GlaxoSmithKline LLC, SmithKline Beecham (Australia) Pty Ltd and SmithKline Beecham Limited v AFT Pharmaceuticals Limited

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by GlaxoSmithKline LLC, SmithKline Beecham (Australia) Pty Ltd and SmithKline Beecham Limited to registration of trade mark application 1397141 (5) - PARACETAMOL OSTEO-TAB - in the name of AFT Pharmaceuticals Limited

Delegate: Michael Kirov

Representation: Opponent: Frances Drummond of Norton Rose Fulbright Australia, assisted by Sophia Christou of the same firm
Applicant: Tony Pietras of A.J. Pietras & Co

Decision: 2014 ATMO 100
Section 52 opposition: ss 41, 42(b), 60 and 62A considered – trade mark capable of distinguishing the Applicant’s goods – use not likely to mislead, deceive or cause confusion – application not made in bad faith – registration to proceed.
Background

This is an opposition by GlaxoSmithKline LLC, SmithKline Beecham (Australia) Pty Ltd and SmithKline Beecham Limited (all being related companies and referred to collectively hereafter as “the Opponents”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of AFT Pharmaceuticals Limited (“the Applicant”):
Application No:         1397141
Priority Date:            30 November 2010
Trade Mark:              PARACETAMOL OSTEO-TAB   (“the Opposed Mark”)
Goods:Class 5: Pharmaceutical preparations; pain relieving preparations; medicines for human purposes   (“the Applicant’s Goods”)
Endorsements:It is a condition of registration that any use in respect of pharmaceutical preparations, pain relieving preparations and medicines for human use will be limited to such goods containing the substance designated by the International Non-Proprietary Name PARACETAMOL. Provisions of subsection 41(5) applied.
During examination, an objection under s 41(5) of the Act (as it stood prior to 15 April 2013) was maintained against the application. Following an ex parte hearing held in September 2012 and the filing of a Statutory Declaration outlining the Applicant’s intention to use the Opposed Mark made on 20 September 2012 by Vladimir Ilievski, the Applicant’s “Regulatory Affairs Manager” (“Ilievski”), a delegate of the Registrar of Trade Marks accepted the mark for registration with the two endorsements indicated above. This was advertised on 22 November 2012 and the Opponents filed a Notice of Opposition (“the Notice”) on 13 March 2013.
For their evidence the parties rely on the following Statutory Declarations:
Evidence in Support
▪ Karyn Louise Tomkins made on 25 June 2013, with Annexures KLT-1 to KLT-28 (“Tomkins”)
▪ Sophia Nicole Christou made on 15 July 2013, with Annexures SNC-1 to SNC-5 (“Christou”)
Evidence in Answer
▪ Dr Hartley Campbell Atkinson made on 13 November 2013, with Exhibits HCA-201 to HCA-209 (“Atkinson”)
(Atkinson includes as part of Exhibit HCA-202 a full copy of Ilievski with its (sole) Exhibit VI-1)
▪ Dr Dianne Frances Bardsley made on 15 November 2013, with Exhibits DFB-001 to DFB-002 (“Bardsley”)
Evidence in Reply
▪ John Alfred Bell made on 14 February 2014, with Annexure JAB-1 (“Bell”)
Further Evidence (in Answer)
▪ Dr Geraldine Moses made on 8 July 2014, with Exhibits GM-001 to GM-002 (“Moses”)
I will refer to the parties’ evidence further, as necessary, in the “Discussion” section below. For the present I note that the three opposing parties are all related in that they are part of the GlaxoSmithKline Group (“GSK Group”), described in the Opponents’ attorney’s submissions as “a global group of research-based pharmaceutical and healthcare companies.” Karyn Tomkins is “Marketing Director (Australia and New Zealand)” with GlaxoSmithKline Australia Pty Ltd, another member of the GSK Group. In her declaration she describes “The history of Panadol Osteo”, the claimed reputation of which product underpins not only the s 42(b) and s 60 grounds of opposition discussed below, but also the Opponents’ s 62A ground:
9. The Panadol brand was first launched in Australia by the GSK Group in 1954. I believe that, based on independent research and given the extensive promotion of the Panadol brand and the popularity of Panadol products in the market during this time, the Panadol name and get up are very well known to Australian consumers.
10. Annexed hereto … is an extract from the Australian Trade Marks Register. The extract shows that 15 Panadol trade marks, which comprise or incorporate the word “panadol”, are registered in the name of GSK Group companies. Fourteen Panadol trade mark registrations claim goods in Class 5.
11. PANADOL is a registered trade mark and the “osteo” element is descriptive of the purpose for which the Panadol Osteo product was designed, that is, as a treatment for bone/joint pain in connection with osteoarthritis.
12. The GSK Group has always marketed Panadol Osteo in such a way as to make it clear to patients and purchasers that the Panadol Osteo product is a variation of Panadol in a dosage format specifically designed for the treatment of osteoarthritis related pain.
Alternatively, in effect, the Opponents also maintain that the Opposed Mark contains no inherent adaptation to distinguish the Applicant’s Goods and that it should thus not qualify for registration as a trade mark, notwithstanding the evidence of intended use (contained in Ilievski) and actual use (contained in Atkinson) relied on. In this regard Ms Tomkins exhibits material suggesting the elements OSTEO and TAB appearing in the Opposed Mark “have common, widely understood meanings” and adds:
16. I believe that the Opposed Trade Mark is an attempt by [the Applicant] to obtain a monopoly over the generic words osteo and tab, which are words widely used in the names of a number of over the counter consumer health products in the Australian market.
She also highlights the fact that:
18. Paracetamol is an International Nonproprietary Name [“INN”][1] for the active ingredient in numerous analgesics including Panadol.
[1] An INN is essentially a name for a pharmaceutical substance which the World Health Organisation has determined is generic and which should accordingly be available for use by anyone.
The Applicant, for its part, was incorporated in New Zealand in September 1997 and Dr Hartley Atkinson is its “founder, owner and a director.” He explains that:
2. I have been running [the Applicant] for 16 years and prior to that worked for 8 years for multinational pharmaceutical companies in various positions including Medical Director and Sales/Marketing Director. [The Applicant] is privately owned with offices in Australia and New Zealand, with a presence in South East Asia operating from a regional office in Kuala Lumpur, Malaysia. [The Applicant] operates as a full service pharmaceutical company and undertakes drug development activities including clinical trials. [The Applicant] also distributes pharmaceuticals for a number of overseas entities and has a sales team visiting pharmacies and hospitals in both Australia and New Zealand.
3. [The Applicant] sponsors and sells a drug which provides pain relief for people who suffer from arthritis. The drug is sold under the [Opposed Mark]. [The Applicant] has…a New Zealand trade mark registration for [the Opposed Mark]…
…
5. IP Australia raised objections against the [opposed] application to begin with. … The objections were later withdrawn… In fact, in Australia acceptance occurred after detailed, high level scrutiny of the [Opposed Mark] at a hearing.
As regards use of the Opposed Mark in Australia, Dr Atkinson says:
20. The TGA[2] approved the use in Australia of the “Paracetamol Osteo-Tab” name and product on 26 October 2012…
…
30. [The Applicant] launched “Paracetamol Osteo-Tab” onto the Australian market in March 2013. The product is being sold throughout Australia, in fact it is being distributed and sold in every State in Australia.
[2] The Therapeutic Goods Administration or “TGA” is part of the Federal Department of Health and is Australia’s regulatory authority for therapeutic goods.
I heard the matter as a delegate of the Registrar of Trade Marks on 15 August 2014 in Sydney. Frances Drummond of Norton Rose Fulbright Australia, assisted by Sophia Christou of the same firm, appeared for the Opponents. Ms Drummond’s oral submissions were supplemented by written submissions emailed to the Applicant’s representatives and me on 4 August. Tony Pietras of A.J. Pietras & Co appeared for the Applicant, with his oral submissions supplemented by written submissions emailed to the Opponents’ representatives and me on 8 August.
Grounds of Opposition
The Notice lists 10 grounds corresponding to specific provisions of the Act. However prior to the hearing the Opponents’ attorneys confirmed that only those grounds based on sections 41, 42(b), 60 and 62A of the Act were pressed. I treat the remaining grounds listed in the Notice as abandoned. The four grounds pressed are discussed below, where I have found it convenient to commence with the s 41 ground, followed by the ss 60, 42(b) and 62A grounds in that order.
The Relevant Date
As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[3] the relevant date at which the rights of the parties are to be determined is the date of the opposed application, in this case 30 November 2010 (“the Priority Date”).
[3] (1954) 91 CLR 592 at 595.
Onus and Standard of Proof
To succeed in their opposition the Opponents bear the onus of establishing at least one of the four grounds pressed. I confirm I am proceeding on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[4]
Discussion
[4] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].
Section 41
The ground based on s 41 is indicated in the Notice as follows:
The Opposed Mark is not capable of distinguishing the Applicant’s [Goods] from the goods or services of other persons (s 41).
I firstly note that as from 15 April 2013 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 repealed s 41 of the Act as it then stood and substituted new wording. The Registrar’s position is nevertheless that the now repealed section continues to apply to trade mark applications filed before that date.[5] Accordingly the repealed section remains relevant here and all references to s 41 in this decision are to the section as it stood prior to its amendment, as set out below:
[5] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50.
Trade mark not distinguishing applicant's goods or services
41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a) the Registrar is to consider whether, because of the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.
Note 1: For goods of a person and services of a person see section 6.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6) If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
The Opponents’ position as put in Ms Drummond’s written submissions is that:
The Opposed Mark consists of the ordinary English words or partial words PARACETAMOL, OSTEO- and TAB, Annexures KLT-3, KLT-5. When combined into the Opposed Mark, these words together are likely to be understood by consumers and other traders in Australia as describing the nature and intended purpose of the Applicant’s Goods. Other traders are therefore likely to want to use the Opposed Mark, or a very similar mark, in connection with their own similar goods, without improper motive.
I interpose to mention that the Annexures KLT-3 and KLT-5 (to Tomkins) referred to are copies of (redacted) definitions of “tab” and “osteo” downloaded from online dictionaries. The sole definition of “tab” annexed offers as an “informal” meaning “a tablet, as of a drug. [1960-65; by shortening]”. The other annexed definitions indicate “osteo” to be a prefix or “combining form” of Greek origin meaning “bone”. I note also in passing that KLT-4, (which was not mentioned in the Opponents’ submissions), is “advice obtained by the GSK Group from an academic expert (being the Professor of Pharmacy Practice, Head of School at University of Technology Sydney) on the general use and meaning of the words tab and osteo”, which states:
I think the words [sic] “tab” is one that would be in general use in pharmacy and would [sic] any type of tablets. With respect to the term “osteo” my view is that is [sic] would be interpreted to have several meanings when in general use in community pharmacy. It may refer to a disease or to [sic] may be also applied to products.
Ms Drummond’s written submissions continue:
The evidence in Bell shows that the Opposed Mark is totally lacking in any capacity to distinguish the Applicant’s Goods. Mr Bell is a highly regarded expert in the field of community pharmacy in Australia. Mr Bell has extensive, lengthy experience in pharmacy practice, the pharmacy industry, and the fields of consumer health information and pharmacist training.
Mr Bell states that “most consumers would think that ‘paracetamol osteo-tab’ means a product formulated as a tablet which contains paracetamol, in a dose indicated for the treatment of chronic pain” : Bell, para 20.
The Applicant’s [own] evidence will lead the Registrar to the same conclusion, that is, that overall the Opposed Mark “suggests the product is a paracetamol tablet for dealing with something related to the bones”: Moses, para 15.
This evidence supports the Opponent[s’] view that the Opposed Mark should not be registered, given it is descriptive of the Applicant’s Goods, the Opponent[s’] Goods,[6] and other similar paracetamol products offered for treating pain caused by osteoarthritis and other bone and joint conditions.
This is not a case where, on hearing the Opposed Mark in full and in connection with the Applicant’s Goods, the relevant consumer would need to stop to reflect and ask themselves what meaning the words could really possess: Mark Foy’s Limited v Davies Coop & Company Limited (1956) 95 CLR 190, per Dixon J at 195. Rather, when taken as a whole, PARACETAMOL OSTEO-TAB does convey a “meaning or idea sufficiently tangible to amount to a direct reference to the character or quality of the goods”.
It is established that when considering the registrability of a trade mark, the mark should not be dissected into its component words, but must be taken as a whole. This assists the Opponent[s’] position that, whether seen or heard as a whole, the Opposed Mark is not to any extent capable of distinguishing the Applicant’s Goods. In this respect, it is relevant to consider why the Opposed Mark lacks distinctiveness, by reference to the descriptive elements comprising the whole mark.
[6] Defined earlier in Ms Drummond’s submissions as the “PANADOL Osteo paracetamol product [which] is marketed to consumers as a treatment for bone and joint pain caused by osteoarthritis.”
While the last paragraph quoted above does appear somewhat contradictory in itself, the submissions then go on to analyse the individual elements PARACETAMOL, OSTEO and TAB. As regards the INN “paracetamol”, the submissions note that it is “non-proprietary and should be available for any person to use without hindrance.” In this regard Ms Drummond referred to copies of World Health Organization guidelines on the use of INNs (annexed to Tomkins) and related IP Australia guidelines (annexed to Christou). In particular she noted that Section 25 of Part 22 of the Trade Marks Office Manual of Practice and Procedure (“the Manual”) currently states that “Grounds for rejection under section 41 exist where a trade mark to be used in relation to pharmaceuticals or veterinary substances is identical or confusingly similar to [an INN],” submitting that:
The descriptive INN PARACETAMOL is an essential feature of the Opposed Mark. It is the first and dominant word in the Opposed Mark, and it contains the most syllables of the 3 words comprising the Opposed Mark.
The fact that paracetamol products have been on the market since at least 1954 and there are no other registered or accepted trade marks in Australia for PARACETAMOL (except for [SmithKline Beecham Limited’s] registration no. 731958, a composite series mark for a distinctive PANADOL pack image, on which the word “paracetamol” appears only to describe the active ingredient of the goods) is testament to the fact that this INN should not be registered now.

There is on the face of it an inherent contradiction in the fact that the element PARACETAMOL is an INN, being a recognized descriptive term available for all to use, and Ms Drummond’s submission that it constitutes an “essential feature” of the Opposed Mark. That the element is an INN is clearly recognized by the Applicant, given the endorsement to that effect to which the Applicant has already agreed. It would also be immediately apparent to any interested party consulting the Register. I do not accept, moreover, that registration of the Opposed Mark as a whole is the same thing as registration of the INN itself, as apparently claimed in the above-quoted submission. Registration would give the Applicant no rights at all in the INN per se, just as SmithKline Beecham Limited’s registration 731958 gives no rights in the INN to its owner. As Mr Pietras emphasized in his submissions on this point, referring to Lawrence J’s well known decision in Diamond T Motor Car Company’s Application,[7] it is well established that “registration of a combination of non-distinctive terms does not provide a monopoly in the terms individually.” Nor, given the generic character and, as the evidence indicates, widely known meaning of the INN “paracetamol”, do I consider the Opposed Mark as a whole to be “confusingly similar” to the INN per se.
[7] (1921) 38 RPC 373 at 380 (English High Court of Justice).
At the hearing Ms Drummond nevertheless submitted that, although it may have since changed, the Registrar’s policy regarding claimed trade marks which contained or consisted of INNs as at the Priority Date was different from what is now stated in the Manual, whose current version was last amended on 15 March 2013. Although she did not say what specifically had changed, she did ask that I indicate in my decision why the Applicant should be able to rely on a guideline apparently dating from March 2013, when the opposed application had been filed more than two years before then. The reason, (assuming for the moment that the presumed amendment to the relevant guideline was material to the present application), is that the Registrar’s practice as set out in the Manual is not a definitive statement of the law as such. Rather, it is an interpretation of the law as the Registrar sees it at a given time, which is constantly updated following clarification by the Courts or following closer examination of the practice in light of matters otherwise brought to the Registrar’s attention. While an applicant would generally be bound by whatever the prevailing law was at the time of applying to register its claimed mark, it would be quite unreasonable to maintain it should also be bound by an interpretation of that law subsequently recognized as unclear or incorrect. That said, in this case I do not believe the relevant guideline has changed in the Applicant’s favour since the Priority Date in any event. If anything, the opposite may be the case since the December 2008 version of the guideline (which happens to be in my possession) is essentially identical to the 2013 version, except that currently marks that are “identical or confusingly similar” to an INN are mentioned, whereas in 2008 only marks which were “substantially identical” to an INN were indicated as being objectionable.
Turning to the element OSTEO, the Opponents’ submissions rely, inter alia, on the response in Bell to a statement in Bardsley concerning the part-word’s significance to “the ordinary Australian”. Dr Dianne Bardsley (BA (1979), M Ed (1990), Dip Tchg (1984) and Phd (2003)) is an academic and lexicographer, employed within the School of Linguistics and Applied Language Studies at Victoria University, Wellington for some 15 years, who has also worked over this period compiling dictionaries and thesauruses for Oxford University Press (“OUP”). Between 2005 and 2013 she helped compile six English language dictionaries, published in Melbourne, for OUP Australia and New Zealand and she was President of the Australasian Association for Lexicography between 2008 and 2010. Dr Bardsley has authored or co-authored articles on the similarities and differences between Australian and New Zealand English and currently supervises English PhD students. She considers her academic training and work and life experience have given her “expertise in the English language and its use in Australia.” As regards the element OSTEO she says:
8. The term “osteo” is a combining form or word fragment, incomplete in itself, indicating a relationship to bones. The Macquarie Dictionary (Rev. 3^rd ed. 2003) defines it as “a word element meaning ‘bone’. Also (before vowels), oste-. [Gk, combining form of ostéon]” In my view it does not have particular significance to the ordinary Australian. “Osteo” when used as a compound with other terms is used in different contexts, for example in the domains of geology, zoology, dietetics, circulation, and calcification.
Like Dr Bardsley, Mr Bell is also very well credentialed. Among other things, he is a pharmacist with some 48 years experience “as a manager and/or proprietor of a community pharmacy”, is a Vice President of the International Pharmacy Association and is in addition “employed as a Specialist Practitioner/Teacher in Primary Health Care at the Graduate School of Health, University of Technology, Sydney.” He responds to Dr Bardsley’s above-quoted view as follows:
26. I agree with Dr Bardsley’s statement, at paragraph 8, of her declaration, that the term “osteo” is “a word fragment”, “indicating a relationship to bones”. However, I believe that she is incorrect in saying that “osteo” is “incomplete in itself.” In my experience, the term “osteo” is often used by people with osteoarthritis to describe their condition, albeit as an abbreviation of the word “osteoarthritis”.
27. I disagree with Dr Bardsley’s statement, at paragraph 8, that the word “osteo” “does not have particular significance to the ordinary Australian.” It is my experience that the term is understood by the majority of pharmacy consumers as describing a painful condition affecting the joints.
I note that earlier in his declaration and referring to the Opposed Mark as a whole, Mr Bell also said:
15. I understand the phrase “paracetamol osteo-tab” to describe a product purporting to be the generic (and probably less expensive) equivalent to the widely prescribed and, I believe, widely known Panadol Osteo. My knowledge of Panadol Osteo is that it is a product marketed for the long term treatment of chronic pain, especially pain related to osteoarthritis.
16. I believe that consumers, certainly those attending pharmacies, would have a similar understanding to me of the words “paracetamol osteo-tab”. In my experience, the term “osteo” is well known by medicine consumers as relating to bone health.
17. I also base my belief on the fact that the word “osteo” is included in the name of products marketed for treating pain, such as Panadol Osteo and Voltaren Osteo Gel. I believe that because of the presence of these products on the market, consumers understand products with the word “osteo” in their name as being associated with treatments for chronic muscular and joint pain.
Pointing to these statements by Mr Bell, Ms Drummond submitted that, in addition to being “a combining word, referring to the bones”:
The term “osteo” is also used colloquially by consumers in Australia to refer to bone or joint complaints, particularly to osteoarthritis, demonstrating that the term ‘osteo’ does have a commonly understood meaning among relevant consumers.
Mr Pietras had a somewhat different view of Mr Bell’s evidence. He submitted that taken at face value it indicated “this word ‘osteo’ is a genuine gymnast.” In this regard he argued that Mr Bell had effectively offered several different explanations of the (part) word’s significance in his declaration such as “to describe a treatment of, or particular condition affecting the bones” (para 13); “often used colloquially by patients as an abbreviation for osteoarthritis” (para 13); (in the context of the Opponents’ Panadol Osteo product) “for the long term treatment of chronic pain, especially related to osteoarthritis” (para 15); “by medicine consumers as relating to bone health” (para 16); “[understood by consumers] as being associated with treatments for chronic muscular and joint pain” (para 17); by “consumers [in the context of the Opposed Mark as a whole] as for the treatment of chronic pain” (para 20); and “by pharmacy consumers as describing a painful condition affecting the joints” (para 27). He particularly questioned Mr Bell’s view that it was “often” used by consumers as an abbreviation for osteoarthritis, arguing in his written submissions that:
Mr Bell suggests that some people he has encountered in the past have used “osteo” to mean “osteoarthritis”. However it is notable that [the Opponents’] dredge of the internet[8] did not pull up anything to support this. What the dredge did do is show that when the disease is referred to it is called “osteoarthritis”, or sometimes abbreviated to “OA”.
Even if Mr Bell has heard one or two people say “osteo” when they meant “osteoarthritis”, he does not say how many or how often, and he does not say how long ago it was. If there were only one or two people, and if for example it happened decades before the priority date, then it really is of no moment. There will always be one or two people out there who use the English language incorrectly, but that does not define what is normal or apt speak within a society made up of some 23 million people. We respectfully submit that Mr Bell’s evidence is far too sketchy and incomplete to have any proper influence on these proceedings, particularly when it is [at] odds with the evidence of 2 genuine experts; namely Dr Bardsley and Dr Moses.
[8] Earlier in his written submissions Mr Pietras had characterised Ms Tomkins’ evidence as “effectively a trawl through the internet to dredge up whatever could be found, [which was] inherently unreliable [because] when an interested party trawls through the internet they are really just cherry picking. They will only report what they see as helpful to their cause, as opposed to providing an objective and accurate picture of the actual marketplace as a whole.”
In support of Mr Bell’s evidence that “the term ‘osteo’ is often used by people with osteoarthritis to describe their condition, albeit as an abbreviation of the word ‘osteoarthritis’,” Ms Drummond highlighted five examples of “other pharmaceutical and healthcare products” advertised on the Internet and shown in an annexure to Tomkins, which she identified as “Voltaren Osteo Gel”, “Everest Osteo Active”, “OsteoEze Active”, “Nature’s Way Joint Restore Osteo Krill” and “Ostelin Osteogard”. It is I think significant to note, nevertheless, that with the exception of the Voltaren product, the annexed examples show use of the various “house marks” Everest, Nature’s Way and Ostelin quite separately from the additional words mentioned. As indicated in Atkinson and highlighted by Mr Pietras, moreover, OsteoEze Active is currently a registered trade mark covering relevant pharmaceuticals in Class 5 (as, for that matter, are OsteoEze, OsteoEze Bone & Joint and OsteoEase). So too are marks such as King Krill Osteo, OSTEOHEALTH, OSTEOCARE, Osteoplus and other similarly constructed marks. Thus, even assuming the Opponents are correct in believing “the term ‘osteo’ does have a commonly understood meaning among relevant consumers”, this would not of itself necessarily mean that the Opposed Mark as a whole contains no inherent capacity to distinguish the Applicant’s Goods as is submitted.
As regards the element TAB, Mr Bell says:
In the context of medicines, “tab” is an abbreviation for the word “tablet”. This word is commonly used by doctors and pharmacists as an abbreviated form of “tablet”, and, I believe, is well understood as such by consumers.
For her part, after mentioning some of its principal meanings, Dr Bardsley says:
In some cases [“tab”] can also be used as a contracted form of the word “tablet” although this is not very common in everyday usage. It is for the most part only used that way in product branding.
Included in an annexure to Tomkins were “copies of consumer healthcare brand and online pharmacy website pages showing the use of the words osteo and tab with respect to a range of over the counter health products, including Osteo Gel, Osteoeze, Calci-Tab, Ferro-f-tab, Ferro-tab and lax-tab.” I have already mentioned the fact that Osteoeze is a registered trade mark (considered prima facie registrable in 1978 for “Pharmaceutical preparations, including analgesics and pain relievers; liniments, pain relieving gels and creams; anti-inflammatory preparations; food supplements for therapeutic or medicinal purposes” in Class 5). Mr Pietras noted, moreover, that there was some irony in the selection of “TAB marks” included in the annexure since, as indicated in Atkinson, CALCI-TAB, Ferro-Tab and Lax-Tab (and, for that matter, another similarly constructed mark, Femme-Tab) are all registered trade marks owned by the Applicant itself. I note all cover, inter alia, “pharmaceuticals” generally in Class 5 and all were considered prima facie registrable. The point made by Dr Atkinson when referring to these registrations was that:
[Tomkins]…lists 4 products containing the suffix “tab” under the heading “Osteo and tab are generic terms”, stating that these are examples of use of the term “tab” with respect to a range of over the counter health products. The 4 examples given are all [the Applicant’s trade marks]. I find it telling that the examples given were [the Applicant’s] registered trade marks. I think it indicates that the word “tab” can and does work well as part of a trade mark.
Ms Drummond acknowledged that the Applicant was the owner of registrations for the “TAB marks” mentioned, but submitted:
By the Applicant’s own evidence, the use of TAB as an element of “pharmaceutical brand names” is common to the trade: Moses, para 14.
The Opponents maintain that OSTEO-TAB would be readily understood by the relevant consumer as a direct reference to a “tab” or tablet intended for use in relation to osteo- related pain: Bell, para 31; Moses, paras 13 and 14. The test for lack of distinctiveness is not whether relevant consumers would use the Opposed Mark (or its elements) in everyday conversation.
It is convenient here to note that whether or not the element TAB is “common to the trade” is not determinative of the issue I must decide under s 41 which, as Ms Drummond elsewhere acknowledged, concerns the capacity of the Opposed Mark as a whole to distinguish the Applicant’s Goods. I note too that whether or not the combined elements OSTEO-TAB would be “readily understood by the relevant consumer” is likewise not determinative. A trade mark such as LIQUID NAILS for “General purpose adhesives” in Class 1[9] would presumably be “readily understood” by purchasers of adhesives, yet is nonetheless perfectly capable of distinguishing such goods from the similar goods of other traders. It is perhaps worth mentioning, too, that the terminology “direct reference” used by Ms Drummond comes from s 24(1)(d) of the now repealed Trade Marks Act 1955 which, unlike the current legislation, specifically excluded such marks from registration on a prima facie basis in Part A of the then two part Register as distinctive marks. It is however now not necessary that a mark be distinctive as at its filing date to achieve registration unless the mark, as a whole, contains no inherent adaptation to distinguish the designated goods or services (which, to be fair, Ms Drummond submitted was the case with the Opposed Mark) and s 41(6) of the Act then falls for consideration. As will become apparent, I do not believe the Opposed Mark is in this category.
[9] Australian trade mark registration 350503, considered prima facie distinctive in 1980 and registered as such in Part A of the then two-part Register.
I note also in this context that Atkinson sets out details of several registered trade marks in Class 5 owned by third parties which feature the element TAB, all of which were considered prima facie registrable notwithstanding their “meaning” might arguably be readily understood by consumers. These include 155316 SINUTAB (for “Sinus headache tablets”), 1165871 SuperTab (for, inter alia, “Pharmaceutical preparations and substances”), 1203235 TAB POCKET (for, inter alia, “ingestible pouch sold empty for use in encapsulating and aiding the oral administration of medication and vitamins”) and 1298552 INTELLITAB (for, inter alia, “solid oral dosage forms in tablet form which allow for controlled release or controlled delivery of one or more pharmaceutical substances or active pharmaceutical agents”).
That said, in the submission quoted in paragraph 30 above Ms Drummond refers to the declaration of Dr Geraldine Moses, (which constitutes the Applicant’s “Further Evidence in Answer” to the opposition). It is useful at this point, I think, to set out what Dr Moses said in detail, since she appears very well positioned to comment on the Opposed Mark and I have found her evidence persuasive. Holding the qualifications BPharm, DClinPharm, FPS, FACP, MSHP, AACPA and MRPharmS, Dr Moses is a “hospital pharmacist” by profession and “work[s] directly with consumers both in hospital and in the community”. She currently works at the Mater Hospital in Brisbane in the Academic Practice Unit training hospital staff and “also offering a service called MedsCheck (which is Medicare funded) through our outpatient pharmacies [which] involves consulting with the general public about their medicines.” She continues:
This involves consulting with members of the general public about their medicines, checking how they are managing with their medicines, identifying any medication-related problems and composing an action plan for their resolution. I also consult with the GPs in my local area who occasionally refer their patients to me for Home Medicine Reviews.
2. I began specialising in consumer drug information in 1990 when I used to present a weekly medication talkback segment on ABC Radio Queensland. I did this for 14 years and the segment was broadcast nationally for three of those years. The radio show demonstrated the need for expert drug information at the consumer level, which led my colleagues and I to establish the Queensland Medication Helpline at the Mater Hospital in 1995. In 2002 this became a national service called The Medicines Line, which I managed and staffed until it devolved to Sydney in 2011. It involved talking to a broad range of consumers about their medicines, answering questions and finding solutions to their medication-related concerns. From this work I developed and staffed the Adverse Medicine Events Line, one of the first adverse drug reaction (ADR) reporting lines for consumers in the world, which formed the basis for my doctoral thesis researching the differences between health professional and consumer ADR reporting.
3. In my spare time I teach both at an undergraduate and postgraduate level to pharmacists, doctors, dentists, nurse practitioners, and optometrists. I also contribute regularly at seminars and conferences to medical and allied health professionals. My colleague Debbie Rigby and I also occasionally host our own seminars via our website also consult to organisations such as the Australian Dental Association, the Department of Veteran Affairs and the Rural Health Education Foundation. I recently established a national drug information service for the Australian Dental Association. In 2002, I was named Pharmaceutical Society of Australia’s Australian Pharmacist of the Year.
5. My curriculum vitae is attached as Exhibit GM-001.
6. Throughout all of my career I have had substantial and regular direct contact with consumers/patients in Australia regarding their medications, including helping people who suffer from pain and take drugs such as paracetamol for arthritic diseases of all kinds. I mention paracetamol and arthritic diseases specifically as I understand they have relevance to this matter and that my comments need to be on point to be helpful.
7. I have interacted often and at length with patients about their arthritis, for example rheumatoid arthritis and osteoarthritis. Indeed I am an Ambassador for Arthritis Queensland, which is the main support group for consumers with arthritis in our state.
8. I believe I have extensive and comprehensive knowledge regarding the language consumers use to describe arthritic conditions and the medicines they use to manage them. Similarly I have had, and continue to have, substantial and regular discussions with Australian health professionals such as doctors, pharmacists and nurses about arthritic diseases and the medications used in these conditions including paracetamol. It is all a routine part of my work.
9. I have been asked to comment on how pharmacies, doctors, nurses and other medical professionals, and Australian consumers who use or purchase medications would interpret the term “Paracetamol Osteo-Tab” if it was used in connection with a pain reliever medicine. I understand an issue is whether it would be interpreted as a brand name or as something to communicate information about a product. I believe this is well within my expertise to answer. I understand that my comments will be used to assist IP Australia to decide a legal dispute.
10. To me “Paracetamol Osteo-Tab” comes across as a brand name for a medicine that contains the active ingredient paracetamol. I believe health professionals and consumers would also see it that way. I say this firstly because the term “Osteo-Tab” is too contrived and commercial-sounding to be anything else. Secondly, phrasing things with the active ingredient linked with a contrived term or the manufacturer’s name is consistent with the plethora of generic medicines that occupy the Australian pharmaceutical market these days. For example, some other brands of generic paracetamol on the Australian market include Pharmacy Choice Paracetamol and Paracetamol Sandoz. Consumers are used to this.
11. I don’t believe the brand name “Paracetamol Osteo-Tab” indicates what disease the paracetamol is intended for. Health professionals and consumers would know that paracetamol is used for pain management, and “osteo” implies something to do with bones, but there are many bone diseases that involve pain, and there is not enough information there to say just what it is used for.
12. The term “osteo” hints at something to do with bones, but it could be anything to do with bones. In the medical field the prefix “osteo” is connected with an array of bone disorders, for example osteogenesis imperfecta (impaired formation of bones), osteomalacia (softening of bones), osteomyelitis (inflammation of bones), osteoporosis (thinning of bones), and osteoarthritis (degeneration of joint cartilage). In my experience of contemporary language in the pharmaceutical industry “osteo” doesn’t communicate anything definite or concrete. As I said, it merely suggests something to do with bones.
13. I understand it has been suggested that “Osteo” may be used colloquially by contemporary consumers as an abbreviated term for osteoarthritis. I do not agree. In my experience of modern professional and consumer pharmaceutical terminology people just don’t speak like this.
14. The “Tab” part of the term might be taken as pointing to a tablet, but I do not think either health professionals or consumers would use the term “tab” in normal language. If they did it would be pretty rare. It just doesn’t resonate very well as a description. It is the sort of shortened form one typically sees in brand names.
15. In terms of a meaning for “Paracetamol Osteo-Tab” overall, in my view it suggests the product is a paracetamol tablet for dealing with something related to the bones. But just what it is saying about the bones is unclear and one can’t really come to a conclusion one way or the other. While I can glean this general or vague meaning from the combination, in my view it comes across as just another brand name in a format consistent with branding practices for medicines I have observed in Australia. In my view the overall phrase is too far removed from the normal Australian colloquial and formal language to catch on as a relevant or normal expression.

I mention that Dr Moses’ view as to the meaning of the Opposed Mark as a whole is consistent with that of the lexicographer Dr Bardsley, who says that, “In a career researching language and idiom, and paying attention to words and linguistics, I have never come across [the collocation ‘paracetamol osteo-tab’] in the course of my language work.” Noting that, “As far as I am aware from my investigations, the term as a whole has no dictionary meaning and the term ‘Osteo-Tab’ has no dictionary meaning,” Dr Bardsley continues:
10. …Combining the terms “Paracetamol” and “Osteo-Tab” into one compound term creates a new term that in my opinion is not a known English term in the context of normal Australian English. While it is possible to break it down into pieces and elicit various meanings, it is my opinion that this term is unusual as a combination.
11. While “Paracetamol Osteo-Tab” is made up of words or contractions that can each be given a meaning, and each individual meaning can be pieced together to hypothesize an overall meaning, in my view the combination is not a natural or logical one for someone wanting to use proper, slang or colloquial Australian English to describe something. It is all a bit of a mouthful.
12. Because of the above, on seeing “Paracetamol Osteo-Tab” I believe that the average Australian would assume it to be a brand name. Australians and consumers generally are exposed to a significant amount of advertising and so are used to seeing different words put together to create a unique brand effect. In my view Australians know that words and word fragments run together in an unusual way, as described above, are more likely to be a brand name. As someone who has spent a long career studying words and language, with an emphasis on Australian and New Zealand linguistics, it is my view that “Paracetamol Osteo-Tab” is not the sort of thing that others would in normal use want to use to communicate something about a medicine.
As mentioned earlier, in apparent contrast to the opinions of Dr Bardsley and Dr Moses Mr Bell said that he “understand[s] the phrase “paracetamol osteo-tab” to describe a product purporting to be the generic (and probably less expensive) equivalent to the widely prescribed and, I believe, widely known Panadol Osteo” and that he “believe[s] that consumers, certainly those attending pharmacies, would have a similar understanding to me of the words “paracetamol osteo-tab”. Mr Pietras accepted these opinions were at odds, albeit that Mr Bell was “out numbered”, adding:
We accept that being out numbered does not of itself settle the matter, but we say that at the very least there is a clear conflict of expert opinion. In such cases the [A]pplicant should be given the benefit of the doubt because in opposition proceedings there is a presumption of trade mark validity and [the Opponents] bear the burden of proof.
To the extent that some meaning could be gleaned from the Opposed Mark, Mr Pietras submitted that “it has never been the law that a trade mark must have no meaning” and that “if it were otherwise, then half of the Register of Trade Marks would fall over.” So long as a mark was “vague or illusory, or ill-defined,” he argued, “then that is not objectionable.” In this regard he referred to J&P Coats Ltd’s Application,[10] where the English Court of Appeal held that SHEEN was registrable for cotton because it was considered that “lustre” was the term ordinarily used to describe the glossiness of thread and because “sheen” was in that category of words “which describe the character or quality of the goods, but are not the only or natural words which would be chosen for that purpose.” Mr Pietras also referred to the often cited words of Lord MacNaughten in Eastman Photographic Materials Company Limited v The Comptroller-General of Patents, Designs and Trade Marks:[11]
…it seems to me that it is no objection that it may be traced to a foreign source, or that it may contain a covert and skilful allusion to the character or quality of the goods. I do not think it is necessary that it should be wholly meaningless.
[10] [1936] 2 All ER 975; (1936) 53 RPC 355.
[11] [1898] A.C. 571 at 583; (1898) 15 RPC 476 (HL).
The foregoing being the principal matters submitted by Ms Drummond and Mr Pietras based on the parties’ evidence, I turn now to s 41 of the Act itself. The application of s 41 was analysed by Branson J in the leading case of Blount Inc v Registrar of Trade Marks as follows: [12]
Subsections (3)–(6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; [in which case the mark would prima facie qualify for registration] or
(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; [in which case s 41(6) would need to be considered] or
(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services [in which case s 41(5) would need to be considered].
[12] (1998) 40 IPR 498 at 504.
The first issue to be looked at under s 41 indicated by her Honour, then, is the extent to which the Opposed Mark is “inherently adapted to distinguish the [Applicant’s Goods] from the goods or services of other persons”, as specified in s 41(3). As both advocates noted, guidance in interpreting the term “adapted to distinguish” is generally found in the well known words of Kitto J in Clark Equipment Company v Registrar of Trade Marks in connection with the (word) mark MICHIGAN:[13]
[T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
[13] (1964) 111 CLR 511 at 514. Kitto J was in effect paraphrasing the words of Lord Parker of Waddington in Re W & G du Cros Ltd’s Application (1913) 30 RPC 660 which Kitto J had earlier (at 514) quoted with approval.
Ms Drummond’s submissions notwithstanding, I am satisfied that the Opposed Mark is at least to some extent inherently adapted to distinguish the Applicant’s Goods. I disagree with the Opponents that registration of the mark would give the Applicant some kind of de facto monopoly in any of the individual elements PARACETAMOL, OSTEO or TAB. On the other hand, I agree with Mr Pietras and with the expert opinion evidence of Dr Bardsley and Dr Moses that the mark as a whole is not apt for normal description of the goods and that it is thus unlikely to be wanted or needed by others for legitimate descriptive purposes. I accordingly rule out from further consideration paragraph (b) of Branson J’s above analysis and s 41(6) of the Act.
I have rather more difficulty in concluding that the Opposed Mark as a whole, considered in isolation from the other matters raised in the Applicant’s evidence, is sufficiently so adapted as to qualify for registration on that basis alone. I have accordingly concluded that paragraph (c) of her Honour’s analysis is applicable in this case and that the matters specified in s 41(5)(a) of the Act should be considered.
In this regard I agree with Ms Drummond that the prominent placement of the INN “paracetamol” in the claimed trade mark is notable and indeed, as far as I am aware, inclusion of an entire INN in this manner appears unusual. Based on the evidence and on my own estimation of the relevant market as a consumer, I believe “paracetamol” would be reasonably well known as being the generic name for the active ingredient in a number of popular pharmaceutical products for the alleviation of headaches or of pain generally and presumably the Applicant’s Goods would of course be seen in that light. Nevertheless, its arguably gratuitous inclusion as part of the claimed trade mark and how this might impact on the capacity of the mark as a whole to distinguish the Applicant’s Goods does raise some questions in my mind which in general terms[14] have not, to my knowledge, received close scrutiny before. In summary, to satisfy myself that the Opposed Mark does have the requisite capacity to distinguish the designated goods I think it is necessary to know more about the manner in which the Applicant proposes to use the mark and to be aware of “any other circumstances” relevant to the issue, as indicated in ss 41(5)(a)(ii) and (iii).
[14] That is, other than the ex parte proceedings in 2012 which determined that the Opposed Mark was acceptable pursuant to s 41(5) of the Act based on the evidence of intended use contained in Ilievski.
As mentioned, Ms Drummond submitted that, for the reasons already canvassed (and, in the main, rejected), consideration of the Opposed Mark in terms of s 41(5) was inappropriate in this case. Even if it were appropriate, she argued, the information contained in Ilievski was in any event insufficient to warrant acceptance for registration. In this regard her written submissions refer to the fact that the application received three adverse examination reports before being accepted for registration following the ex parte hearing and go on to say that:
In each report the Examiner maintained their rejection of the application for the Opposed Mark. In the first examination report, the Examiner stated that the Applicant might overcome the objection by providing evidence of [use] under section 41(6). In the second and third examination reports, the Examiner invited the Applicant to provide evidence of [use] under section 41(5).
Following a hearing…the objections to the Opposed Mark were withdrawn. The Opponents submit that the objections should have been upheld by the Registrar. The Opponents are astonished that an objection under s 41(6), downgraded after argument to s 41(5), was totally dismissed without substantial evidence of use having been filed by the Applicant. There appears to have been only one statutory declaration (Ilievski) submitted…, containing self serving and unsubstantiated figures of likely sales of the Applicant’s Goods.
I would firstly observe that it is not unusual for an objection originally taken under s 41(6) to be favourably reconsidered during examination in the light of further information and consideration. The fact that this occurred in the present case is not a relevant factor that either I, or the Hearing Officer involved in the ex parte proceedings, should give any significant weight. Nor is it the case that following the ex parte hearing the Examiner’s “objections…were withdrawn.” The Hearing Officer in fact confirmed the Examiner’s s 41(5) objection, but determined on the basis of the information in Ilievski (which had not been before the Examiner) that on balance acceptance for registration was nevertheless appropriate.
The Applicant did not of course commence use of the Opposed Mark in Australia until March 2013 and so Ilievski (declared in 2012) only contains evidence of the Applicant’s then intended plans for use of the Opposed Mark. Whereas I now have evidence of actual use of the mark in the period from March 2013 up to November 2013 (when Atkinson was declared), Ms Drummond objected that the sales figures disclosed were somewhat lower than those Mr Ilievski had estimated and that accordingly acceptance of the application following the ex parte hearing was effectively based on a false premise. I do not accept this is relevant in this case. There are many factors beyond the Applicant’s control which might affect sales and here the discrepancy is not in my estimation so great that the Applicant’s bona fides in this regard should be questioned. The actual sales disclosed are in any event significant and were steadily increasing in the eight months or so since the Applicant’s Goods came on the market. Moreover, in the present case it is to a large extent the manner of the Applicant’s use, rather than its actual sales revenue, which I think just as significant. I note too that Atkinson discloses further information relevant to s 41(5)(a)(iii) of the Act (“any other circumstances”), such as the mark’s corresponding registration in New Zealand and the state of the Australia Register as far as registered marks in Class 5 which feature the elements OSTEO or TAB are concerned.
To conclude, I am satisfied based on the Applicant’s evidence as a whole that acceptance of the Opposed Mark pursuant to s 41(5), bearing its current endorsement with respect to the INN, is appropriate. The opposition ground based on s 41 of the Act is therefore not established.
Section 60
The ground based on s 60 is indicated in the Notice as follows:
Another trade mark had, before the [Priority Date], acquired a reputation in Australia and because of the reputation of that other trade mark(s) [sic], the use of the Opposed Mark would be likely to deceive or cause confusion (s 60).
Section 60 of the Act itself is reproduced below:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
The essence of the Opponents’ objection under s 60 is, as Ms Drummond put it, that:
At the Priority Date, the [Opponents’] PANADOL Osteo Mark enjoyed a substantial reputation among Australian consumers, being used in respect of the only paracetamol pain relief product formulated specifically to treat pain associated with osteoarthritis available in the Australian market at that time: Tomkins, para 24.
…
In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 [“Rogers”], the Registrar’s delegate stated (at [40]):
…the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar.
The level of similarity between the Opposed Mark and the Opponents’ PANADOL Osteo Mark is more than sufficient to at least create a likelihood of confusion, taking into account the considerable prior reputation in Australia of the PANADOL Osteo Mark: Rogers at [39].
The Applicant’s and Opponents’ trade marks have a very similar look and sound: Re Pianotist Co Ltd (1906) 1A IPR 379; 23 RPC 774 at 777 (Ch D). Both contain a first word with the first letter “P” and the ending “OL” (PANADOL, PARACETAMOL), and the very similar descriptive second element “osteo” (OSTEO, OSTEO-TAB).
When considering the Opposed Mark, it is relevant to consider the impression that consumers (or potential consumers) of ordinary intelligence and memory would have of the Opposed Mark, based on their awareness and recollection of the PANADOL Osteo Mark and its substantial reputation.
To the extent that the above quote from Rogers at [40] suggests dissimilar marks could be caught by s 60 merely because the earlier mark had a “considerable prior reputation”, I must respectfully disagree. Notwithstanding its amendment in 2006 to remove the requirement for “deceptive similarity”,[15] as indicated in paragraph 47 above section 60 still bears the heading “Trade mark similar to trade mark that has acquired a reputation in Australia”. In this regard I note that the Hearing Officer in Rogers said at [39]:
Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.
[15] As defined in s 10 of the Act.
In the present matter, there is evidence in Tomkins of considerable sales and associated advertising and promotional activities of the Opponents’ PANADOL Osteo branded analgesic since its launch in 2005 and I will assume for the sake of argument that the Opponents’ mark had the kind of reputation contemplated by s 60 as at the Priority Date in 2010. Moreover, I accept that that the Applicant’s Goods are essentially the same as the Opponents’ PANADOL Osteo branded analgesic and would be offered to the same kind of consumers. That said, I do not agree that the Opposed Mark is particularly “similar” to the Opponents’ mark at all. To my mind the marks neither look nor sound similar when considered as wholes. I would find it no easier to agree with the Opponents that their undoubtedly very well known registered trade mark PANADOL per se was “similar” to the generic INN “paracetamol” alone in the sense required by s 60, notwithstanding both start with a “P” and end with “OL”. As for the relevant marks here, the sole element the Opposed Mark has in common with the PANADOL Osteo mark is the element OSTEO, which Ms Drummond characterizes in the above-quoted submission as “the very similar descriptive element ‘osteo’” and which Ms Tomkins says is “generic”.
I am accordingly in substantial agreement with Mr Pietras’ submissions on this issue. Noting that the Opponents’ case under both s 60 and s 42(b), (the “contrary to law” ground, discussed in more detail below), rests on the alleged confusing or deceptive similarity of the parties’ marks, he submitted this was effectively an admission, at odds with what they had elsewhere claimed in the context of s 41, that the Opposed Mark was indeed a trade mark after all. As he put it:
Clearly a normal product description (which is by definition non-distinctive) is free for all to use and cannot contravene a trade mark. Simply put, it is not something that can be complained about. So, in complaining, [the Opponents] are telling us that they do in fact see PARACETAMOL OSTEO-TAB as a trade mark…
…the only commonality [shared by the parties’ marks] is they both use the combining form OSTEO. Clearly that is not enough. The Register and marketplace are replete which trade marks which incorporate OSTEO and coexist quite happily. See for example Tomkins para 61 and Exhibit KLT-28 (OsteoEze, Osteo Krill, Voltaren Osteo Gel, Osteo Rescue, Osteo Active) and Atkinson para 26 (Osteohealth, Osteocare, OsteoEze, Osteopal, Osteoprocare, Osteo Keeper, Osteomark, Osteobond, Osteo-bi-flex, Osteoset, OsteoCal, Osteoplus, Osteosupport, Osteomax, etc).

After then noting several specific differences between the parties’ marks and that “there is no evidence of anyone in the marketplace having been confused between the trade marks”, Mr Pietras continued:
We respectfully submit there is absolutely no merit to [the Opponents’] complaint. Simply put, the trade marks are chalk and cheese.
Much of [the Opponents’] evidence relates to how well known Panadol is. Whether Panadol is or is not well known is completely irrelevant because the [Opposed Mark] does not have anything about it that looks or sounds like Panadol.
In summary, while the Opponents’ PANADOL Osteo mark may well have had the kind of reputation contemplated by s 60(a) amongst actual or potential consumers of the Opposed Goods as at the Priority Date, in view of the differences between the parties’ marks I am not satisfied that deception or confusion was likely to ensue amongst a significant or substantial number of those consumers, particularly in the absence of any instances of actual deception or confusion having been brought to my attention. It is also relevant, I think, to take into account the fact that both parties’ relevant products are classified by the TGA as “Pharmacy Medicine”, meaning their sale to the consumer is moderated by a pharmacist rather than being selected directly by the purchaser. In this regard I note that Mr Bell, a pharmacist for some 48 years, does not suggest he would be deceived or confused into believing the parties’ analgesics came from the same source or enjoyed any other relevant connection, but rather, as mentioned, that he would:
…understand the phrase “paracetamol osteo-tab” to describe a product purporting to be the generic (and probably less expensive) equivalent to the widely prescribed and, I believe, widely known Panadol Osteo.
The Opponents have accordingly not established their s 60 ground of opposition.
Section 42(b)
It is convenient to discuss the s 42(b) ground at this point since it largely reflects my above conclusion on the s 60 ground. The ground is indicated in the Notice as:
The use of the Opposed Mark would be contrary to law (s 42(b)).
Section 42(b) of the Act is reproduced below:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) …
(b) its use would be contrary to law.
As Ms Drummond further explains in her written submissions:
The use of the Opposed Mark would contravene section 18 of the Australian Consumer Law in the Competition and Consumer Act 2010 [“the CCA”].
…
The Opponents have a reputation and goodwill in the PANADOL Osteo Mark in relation to the Opponents’ Goods.[16] The Opponents do not propose to repeat the evidence of Ms Tomkins referred to [in connection with the Opponents’ s 60 ground].
The Applicant’s and Opponents’ respective trade marks are similar, as outlined [in connection with the s 60 ground].
The Applicant’s Goods…are offered to the same market of retail pharmacies and consumers, through the same channels of trade, as the Opponents’ Goods…
It is relevant to consider all aspects of the Applicant’s conduct surrounding its use of the Opposed Mark: Optical 88 Ltd v Optical 88 Pty Ltd (No 2)[17], at [342]. At the Priority Date the get up and pack design of the Applicant’s Goods was very similar to the get up and pack design of the Opponents’ Goods, and included similar visual design features including an image of a bone joint in concentric circles, which closely resembled the image of a bone joint in concentric circles depicted on the pack for the Opponents’ Goods: Tomkins, paras 33-37, Annexure KLT-15.
[16] See footnote 6 at paragraph 17.
[17] [2010] FCA 1380; (2010) 89 IPR 457.
Scanned, colour samples of the packaging described (taken from Exhibit HCA-207 of Atkinson and being essentially identical to those shown in Annexure KLT-15 to Tomkins) are shown below:
Before discussing the Opponents’ claim, I firstly note that the Trade Practices Act 1974 (“the TPA”), which was in force at the Priority Date, is on the face of it the relevant Federal law rather than the CCA. (Although containing essentially identical consumer protection provisions, the Competition and Consumer Act 2010, which replaced the TPA, only came into force as from 1 January 2011.) In this regard I note the words of Wilcox J in Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd:[18]
I think that [Counsel] is correct to say that the application of s 42(b) of the Act should be considered as at the priority date, although looking forward to prospective conduct after registration was effected.
[18] (2004) 59 IPR 343 at [47].
That said, s 18 of the CCA mentioned by Ms Drummond essentially corresponds to s 52 of the TPA which, insofar as relevant to the present matter, is reproduced below:
Misleading or deceptive conduct
(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
I am not satisfied that use of the Opposed Mark for the Applicant’s Goods would offend against s 52 of the TPA, essentially for the same reasons discussed above in connection with s 60 and, in particular, in light of the differences between the Opposed Mark and the PANADOL Osteo mark when compared as wholes. Nor can I agree with Ms Drummond (or Ms Tomkins) that the parties’ get up and pack design, as shown above, are “very similar” and that this might therefore alter the position as far as use of the Opposed Mark and s 52 of the TPA are concerned. Indeed, apart from the element OSTEO, the only get up the packs have in common is the image of the bone joint mentioned by Ms Tomkins and highlighted in the above-quoted submission. The Opponents could not on the face of it successfully claim exclusive rights in such an image in connection with analgesics and, to my mind, the particular representations of the bone joint appearing on the respective packs are not especially similar in any event. Overall, I perceive the respective pack designs as being quite different and unlikely, I think, to be confused for each other.
Unlike s 60 of the Act, moreover, s 52 of the TPA is not concerned with behavior that “would be likely to deceive or cause confusion”. The relevant provisions of the TPA require a likelihood that consumers be misled or deceived as to the true origin of the Applicant’s Goods or their supposed connection to the Opponents, rather than mere confusion or simply being caused to wonder if this may be the case.
There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct than is the case with trade marks likely to deceive or cause confusion under s 60 of the Act. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd,[19] by way of example, Gibbs CJ noted with respect to s 52 of the TPA:
In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.
[19] (1982) 1A IPR 684 at 688.
I accordingly find that the Opponents have not established their ground based on s 42(b) of the Act.
Section 62A
The ground based on s 62A is indicated in the Notice as follows:
The Opposed Application was made in bad faith (s 62A).
Section 62A itself is reproduced below:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
Relying on the recent decision of Bennett J in DC Comics v Cheqout Pty Ltd[20] (“DC Comics”), the Opponents’ allegation as put in Ms Drummond’s written submissions is that:
[20] (2013) 101 IPR 334.
At the Priority Date, the Applicant knew of the Opponents’ use of the PANADOL Osteo Mark in connection with the Opponents’ Goods: Atkinson, para 11.
…
All the circumstances surrounding the application to register the Opposed Mark are relevant: DC Comics at [62].
At the Priority Date the Applicant was using the Opposed Mark, together with a pack design and get up in connection with the Applicant’s Goods, which closely resembled the pack design and get up used by the Opponents in combination with the PANADOL Osteo Mark in relation to the Opponents’ Goods: Tomkins, Annexure KLT-15; Atkinson, Exhibit HCA-202 (Ilievski, para 9 and Exhibit VI-1); DC Comics at [73].
At the Priority Date the Applicant was marketing, or was planning to market, the Applicant’s Goods with the intention of trading off the Opponents’ reputation in its PANADOL Osteo Mark, and the get up and pack design of the Opponents’ Goods.
The Applicant’s conduct continued after the Opposed Mark was accepted for registration: Tomkins, para 34. The Opponents raised their concerns regarding the likelihood of consumer deception or confusion, arising from the Applicant’s conduct, with the Applicant: Tomkins, Confidential Annexure KLT-17.
The Opponents say that the Applicant has no good reason to need or want to use the Opposed Mark in relation to the Applicant’s Goods, other than for the reason of taking advantage of the Opponents’ reputation in the PANADOL Osteo Mark, for the Applicant’s benefit. The Applicant could choose any number of other trade marks for the Applicant’s Goods. Instead, the Applicant seeks exclusive trade mark rights in a trade mark comprising a number of descriptive words, which also describes the goods of its main competitor and is similar to the Opponents’ PANADOL Osteo Mark.
Given the above circumstances surrounding the Applicant’s application for, and use of, the Opposed Mark, the Opponents say that the Applicant’s conduct “falls short of the standards of acceptable behaviour observed by reasonable and experienced persons in the particular area”.[21]
The Applicant seeks to benefit from the association between the Opponents’ PANADOL Osteo Mark and the pack design and get up used by the Opponents at the Priority Date, and the Applicant’s Opposed Mark and pack design, which the Opponents say is likely to arise in the minds of a substantial number of consumers.
For these reasons, the application for the Opposed Mark was made in bad faith.
[21] This being “the formulation in United Kingdom authority of bad faith” characterised by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 288 ALR 727; 94 IPR 551 as “an apt touchstone” mentioned (and apparently followed) by Bennett J in DC Comics at [62].
In response, Mr Pietras submitted:
Having a competing trade mark has never been enough for bad faith, even if the trade marks were found to be similar (which we say is not the case here). Bad faith normally only arises where one party breaches an obligation to another; for example when a licensee runs off with the licensor’s trade mark. It may also arise in a case of industrial espionage. A further example would be a case of dishonesty when applying for registration. But normal commercial differences between traders are a far cry from bad faith. We respectfully submit that [the Opponents’] bad faith allegation can be summarily dismissed – there has been absolutely no bad faith, and there is certainly no evidence of any.
While the decision in DC Comics undoubtedly broadened the kind of behavior which might be caught by s 62A beyond that indicated in Mr Pietras’ submission, I nevertheless agree with him that the Applicant’s actions in the present matter do not amount to conduct which “falls short of the standards of acceptable behaviour observed by reasonable and experienced persons” in the relevant trade. The principal basis for the Opponents’ allegation appears to be, as Ms Drummond’s submission indicates, that “the Applicant was using the Opposed Mark, together with a pack design and get up in connection with the Applicant’s Goods, which closely resembled the pack design and get up used by the Opponents in combination with the PANADOL Osteo Mark in relation to the Opponents’ Goods.” As already discussed in connection with the Opponents’ s 42(b) ground, however, I do not agree that the parties’ respective pack design and get up are particularly similar at all.
Nor is there otherwise any significant evidence before me that the Applicant had “the intention of trading off the Opponents’ reputation in its PANADOL Osteo Mark, and the get up and pack design of the Opponents’ Goods,” as is alleged by the Opponents. Indeed, it is difficult to reconcile such an allegation with the Opponents’ claim, repeated in Ms Drummond’s above quoted submission, that “the Applicant seeks exclusive trade mark rights in a trade mark comprising a number of descriptive words, which also describes the goods of its main competitor and is similar to the Opponents’ PANADOL Osteo Mark.” Moreover, as discussed earlier, I remain unconvinced in any event that the Opposed Mark is “similar to” the Opponents’ mark (in any relevant sense that would bring s 60 into play), even accepting that the Opponents’ mark was well known as at the Priority Date.
Although only mentioned incidentally in Ms Drummond’s above-quoted submission, there was some discussion at the hearing in relation to Confidential Annexure KLT-17 to Tomkins as being evidence of the Applicant’s bad faith. The Annexure includes copies of letters between the parties’ attorneys in May 2013 and of an order form which I understand was used at one point by the Applicant’s sales staff when visiting pharmacies and on which there is also reference to “PANADOL^® OSTEO.” I do not however have any reason to doubt Mr Pietras’ explanation, in his letter dated 24 May 2013 to the Opponents’ attorneys, that “the reference to Panadol was merely included for the benefit of our client’s sales staff to identify a place to record a customer’s previous sales volumes of the Panadol Osteo product.” As the letter further explains:
…the top part of the form [on which the capitalised words “PANADOL^®OSTEO SALES HISTORY” appear, followed by fields to record “OTC Sales”, “PBS Sales” and “Total Sales”] was not intended to be shown to customers, only the tear-off bottom section. We understand that it was inadvertently left with a customer by a sales representative. On learning of this our client, out of abundant caution, had the form amended to remove any reference to Panadol. The decision to do so was made prior to receiving your letter. As the form which is the subject of your letter is no longer in use, we trust there is no longer an issue with it.
At the hearing itself, Mr Pietras characterized the leaving of the order form in question with a single pharmacist as a “mistake” and a “one off” and, as indicated, I cannot be satisfied on the evidence that the Applicant’s conduct in this regard was in any way motivated by bad faith.
I accordingly find that the Opponents have not established their ground based on s 62A of the Act.
Decision
Section 55(1) of the Act relevantly provides that, 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.
I have found the Opponents have not established any of the grounds pressed at the hearing. The trade mark application may accordingly proceed to registration one month from the date of this decision, (with its currently recorded endorsements concerning the INN and s 41(5) retained). 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.
Costs
Both parties requested an award of costs in their favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponents as per Schedule 8 of the Trade Marks Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
9 October 2014

[2014] ATMO 100

9 October 2014

Key Legal Topics

Areas of Law

Intellectual Property

Commercial Law

Legal Concepts

Costs

Remedies

Statutory Construction

Delegate:	Michael Kirov
Representation:	Opponent: Frances Drummond of Norton Rose Fulbright Australia, assisted by Sophia Christou of the same firm Applicant: Tony Pietras of A.J. Pietras & Co
Decision:	2014 ATMO 100 Section 52 opposition: ss 41, 42(b), 60 and 62A considered – trade mark capable of distinguishing the Applicant’s goods – use not likely to mislead, deceive or cause confusion – application not made in bad faith – registration to proceed.