Himalaya Global Holdings Ltd

[2012] ATMO 10

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1362578(5) - PICROLAX- in the name of Himalaya Global Holdings Ltd.

Delegate:	Iain Thompson
Representation:	Applicant: Ms Cathryn Warburton of Acacia Law
Decision:	2012 ATMO 10 s33 proceedings, s44 ground for rejection - similar goods, trade marks deceptively similar. Application rejected.

Background

1. This is a proceeding under section 33 of the Trade Marks Act 1995 (‘the Act’) concerning the trade mark application (‘the application’) details of which appear below:

   Application No:           1362578
   Priority Date:               20 May 2010

   Goods:Class 5:  Pharmaceutical substances; dietetic substances for medical use

   Trade Mark:                PICROLAX

2. An examiner of trade marks has recited grounds for rejection of the application under subsection 44(1) of the Act based on the trade mark registration relevantly detailed below:

   Registration No:           668259
   Priority Date:               31 July 1995
   Goods:  Pharmaceutical products

   Trade Mark:                PICOLAX

3. In response to the applicant’s submissions, the examiner of trade marks has not resiled from the grounds for rejection and the applicant has subsequently requested to be heard.

4. As a delegate of the Registrar of Trade Marks I heard the submissions of the applicant in Canberra on 14 December 2011.  Ms Cathryn Warburton of Acacia Law represented the applicant and made her submissions by teleconference.

   The Submissions

5. Ms Warburton submitted a written outline of her submissions which I reproduce below:

   Is the mark deceptively similar in a way contrary to s44 of the Trade Marks Act?

   The onus is on IPAU to demonstrate that the mark is deceptively similar. This is because section 33 of the TMA embodies a “presumption of registrability”: see Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365.

   When considering deceptive similarity, it must be assumed that the trade marks will be put to a normal and fair use: see Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353.

   All surrounding circumstances must be taken into consideration.  These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services: see Registrar of Trade Marks v Woolworths Ltd (supra).

   In Deeko Australia Pty Ltd v Decor Corp Pty Ltd (1988) 11 IPR 531, the court held that two marks were not deceptively similar because there was no likelihood of phonetic confusion between the marks.

   SUBSTANTIVE SUBMISSIONS

   The Applicant submits that its PICROLAX mark is not deceptively similar to the PICOLAX mark cited by [the examiner of trade marks].

   Firstly, the Applicant notes that its trade mark is specified for use on pharmaceutical/dietetic products. These are not products which consumers choose lightly. On the contrary, a consumer will typically be extremely discerning when choosing medical products, since their own health is dependent on making a correct choice.

   The purchasers of the goods which PICROLAX is specified for are therefore likely to pay a very high level of attention when choosing them.

   In their [sic] report dated 20 July 2011, the Examiner contended that consumers can often purchase pharmaceutical products straight off the shelf, “without any consultation, or indeed any lengthy consideration”.

   The fact that consumers can purchase pharmaceutical goods straight off the shelf without consultation does not mean that they will do this. The Applicant maintains that, in matters which concern their own health, a consumer will still pay great attention when choosing a product, even if they are not legally required to.

   In the same report dated 20 July 2011, the Examiner contended that the most likely pronunciation of the two marks is “pie-co-lax” and “pie-cro-lax”. However, the Examiner failed to substantiate this claim, and the Applicant submits that the Examiner’s assumption regarding pronunciation is incorrect. The cited mark is most likely to be pronounced “picko-LAX”, while the applicant’s mark is likely to be pronounced “pie-CRO-lax” ... this is because of the placement of the “r” in the applicant’s trade mark.

   Accordingly, these marks do not sound very similar at all because the stress is placed on different syllables and the first syllable is pronounced differently. Accordingly, phonetic confusion is unlikely and in terms of Deeko Australia (supra) the Applicant’s mark is not deceptively similar to the cited mark.

   In light of these reasons, the Applicant contends that IPAU cannot displace the presumption of registrability.

   Discussion

6. Subsection 44(1) of the Act provides:

   Identical etc. trade marks

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

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

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

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

   Note 1:  For deceptively similar see section 10.

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

   Note 3:  For priority date see section 12.

7. The applicant, by its lack of submission in this regard, implicitly concedes that its goods are similar to those of the registered trade mark and that the registered trade mark has an earlier priority date than that of the application.

8. The applicant has not adduced evidence which addresses the provisions of subsections 44(3) or 44(4) of the Act.

9. It follows that the sole question for me to determine is whether the trade marks in question are deceptively similar.

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

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

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

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

12. The comparison of the trade marks is to be gauged against the marketplace for the goods in respect of which registration is sought. This contextual comparison was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J said:

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

13. And, when making the comparison, I am to consider the use of the trade marks to the extent of the specifications of goods in question: French J in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at paragraph 88:

    The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

14. And the process is moderated by the factors which French J also discussed in Woolworths at paragraph 50:

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

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

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

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

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

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

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

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

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

15. In making this decision I am aware that the two prefixes (PICO- and PICR-) within the trade marks have quite different meanings in the context of the goods.  The prefix PICO- is commonly used to denote either ‘one trillionth’ or a very small measurement.  The prefix PICR- is used to denote either something which is very bitter or picric acid.  I note, however, that this observation does not form a part of Ms Warburton’s submissions and that it is unlikely that most members of the public would be aware of this distinction when purchasing the goods sold under either of the trade marks.

16. The specifications of goods in question are registered or made in respect of pharmaceutical substances or products: I read these claims as referring to all pharmaceutical preparations and thus including complementary health supplements and preparations which are commonly available on the shelves of supermarkets, health food stores, pharmacies and the like where they may be self-selected by the public.

17. While Ms Warburton states that people will self-select products for their health with a great deal of care, I do not consider that, in the context of marketplaces that I have outlined, customers exercise a particularly high degree of caution when purchasing these products.  Customers (who might otherwise exercise great vigilance in regard to pharmaceutical products) are likely to place weight on the fact that products which are potentially damaging to their health are either available only on prescription by a doctor or are banned from sale to the public by the Therapeutic Goods Administration.

18. Woollen Mills, above, does in any event warn that, “Potential buyers of goods are not to be credited with any high perception or habitual caution.” But that, “On the other hand, exceptional carelessness or stupidity may be disregarded.”

19. And Ms Warburton submits that, “The fact that consumers can purchase pharmaceutical goods straight off the shelf without consultation does not mean that they will do this.”  I am not certain of any other way in which customers are likely to purchase goods which are on the shelves of supermarkets, health food stores and pharmacies; and, if requesting direction to goods sold under the registered trade mark PICOLAX it is likely that a shop assistant would mistakenly direct the potential purchaser to the goods sold under the PICROLAX trade mark.

20. The trade marks differ in but one letter which occurs towards the middle of the words.  This minor difference is not likely to enable a ready distinction between the trade marks and is likely to result in the one being imperfectly remembered as the other.  In Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196; (2004) 209 ALR 1; (2004) 61 IPR 212; [2004] AIPC 92-015, Moore, Sackville and Emmett JJ explained:

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

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

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

21. I am uncertain whether the trade marks are likely to be pronounced so that the alphabetical letter ‘I’ is sounded as EYE or EE as may be appropriate in either of the trade marks although my personal inclination lies with the pronunciation EYE.  I do consider, however, that this is not likely to be a weighty factor in the selection of the goods sold under the trade marks either from the shelves of shops or in any verbal request for them.

22. I consider that confusion between the trade marks PICOLAX and PICROLAX is not only likely, it is inevitable.

23. The trade marks are deceptively similar.

    Decision

24. Section 33 of the Act provides:

    Application accepted or rejected

    33.(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

    (a) the application has not been made in accordance with this Act; or
    (b) there are grounds for rejecting it.

    Note:  For the grounds on which an application may be rejected see Division 2.

    (2) The Registrar may accept the application subject to conditions or limitations.

    Note:  For limitations see section 6.

    (3) If the Registrar is satisfied that:

    (a) the application has not been made in accordance with this Act; or
    (b) there are grounds for rejecting it;

    the Registrar must reject the application.

    (4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

    Note:  For applicant see section 6.

25. I reject application 1362578.

    Iain Thompson
    Hearing Officer
    Trade Marks Hearings
    2 February 2012