Glaxo Wellcome Australia Limited v Boiron

[2000] ATMO 33

TRADE MARKS ACT 1995

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

Re:Opposition by GLAXO WELLCOME AUSTRALIA LIMITED to registration of trade mark application 720274(5) - CICADERMA - filed in the name of BOIRON.

Background

The Trade Marks Office has advertised application 720274 as having been accepted for registration.  The applicant is Boiron, a French company, ("the applicant") and the trade mark in question, CICADERMA, is sought to be registered for the following class 5 goods:

Pharmaceutical products including homeopathic and natural preparations for treatment of slight burns, sun rash, insect bites, superficial sores, skin irritation; dietary products for medical use being goods included in class 5

Registration of the application is opposed by Glaxo Wellcome Australia Limited ("Glaxo"). Glaxo was, at the relevant time, the owner of the trade mark CICATRIN.  That trade mark is registered under number 125096 for "an amino acid antibiotic preparation for the control of sepsis and a stimulant for the healing of chronic wounds".  It has been used for such goods since 1961.  I note, for the sake of completeness, that the registered trade mark has now been assigned to Warner-Lambert Company, but nothing turns on that development.

In support of its opposition to registration, Glaxo relies on the evidence of Mark Gummer, its Marketing Manager, and Jodie Tasseron, secretary to the Company Secretary. 

In answer to the opposition, the applicant relies on the declaration of Scott McKinnon, an employee of the applicant's patent attorneys, F.B. Rice & Co.

To this Glaxo replied with the declaration of Lesley Edwards, the Trade Mark Manager of an related UK company, Glaxo Wellcome plc.

At the end of the evidence process, the opponent requested the matter be heard.  I subsequently conducted that hearing, under delegation from the Registrar of Trade Marks.  Wayne Willis, patent attorney, of the firm of F.B. Rice & Co, represented the applicant, while Ray Walton, also a patent attorney, of the firm of Griffith Hack, represented Glaxo.

Issues

Glaxo maintains that the trade marks CICATRIN and CICADERM are too close and that, for a number of reasons, the registration of the applicant's trade mark would be contrary to various provision of the Trade Marks Act 1995 ("the act").  The common hinge of all of the arguments is that the two marks in question are deceptively similar for the purposes of s 10 of the act.  If that is so, then one trade mark "so nearly resembles that other trade mark that it is likely to deceive or cause confusion".

For Glaxo, Mr Walton contended that the common prefix CICA was so dominant in the competing marks that any subsequent differences would be lost.  He said this was so, whether the word DERMA, the suffix of the opposed mark, was seen as a reference to the skin or not.  Mr Walton also noted that there are many cases that reiterate the importance of the beginning syllable of words, following from London Lubricants (1920) Ltd's application (1925) 42 RPC 264 at 279.

He reminded me that I had to allow for both the look and the sound of the two marks, allowing also for all of the relevant surrounding circumstances and for imperfect recollection.  The overall principles are clearly stated in Australian Woollen Mills v Ltd v F S Walton and Co Ltd (1937) 58 CLR 641 at 648.

Mr Walton noted that it need not be shown that the confusion persisted or was a factor in the actual sale, see Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595.

By way of other relevant decisions, Mr Walton noted that ALDOLES and HALDOL were found to be too close (Johnson & Johnson v Boehringer Ingelheim KG (1995) AIPC 91-156). The same was found of NUVOL and NUJOL (McDowell's application (1927) 44 RPC 335).

Mr Walton also stressed one aspect of the evidence.  He noted the declaration Mr Gummer, which he argued was persuasive, particularly as it is based on his 11 years of experience in the Australian pharmaceutical industry.  In his declaration Mr Gummer refers to the following:

1. Pharmaceutical products are frequently prescribed by reference to trade marks.  This practice provides a potential for erroneous drug dispensing in cases where handwritten scripts are difficult to read and/or misread by dispensing pharmacists.

2. Medical practitioners do not always state the intended use of this prescribed drug and this can cause confusion where the dispensed products is collected by a person other than the intended user. They also frequently rely on memory of available pharmaceuticals in prescribing drugs and often give verbal directions to staff on the drugs to be used in hospital situations.

3. The prevalence and danger of confusion has been highlighted in the 19 publications or articles listed in his declaration. 

Mr Gummer states that "any use that might be made of the CICADERMA trade mark in relation to pharmaceutical products will be likely to give rise to deception and confusion, with the possibility of unfortunate consequences for persons who unintentionally use or misuse the products…."  He does not, however, cite those articles as persuasive authority for his stated belief. 

Mr Willis, on behalf of the applicant, pointed out that there are two other CICA trade marks already on the register, CICA-CARE and CICASTRIP.  However, Mr Walton replied by pointing to a possible explanation of this.  He noted evidence tending to show that one of them is, apparently, unused while the other is used only for a very specialised line of scar flattening gel sheet, quite unlike Glaxo's product.  That alone, he suggested, was sufficient explanation for the coexistence of other marks that, in his view, were otherwise too close to CICATRIN.  It did not suggest, he argued, that Glaxo's reputation in its mark had been diluted.

Mr Willis also noted that the prefix "cica" is easily recognisable, to many in the trade, in terms of derivation and meaning, as a contraction of "cicatrize", meaning "to heal by formation of scar tissue".

Mr Willis fortified his argument with reference to various authorities.  Those, like the ones relied on by Mr Walton, are either generally applicable statements of principles, or attempts to apply those to unique and generally borderline facts.  Most of them were decided under the 1955 act, where the ultimate, as distinct from the evidentiary, onus in such matters was always on the applicant, with registration being refused if the deciding officer or the court was in doubt.

Decision

I do not intend to further extend this matter by listing the decisions on which Mr Willis relied, though they are apposite.  This matter is one that can be decided relatively easily on the basis of first impression.  Glaxo's case against registration fails because of a lack of sufficient resemblance between the competing marks.  The "common hinge" to which I have already referred simply will not bear the weight of the claim that the trade marks owned by the applicant and Glaxo are deceptively similar.

The failure of Glaxo's case is simply one of degree.  I appreciate the seriousness of the issue of confusion between trade marks applied to medicines.  The evidence to which I have referred underlines this, though I note that Mr Gummer has not provided the text of most of the 19 articles he lists by title and author. 

Of those 19 articles, one is apparently in Italian and another is in Swedish.  Three others are copied in full but deal with the more predictable confusion of LOSEC and LASIX.  I do not think these are particularly relevant to the marks with which I am concerned.

Perhaps some of the articles that are not reprinted in the evidence are no more than salutary warnings about the serious consequences of blunders that had little to do with ordinary standards of care.  In some instances, such as PRILOSEC/PROZAC, it seems to me that there must be more to these confusions than mere resemblance of marks.  I accept that some other articles, to judge simply from the titles involved, do bear on the issue.  However, they add nothing that cannot be got from the ordinary canons of comparison of marks.

When I allow as best I can for the likely opinions, perceptions and actions of those who dispense, administer or buy medicines or other relevant goods, either over the counter or on prescription, I think that the differences between CICATRIN and CICADERMA simply overbalance the four letters in common.  There is no reasonable likelihood that anyone will either overlook or misinterpret the significance of the differences between the marks.  These goods are medicines, administered or bought, even by the sick, with at least some attention to brand names.  I am therefore satisfied that there is not a sufficient likelihood of deception or confusion between the two trade marks.

Because of that, Glaxo is unable to establish any of its grounds of opposition.  That is significant, because Glaxo, if registration is to be impeded, must make the initial case.  Under the 1995 act, given the terms of s 33, to which s 44 is subject, and the overall terms of s 55, there is a responsibility on Glaxo to establish, at least prima facie, a ground of opposition. 

I conclude that no ground has been established under the following headings, all those on which Glaxo relied:

• S 44: prior registration of a deceptively similar or substantially identical trade mark

• S 60: prior reputation in a deceptively similar or substantially identical trade mark

• S 43: mark likely to deceive or confuse by reason of a connotation that it, or part of it, has.  I reject any suggestion that the opposed mark CICADERMA has such any connotation inherent to it.  It is a made-up word, meaningless.

• S 41: not capable of distinguishing.  Under this heading, Mr Walton argued that, if there are trade marks that, for reasons set out above, are conflicting, the applicant's mark must fail under this heading also.  I believe this is wrong in principle.  See the decision of the Full Federal Court in Murray Goulburn Co-Operative Company Ltd v New South Wales Dairy Corporation, 16 IPR 289 at 303. This decision refers to the Trade Marks Act 1955.  However, the general principle is applicable and office decisions on this question, over a period of many years, are consistent with it.  The full Federal Court said:

  At the stage of an application to register a trade mark the requirement of distinctiveness is not regulated by s 28. That topic is dealt with by ss 24, 25 and 26. The Act recognises that, whilst a trade mark may have a degree of distinctiveness that qualifies it for registration under s 24, its distinctiveness may not be sufficient to prevent the use of the mark from being likely to deceive or cause confusion. Hence the presence of s 28, and ss 34 and 58 (3) which deal with the honest concurrent user of marks which are substantially identical or deceptively similar. The characteristics of deceptiveness and lack of distinctiveness may overlap, or to use the expression of Kitto J in Bayer Pharma Pty Ltd v Farbenfabriken Bayer AG (1965) 120 CLR 285 at 303 “tend to run into one another”. Where they do, those provisions of the Act which deal with distinctiveness, and those which deal with the likelihood of deception or confusion both come into play, but it does not follow that the scope and meaning of the various sections alter. It is simply the case that the mark, if it is to gain (or retain) registration, must comply with the provisions of the Act on both topics.

Conclusion

Glaxo has failed to establish any ground of opposition.  In terms of s 55, I therefore decide to register the application.  I direct that, in the absence of appeal from this decision, registration proceed.

I also order that Glaxo pay the applicant's costs, in accord with the scale.  If necessary, those costs will be taxed, allowed and certified by the appropriate officer.

Terry Williams
Hearing Officer

14 April 2000