Guangzhou Pharmaceutical Holdings Limited

[2005] ATMO 9

TRADE MARKS ACT 1995

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

Re:Trade mark application number 933915(5) –  - in the name of Guangzhou Pharmaceutical Holdings Limited.

Delegate:	Tabatha Klippan
Decision:	Trade mark application rejected

Background

1. On 12 November 2002, Guangzhou Pharmaceutical Holdings Limited, ('the applicant'), filed an application to register its trade mark in respect of the following goods in class 5:

   Chemico-pharmaceutical preparations; herb teas; medicines for human purposes; medicinal drinks; raw medicines; Chinese patent medicines; biochemical preparations for medical use; blood; blood components; medicinal wine; cachous for pharmaceutical purposes; dietetic substances adapted for medical use; food for babies; candy for medical purposes; chemical preparations to treat mildew; medicines for veterinary purposes; insect repellents; sanitary napkins; traditional Chinese medicine packs; traditional Chinese medicines; dressings (medical); haemostatic pencils; compresses; teeth filling material; adhesive tapes for medical purposes

The trade mark is reproduced below:

1. In the examiner's first report dated 20 March 2003, the applicant was asked to provide a transliteration and translation for the trade mark, as required by subregulation 4.3(6).  The applicant’s agent advises that the transliteration of the first character is Guang which may be translated as Guangzhou which is the name of a place in China.  The second character translates as ‘medicine, drug’.

2. A ground for rejection in terms of subsection 41(5) of the Trade Marks Act 1995 ('the Act') was raised in the second report.

3. Subsection 41(2) of the Act provides that 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 from those of other traders. Subsection 41(3) provides that in deciding the question, the Registrar must first consider the extent to which the trade mark is inherently adapted to distinguish. If the Registrar finds the trade mark is to no extent inherently adapted to distinguish, then it is to be considered under the provisions of subsection 41(6). If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish, but it is not capable of distinguishing on that basis alone, then it is to be considered under the provisions of subsection 41(5). If, after consideration under the provisions of subsections 41(5) or 41(6), the Registrar is still not satisfied the trade mark is capable of distinguishing, or does in fact distinguish, then the application must be rejected.

4. The section 41 ground for rejection is based on the fact that the Chinese characters can be translated as ‘Guangzhou medicine’ or ‘Guangzhou drug’ and as a consequence customers would see the Chinese characters as a reference to the geographical origin of the goods and not as a trade mark.  Four adverse reports were issued before the applicant made a request to have the matter determined on the basis of a decision on the written record.  No evidence of use has been provided, however, the applicant relies on written submissions made by its agent, Ms Kathy Mitton of Shelston IP.

5. By letter dated 15 February 2005, I as a delegate of the Registrar of Trade Marks informed the applicant’s agent of my intention to formally reject the trade mark application unless, within 14 days from the date of signature of the said letter, the applicant requested the withdrawal of the trade mark application or advised me that it would allow the application to lapse.  No response was received from the applicant’s agent.

   Submissions

6. In its response to the second report, the agent for the applicant confirms that the applicant has commenced use of the trade mark in Australia but can not provide any evidence. The agent included a copy of the applicant’s response to the Registrar of Trade Marks in Hong Kong in relation to similar objections that were made in Hong Kong. Overall, the agent submits that the trade mark is not directly descriptive of the goods concerned and is capable of distinguishing the goods of the applicant from those of other persons. The applicant’s agent also points out that the trade mark has been registered in other countries including the United Kingdom and Macau. The examiner however maintained the ground for rejection under subsection 41(5).

7. In its response to the third report, the applicant’s agent disagrees with the examiner’s interpretation of the Chinese characters.  Specifically, the agent argues that the translation of the first character is “broad, wide”. Based on this translation, the agent further argues that the trade mark has no sensible meaning.  Notwithstanding the agent’s response the ground for rejection was maintained.

8. In the written submissions dated 18 October 2004, Ms Mytton states that the examiner has mistakenly assumed that the trade mark conveys a meaning and on that assumption has undertaken to enquire what that meaning may be. 

9. The agent submits that in addition to being an abbreviation for the city of Guangzhou or the province of Guangdong, the first of the Chinese characters has many meanings including “wide”, “vast”, “numerous”, “expand”, and “spread”.  She further submits that as a number of geographical localities outside of the Guangdong province have names containing the first character, the people of China do not intuitively connote the character with Guangdong or Guangzhou but rather as one of its other meanings, namely “wide”, “vast”, “numerous”, “expand”, or “spread”.

10. Ms Mytton argues that the fact the trade mark is registered in China also indicates that people of Chinese origin do not see the first character as a geographical indicator but rather as an emotive or aesthetic word that has no meaning when used in relation to medicine.  Ms Mytton further argues that if consumers in China do not perceive the applicant’s mark as descriptive, then a fortiori consumers in Australia that are able to read and understand the trade mark will not perceive the trade mark as descriptive.  Furthermore, Ms Mytton states that if the trade mark is considered to be inherently distinctive in China, then the trade mark must, at the very least, be capable of distinguishing the goods in Australia.

11. The written submissions state that the subject trade mark has been registered in a number of other countries including China, the United Kingdom, Hong Kong, New Zealand, Macau, Singapore, Cambodia, Vietnam, Japan, Taiwan and Russia.

12. Ms Mytton refers specifically to the decision in Re Application by Allergan Inc (1996) 37 IPR 638 where the Hearing Officer concluded:

    The existence of many overseas registrations indicates both the applicant’s commitment to and use of the trade mark worldwide, and also the recognition that has been given by other countries of the trade mark’s capacity to distinguish the applicant’s goods.  It is reasonable to take into account the assessment afforded a trade mark owner in comparable jurisdictions, when assessing that trade mark’s capability to distinguish the applicant’s goods in this country.

13. Finally, Ms Mytton submits that “the Examiner must be positively satisfied that a ground for rejection of the application is made out”.  Ms Mytton goes on to say that sufficient grounds have been provided to override the presumption of registrability and therefore the benefit of the doubt should go to the applicant. 

    Discussion

14. The fact that a trade mark may be registered in other jurisdictions with possibly quite different legislative requirements is not a persuasive argument for acceptance in Australia nor is it persuasive that the trade mark has been accepted in countries with similar legislation when the full circumstances that led to the acceptance of the trade mark are unknown.

15. In determining whether or not a trade mark may be regarded as being adapted to distinguish, Kitto J, in Clark Equipment Co v Registrar of Trade Marks, (1964) 111 CLR 511 said:

    That ultimate question must not be misunderstood.  It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it.  The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing the goods from the goods of others.

16. And in Registrar of Trade Marks v W. & G. Du Cros Ltd, (1913) 30 RPC 660, Lord Parker of Waddington, said in relation to whether or not a proposed trade mark is adapted to distinguish:

    The applicant's chance at success in this respect must, I think, largely depend upon whether other traders are likely, in the ordinary course of business and without improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods.

17. I acknowledge that when the first character is taken as a single element it does have the various meanings attributed to it by the applicant’s agent.  However the trade mark must be taken as a whole and in this context the meaning of the mark is clearly GUANGZHOU MEDICINE.  The characters may be transliterated as Guang Yao.

18. I have shown the trade mark to three native Mandarin speakers who without hesitation translated the characters as GUANGZHOU MEDICINE.  This contradicts Ms Mytton’s allegation that the people of China do not intuitively connote the character with Guangdong or Guangzhou but rather as one of its other meanings, namely “wide”, “vast”, “numerous”, “expand”, or “spread”.

19. The subject trade mark clearly names the goods and clearly indicates the origin of the goods, and that place is of considerable geographic significance where the goods are highly likely to be produced and as such the rights of other traders to use these words to describe the nature and origin of their similar goods must be fully considered. 

20. In the absence of evidence of use, I am unable to determine if the trade mark is capable of distinguishing the goods.  If I can not be sure that the applicant uses the Chinese characters as a trade mark, I can not be sure that the market will recognise the characters as a trade mark or that the characters distinguish the applicant’s goods from those of other traders.

21. On the basis of all material on file I cannot be satisfied that the subject trade mark does or will at any time in the future be capable of distinguishing the goods claimed. 

    Decision

22. I hereby reject trade mark application number 933915.

    Tabatha Klippan
    Senior Examiner
    Trade Marks Hearings
    11 March 2005