPC (1987) ¶90-436 where Chief Assistant Registrar Farquhar commented at 37,830:

   By not responding in any way to the opposition proceedings the applicant renders its application more susceptible to refusal, since it is not appropriate that the Registrar act as advocate on its behalf. However, it is appropriate that I consider the opponent's case to the extent of finding whether or not there are matters for the applicant to answer. If there are, and the applicant has not answered them, the matter must be resolved in favour of the opponent.

   20.  However, Camelot was a case under the Trade Marks Act 1955, where the applicant there was, in effect, in petitorio: Eno v Dunn (1890) 7 RPC 311, and the onus was hence on the applicant to show that its trade mark would not confuse or deceive. Such is not the situation under the current Act, as discussed at paragraphs 16 to 18, above. So, I do not agree with the suggested approach as far as it might imply some susceptibility to refusal on the holder’s behalf only because it has not filed any evidence: the opponent must establish its opposition to my satisfaction. Of course, I will not advocate for the holder – or for the opponent. And, in the absence of evidence of concurrent or prior user of the applied for trade marks, if the opponent establishes its opposition that is the end of the matter.

   Section 44

   21. In as much as it relates to these proceedings, section 44 of the Act provides:

   44  Identical etc. trade marks

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

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

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

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

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

   Note 1:For deceptively similar see section 10.

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

   Note 3:For priority date see section 12.

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

   22.  Given that the trade marks in question are non-identical, and the registration on which the opponent relies has an earlier priority date than that of these opposed applications, and the opposed goods are contained within the opponent’s general specification, ‘Pharmaceutical and medicinal preparations and substances,’ the issue which I must decide is whether or not either of the opposed trade marks REVOVIR or REBOVIR, or both, are deceptively similar to the opponent’s registered trade mark.

   23.  Deceptive similarity is defined by section 10 of the Act which provides:

   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.

   24.  The concept is further discussed in detail by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020, at paragraph 50 where he said:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

   25.  I am conscious that while the opposed trade marks have distinct similarities to each other, each should be considered on its own merits in the comparison and that while Mr Lewis made his submissions on the basis that if the opposition succeeded in relation to one of the opposed trade marks, this would automatically apply to the other, this is not necessarily so.

   26.  In Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641, Dixon and McTeirnan, JJ said, concerning the comparison of trade marks:

   In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

   27.  Subsequently, in the same case, they said:

   It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.

   28.  The expression, ‘in the ordinary conduct of affairs’ refers to the particular trade through which the goods pass.  This contextual comparison was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J, as he then was, said:

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

   29.  Mr Lewis brought the doctrine of imperfect recollection to my attention – this was discussed in Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196 where Moore, Sackville and Emmett JJ explained:

   For example, in Aristoc Ltd v Rysta Ltd [1945] AC 68, the House of Lords held that the respondents were not entitled to register ‘Rysta’ as a trade mark in respect of stockings in the face of the appellants’ ‘Aristocrat’ registered mark for the same goods. Viscount Maugham (with whom Lords Thankerton and Wright agreed) adopted (at 86) the reasoning in the dissenting judgment of Luxmoore LJ in the Court of Appeal: Rysta Ltd’s Application (1943) 60 RPC 87. Luxmoore LJ said (at 108-109):

   ‘The answer to the question whether the sound of one word resembles too nearly the sound of another so as bring the former within the limits of s 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistance ministering to that person’s wants.’

   Viscount Maugham accepted Luxmoore LJ’s view that there was a tendency to slur a word beginning with ‘a’ and that the similarity between the pronunciation of ‘Rysta’ and ‘Ristoc’ was fairly obvious. Aristoc v Rysta thus recognises that the concept of imperfect recollection may be applied to the pronunciation of a particular word included in a trade mark.

   30.  Counterbalancing these observations is the fact that the marketplace for these pharmaceuticals is one which is largely occupied by professionals – doctors, pharmacists, and to some extent nurses, who are trained in the cautious recognition and supply of drugs under their respective trade marks and/or generic names.

   31.  Although it appears possible that the holder’s trade marks might be pronounced REEVO-VIR and REEBO-VIR, it is just as likely, in my estimation, that the opposed trade marks will not have any special emphasis put on the initial syllables which are just as possible to pronounce REBO- or REVO in the normal way.  This observation is of some importance: in In the Matter of London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264 at 279, Sargant LJ made the observation:

   "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."

   32.  This observation has particular resonance where, as in these circumstances, all three trade marks are, to all intents, relatively short and invented words, of similar length and construction, the same number of syllables, and each has the similar beginnings and terminations, these being RE- and –OVIR.  These identical beginnings and terminations are likely to contribute to the way the trade marks in questions are recognized, remembered and dealt with.  With these particular trade marks an erroneous recognition may arise from the commonality of both the beginning and ending of the words – people tend to recognize words from the pattern or outline that they form.  Thus, for example, (without comment on whether the words are deceptively similar) the words COASTAL and COSTAL are more likely to be confused than the words COASTAL and CRUSTAL.  However, the trade marks in suit additionally have no obvious meaning which can be ascribed to them and by which they might be distinguished from each other.  Viewed in this manner, the prospects of the trade marks of the holder and that of the opponent being mistakenly recognized for each other is relatively high and there is (in my view) an associative force between them.

   33.  In circumstances of less than perfect pronunciation, confusion between the trade marks is, I consider, likely.  In my observations, not all health care professionals are masters of English elocution.  I also consider it likely that visual confusion of the opposed trade marks is a probability because of the previously discussed similarities in the stems and endings of the trade marks in question leading to a mistaken recognition of the trade marks.  While doctors, pharmacists and nurses are trained professionals, they are all, in the end, human; thus, while some weight should be accorded to their specialist training and professional caution, this weight should not be undue. 

   34.  While the opponent does, I consider, have a slightly stronger argument in regard to the opposed trade mark REVOVIR through the association of ideas in the stems RETR- and REV-, in the end I am satisfied that both of the holder’s trade marks are deceptively similar to the opponent’s trade mark.

   35.  I also note that, while there are a number of registrations of trade marks with the –OVIR ‘suffix’ on the Australian register of trade marks in the names different traders, the evidence shows that the opponent and one other trader are the only ones with pharmaceuticals approved on the Register of Pharmaceutical Goods – the other trader’s trade mark is LOVIR.  I am hesitant to accord this evidence much weight lest I imply some form of monopoly in the ‘suffix’ –OVIR – however, confusion in the form of mistaken recognition would appear to be more likely when there are obviously no other traders whose trade marks have the similar beginnings and endings RE- and –OVIR in the marketplace.

   36. Accordingly the opponent has established its opposition in terms of section 44 of the Act. The holder has not led any evidence so there is no discussion of issues which might arise under subsections 44(3) or (4).

   Other

   37. As the opposition is established in terms of section 44 of the Act, there is no need to further discuss the opposition in terms of sections 42 and 60 which were also argued at the hearing.

   Decision

   38.  Regulation 17A.34(1) provides:

   17A.34 (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

1. I refuse to extend protection in Australia to applications 1116338 and 1116339 in respect of all goods listed in the IRDAs.

   Costs

   40.  The opponent is entitled to its costs which I order at the official scale against the holder.

   Iain Thompson
   Hearing Officer
   Trade Marks and Designs Hearings
   01 February 2008