Himalaya Global Holdings Ltd - [2012] ATMO 9

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1362576(5) - LIV.52- in the name of Himalaya Global Holdings Ltd.

Delegate:

Iain Thompson

Representation:

Applicant: Cathryn Warburton of Acacia Law

Decision:

2012 ATMO 9

s33 proceedings – s44 ground for rejection - similar goods - trade marks deceptively similar - application rejected.

Background

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: 1362576

Priority Date: 20 May 2010

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

Trade Mark: LIV.52

An examiner of trade marks has stated a ground for rejection in terms of subsection 44(1) of the Act in relation to two trade mark registrations (‘the registrations’) relevant details of which appear below:

Registration No: 912142

Priority Date: 9 May 2002

Goods:Class 5: Pharmaceuticals, veterinary and sanitary preparations, dietetic substances for medical use, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants.

Trade Mark:

Registration No: 1171507

Priority Date: 17 APR 2007

Goods:Class 5: Adhesive bandages (dressings); adhesives for use in fixing bandages; articles for holding bandages in place; bandages for dressings; bandages for making casts; bandages for making splints; compression bandages (dressings); elastic bandages (dressings); elastic bandages incorporating absorbent wadding; finger bandages; foot bandages (dressings); gauze bandages (dressings); non-elastic bandages (dressings); pressure bandages (dressings); surgical bandages; synthetic padding bandages (dressings); triangular bandages (dressings); tube gauze bandages; tubular bandages (dressings); filled first aid kits; absorbent cotton pads (for medical purposes); adhesive backed films for medical purposes; adhesive films for medical use; adhesive materials in the form of strips for medical use; alcohol swabs for medical purposes; dressings (medical); eyepatches for medical purposes; paper adhesive tape for medical purposes; plasters for medical purposes; preparations containing eucalyptus (medical); self-adhesive tapes for medical purposes; sodium chloride for medical use; sterile solutions for medical purposes; tapes for strapping (medical); wipes for hygienic (medical) purposes

Trade Mark:

In response to the applicant’s submissions, the trade mark examiner has issued a further two reports and has not resiled from the ground for rejection. As a consequence, the applicant requested a hearing.
I heard the submissions of the applicant by teleconference in Canberra on 14 December 2011. Ms Cathryn Warburton of Acacia Law represented the applicant.
Ms Warburton made oral submissions and her written summary of these submissions appears below:
The Applicant submits that this ground of refusal cannot be maintained as the marks themselves are quite different from the applicant’s mark. In addition, the goods of the application and the second cited mark are quite dissimilar to the extent that no confusion or deception is likely.
CASE LAW
Is the mark deceptively similar in a way contrary to s44 of the Trade Marks Act?
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 SAP (Australia) Pty Ltd v Sapient (Australia) Pty Ltd (1999) 48 IPR 593, the court stressed that the full phrase of a mark is to be taken into consideration; the court should not base their decision purely on a possible contraction of the mark.
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
Dissimilar Goods
The Applicant notes that TM #1171507 cannot be considered deceptively similar to the Applicant’s mark, for the simple reason that the goods covered by their specifications are not similar. The Applicant’s mark is specified for “pharmaceutical substances; dietetic substances for medical use”. These goods do not appear in the specification for #1171507, which mostly includes types of bandages and wound dressings.
Wound dressings, bandages, and the other goods specified for #1171507 are quite different to “pharmaceutical substances; dietetic substances for medical use”. This is because wound dressings/bandages are not taken orally like pharmaceutical/dietetic substances are. This means that the potential for harm is minimal: putting on an incorrect bandage may slightly delay healing, but taking the wrong pharmaceutical product could potentially make a person very ill or even kill them.
The two sets of goods therefore are not similar as required by s44(1), because they are not “of the same description” or “the same as” each other: see s14. As a result, TM#1171507 cannot be said to be deceptively similar to the Applicant’s mark.
Consumers Choose Such Goods Carefully
The Applicant’s specification is also relevant for a second reason. Pharmaceutical and dietetic substances 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 LIV.52 is specified for are therefore likely to pay a very high level of attention when choosing them.
The Applicant submits that this makes it unlikely for a consumer to be confused or deceived into believing that the LIV.52 mark and the two cited marks refer to the same trader. Because it is in the consumer’s interest to pay a high level of attention when choosing products of this nature, they will most likely examine the products closely to ensure that they are choosing the correct one. It is therefore doubtful that the marks will seem “deceptively similar” to consumers.
Dissimilar Marks
Thirdly, the Applicant submits that its mark is not deceptively similar for the simple reason that its LIV.52 mark is clearly not the same as “LIV” or LIV.52 is noticeably longer than LIV and shorter than LIV MEDICA; it also contains a distinctive “dot” and a numerical element which both those marks lack.
In their [sic] report dated 20 July 2011, the Examiner contended that LIV.52 may be abbreviated to LIV, which is identical to TM#912142. With respect, this contravenes the law laid down in SAP (Australia) Pty Ltd v Sapient (Australia) Pty Ltd [supra] which requires the full mark to be taken into consideration instead of possible contractions or abbreviations.
Seeing as the mark is to be taken as “LIV.52” (pronounced “liv-dot-52”), it surely cannot be said to be deceptively similar to “LIV” or “LIV LIV MEDICA (logo)”.
In addition, we note that the LIV trade mark is due for renewal in May 2012. If LIV.52 is considered to be too similar to LIV (which we do not believe it is), then at the very least, the examination of this mark should be deferred until after that date.
In light of these reasons, the Applicant contends that the presumption of registrability must prevail.

Discussion

It is convenient to decide this matter only in relation to registration 912142. However, in order to address her concerns regarding the similarity of goods of 1171507 and those of this application, I note that the goods of the registration include ‘preparations containing eucalyptus (medical), sodium chloride for medical use; [and] sterile solutions for medical purposes.’ The foregoing goods are similar goods to the ‘Pharmaceutical substances’ included in the goods of the application.
In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13, Windeyer J said of deceptive similarity:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “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” (1937) 58 CLR, at p 658.
And when comparing trade marks, the assessment should occur in the context of the trade in question. This 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.
The standard which is applied to the assessment is that discussed in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at paragraph 50 by French J who said:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (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.”
I note SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821; (1999) 169 ALR 1; (1999) 48 IPR 593; [2000] AIPC 37,109 is cited as authority for Ms Warburton’s proposition that the decision in that case requires the full mark to be taken into consideration instead of possible contractions or abbreviations [stress added]. The Court said at paragraph 49, “It is necessary to keep in mind that the registered mark is “SAPIENT COLLEGE” not “Sapient”. The latter contraction is not protected.” However, the Court went on to say, “The marks said to infringe are “Sapient” and “Sapient Australia”. While it is true, as submitted for the appellants, that the comparison must be between the marks themselves, the contextual setting to which his Honour referred derives not from the use of the registered mark but from its content.” The passage on which Ms Warburton apparently relies also follows shortly after the Court quoted the following passage from Australian Woollen Mills Ltd v F. S. Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 (at 658-659):
“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.
....
The main issue in the present case is a question never susceptible of much discussion. 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.”
In other words, the Court did not rule out likely contractions of a trade mark, it ruled out possible contractions of a trade mark. If an element of a trade mark is such that it is the way that a trade mark is likely to be generally known and recognised when considering ‘the habits and observation of men in the mass’, then the other elements of the trade mark should be to an extent discounted when making the comparison. Whether such contractions are either ‘likely’ or ‘possible’ lies in the character of the trade mark itself, the nature of the goods, and the habits of purchasers in the marketplace in which the goods are sold.
When considering the range of goods in respect of which the trade marks are likely to be used, I am to consider the trade marks as used to the extent of the specifications of goods. In this regard, French J said in Woolworths at 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.
The goods thus include complementary medicinal preparations and the like, and the relevant marketplace in which the trade marks are likely to be used include health food stores, supermarkets and the self-selection areas of pharmacies.
The word LIV is the sole word which occurs in registered trade mark 912142. It is short and is the only way in which the goods sold under the trade mark may be indentified, remembered and requested.
It is not, I consider, very likely that a person looking for the goods sold under the registered trade mark, or requesting them, will place any significance on the fact that the trade mark of the applicant has the numeral ‘.52’ after the word LIV – if, in fact, this is noticed.
However, if the numeral ‘.52’ is noticed and any close attention is paid to it, I consider that it is likely that a person seeing the applicant’s trade mark will naturally assume that it indicates an alternative formulation or compound strength of the goods sold under the registered trade mark.
I consider the trade marks LIV and LIV.52 to be deceptively similar.
While I take notice of Ms Warburton’s warning that, “taking the wrong pharmaceutical product could potentially make a person very ill or even kill them”, this issue is for the applicant itself to resolve in the light of my finding of deceptive similarity. As I observed in Merck KGaA v Generic Health Pty Ltd [2007] ATMO 1:
This ‘policy’ approach to the issue appears to me to go very much to the exercise of a discretion by the Registrar of the type that was present in the Trade Marks Act 1955. However, the import of general policy issues into considerations of the type of matter before me under section 44 is one that is not appropriate under the Trade Marks Act 1995 . As observed by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020:
The grounds for non-acceptance of an application to be found in Division 2 of Part 4 of the Act substantially reflect grounds for non-acceptance set out in recommendation 6A of the 1992 Working Party Report. It was said in the Report:
“These grounds have been formulated with the aim of excluding matters which are considered inappropriate for a bureaucracy to determine, such as matters of morality or fraud, and with general principles in mind that it should be procedurally straightforward to obtain registration of a trade mark , and procedurally straightforward to have one removed from the Register. This aim can be achieved, at least in part, by defining clearly the grounds on which an application may be denied registration, as well as those whereby the registration may be rectified or removed.” (p 44)
Deputy Registrar Hardie also commented on this kind of issue in Schering Aktiengesellschaft v Bracco International B.V [1999] ATMO 89:
I do take note, however, of Ms Freeman’s reference to Edward’s Application [(1946) 63 RPC 19 - the JARDEX /JARDOX case] and her submissions that, where medical products are concerned, there is strong public interest in precluding even small risks if there is a possibility of dangerous consequences.
Edward’s Application however, was decided not on the basis of a real likelihood of risk, but on an exercise of the Registrar’s discretion. That discretion does not exist under the TradeMarks Act 1995. The provisions of section 44 as analysed and explained by Justice French [see Woolworths, above] require a positive finding that a risk of deception or confusion is likely. [Parenthetical material added]

Decision

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.
Ms Warburton requested that if I intended to reject application 1362576 that I defer it against the possibility that registration 912142 might not be renewed in May 2012.
Section 36 of the Act provides:
36Deferment of acceptance
The Registrar may defer the acceptance of the application in the circumstances, and for the period, provided for in the regulations.
The Trade Mark Regulations 1995 relevantly provide:
4.13Deferment of acceptance
(1)The Registrar may, at the request of the applicant in writing, defer acceptance of an application for registration of a trade mark, if:
(a)the request is made within a period prescribed in subregulation 4.12 (1); and
(b)the Registrar reasonably believes that there are grounds for rejecting the application under subsection 44 (1) or (2) of the Act, or subregulation 4.15A (1) or (2), because of another trade mark:
(i)that is registered by another person; or
(ii)that is a protected international trade mark; or
(iii)in respect of which an application for registration, or an IRDA, has been made by another person; and
(c)the applicant:
(i)is awaiting the finalisation of proceedings in respect of the application for registration of the other trade mark or the IRDA; or
(ii)is seeking to satisfy the Registrar as to:
(A)a matter mentioned in paragraph 44 (3) (a) or (b) of the Act or 4.15A (3) (a) or (b) of these Regulations; or
(B)the matters mentioned in subsection 44 (4) of the Act or subregulation 4.15A (5);
in relation to the applicant’s trade mark and the other trade mark; or
(iii)has filed an application under section 92 of the Act or regulation 17A.48 in respect of the other trade mark and is awaiting the finalisation of proceedings in respect of that application; or
(iv)has begun proceedings to have the Register or the Record of International Registrations rectified in respect of the other trade mark and the proceedings have not been determined or otherwise disposed of; or
(v)is awaiting renewal of the registration of the other trade mark in the period of 6 months after registration of the other trade mark has expired, or removal of the other trade mark from the Register; or
(vi)is awaiting renewal of the international registration of the other trade mark in the period of 6 months after the international registration has expired, or removal of the other trade mark from the International Register.
(2)The Registrar may, on his or her own initiative, defer acceptance of the application within a period that is prescribed in subregulation 4.12 (1) or that is extended under section 224 of the Act or subregulation 4.12 (4), if:
(a)the time within which proceedings mentioned in paragraph (b) may be begun, or an application mentioned in paragraph (c) may be made, has not ended; or
(b)appeal proceedings under a provision of the Act have begun in a prescribed court in relation to the application; or
(c)an application has been made to the Administrative Appeals Tribunal for review of a decision of the Registrar in relation to the first‑mentioned application; or
(d)the Registrar is informed in writing that the applicant has died.
4.12Periods after which applications lapse
(1)For the purposes of subsection 37 (1) of the Act (which deals with lapsing), the prescribed period, for an application in respect of which a report is made under regulation 4.8, is:
(a)except as provided by paragraph (b) — 15 months from the date of that report (whether or not a further report is made under regulation 4.10); or
(b)if a further report raises grounds under Division 2 of Part 4 of the Act for rejecting the application that were not raised in the report made under regulation 4.8 — 15 months from the date of the further report.
The request for deferment is outside the 15 month period which followed the issue of the examiner’s first report on 25 May 2010. Additionally, registration 912142 is not within the period of 6 months awaiting renewal of its registration after it has expired – expiry will not occur until 9 May 2012 and the relevant period starts then. Neither are there any proceedings pending against registration 912142. Deferral of the application is thus not possible.
I reject application 1362576.

Iain Thompson

Hearing Officer

Trade Marks Hearings

31 January 2012