Hyal Pharmaceutical Corporation v Fidia S.p.A

[2000] ATMO 62

TRADE MARKS ACT 1995

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

Re:Opposition by Hyal Pharmaceutical Corporation to registration of trade mark application number 731575 in the name of Fidia S.p.A. for the word mark HYAL.

Background

This decision concerns an application to register the word trade mark HYAL, which was filed by Fidia S.p.A. (the applicant) on 7 April 1997.  The goods in respect of which registration is sought are 'pharmaceutical preparations', in class 5. 

Subsequent to examination of the application, its acceptance was advertised in the Australian Official Journal of Trade Marks of 22 October 1998.  Registration of the trade mark was opposed by Hyal Pharmaceutical Corporation (the opponent) by filing a notice of opposition on 22 April 1999.  The notice of opposition recites five grounds in terms of the Act, one of which, expressed in somewhat ambiguous terms, appears to relate to section 43.  For the purpose of this decision, it will be appropriate to state the grounds as they appear in the notice of opposition (with references to the sections of the Act added):

(a)  The opposed trade mark is not capable of distinguishing the goods and/or services for which registration is sought from the goods or services of other persons.  (S.41);

(b)The use of the opposed trade mark would be contrary to law.  (S.42);

(c)The use of the opposed trade mark would be likely to deceive or cause confusion.  (Assumed to be under s.43);

(d)The applicant is not the owner of the opposed trade mark.  (S.58);

(e)The opposed trade mark is substantially identical with, or deceptively similar to, another trade mark or other trade marks that, before the priority date of the opposed trade mark had acquired a reputation in Australia for goods or services for which registration is sought, and because of the reputation of that other trade mark or those other trade marks the use of the opposed trade mark would be likely to deceive or cause confusion.  (S.60);

(f)The Registrar should refuse the application on the above or other grounds in the exercise of his or her discretion.  

No evidence, either by the opponent or the applicant, has been filed in respect of the opposition.

The applicant requested to be heard on the opposition.  A hearing was held in Canberra, the applicant being represented by telephone, by Mr Tim Goldner of  McMaster Oberin Arthur Robinson & Hedderwicks, patent and trade marks attorneys of Melbourne.  The attorneys acting for the opponent advised that the opponent will not be appearing at the hearing, nor did they forward any written submissions to the Office before the hearing.

Submissions
With reference to the Trade Marks Office Draft Manual of Practice and Procedure and  Intel Corp v Magnatex International Pty Ltd (1998) 41 IPR 406, Mr Goldner reminded me that it was for the opponent to support its grounds of opposition, which the opponent had failed to do in the present proceedings.

Addressing the grounds of opposition, Mr Goldner said that the mark HYAL had no clear meaning in the context of pharmaceutical preparations.  He criticised the opponent's failure to indicate the reasons for alleging that use of the applicant's mark was contrary to law in terms of s.42 of the Act.  He noted that an allegation based on a copyright infringement would be for a court to decide, as per NBA Properties Inc v Gaunt (1999) 44 IPR 225 and, in any event, it could not apply to the applicant's mark, because copyright did not subsist in a word. If the opponent had the Trade Practices Act 1974 in mind in relation to this ground, then no evidence had been presented to substantiate any allegations under that Act.  Mr Goldner also submitted that the word HYAL constituting the mark was not a scandalous word in term of s.42(a).   Interpreting the ground under para (c) in the notice of opposition as referring to s.43, he maintained that there was nothing implied in the mark that would offend against the provisions of that section of the Act.    

In relation to ownership, Mr Goldner said that any issues regarding this question involved substantially identical marks, submitting that the three marks, which had been cited against the subject mark in the course of examination were not substantially identical with the applicant's mark and therefore could have no relevance in this regard.  He emphasized that the applicant has a number of long standing registrations in Australia, and that it was also a registered owner of the subject mark in many countries, therefore  it could not be regarded as anything other than a genuine owner of the mark.  Commenting that the opponent had filed applications for registration of the mark HYAL in 1994 (although no evidence has been led by the opponent on this aspect), he said that these applications had lapsed in 1996.  The marks of the lapsed applications could not be raised as grounds for challenging the applicant's claim to ownership, he submitted, citing  Takata Corporation v Britax Child-Care Products Pty Ltd (1999) 44 IPR 425, where the hearing officer rejected the ownership claim based on the fact that the mark had been registered but subsequently removed from the Register for non-use.

Concerning the s.60 ground, Mr Goldner submitted that, if the opponent's allegations as to the likelihood of deception or confusion are based on the reputation of an earlier mark, then that mark is neither identified nor has any evidence been made available to support such allegations.  Noting that the word HYAL is included in the opponent's name, Mr Goldner submitted that the mere registration of  a company's name, or its existence did in itself show any relevant reputation.

Discussion
For the opposition to be considered in terms of sections 42, 58 and 60, it is not sufficient for the opponent to simply state the grounds based on these sections.  Each of these grounds must be substantiated by evidence.  Thus, s.42 requires the opponent to support a claim that use of the applicant's trade mark would breach some piece of legislation, or that  it should be rejected registration as a mark because it 'contains or consists of scandalous matter'.  The s.58 ground concerns evidence of prior use of a substantially identical mark in respect of 'the same kind of thing'. To support the s.60 ground, the opponent needs to establish a reputation in a prior mark in Australia that could lead to deception or confusion with the applicant's mark. 

The applicant's trade mark would contravene s.43 if, because of some connotation that the mark has, the use of it in relation to the designated goods would be likely to deceive or cause confusion.  The opponent has not shown such a connotation, nor do I find it exists.

Given that the opponent has not established any of the above-mentioned grounds,  I dismiss the opposition based on sections 42, 43, 58 and 60.      

In order to decide whether a mark is capable of distinguishing the goods or services of one person from those of other persons pursuant to s.41, one must consider the extent to which a trade mark is inherently adapted to distinguish.  The concept of inherent adaptability has been explained by Kitto J in Clark Equipment Co v Registrar of Trade  Marks, (1964) 111 CLR 511, at 514:

… the question whether a mark is adapted to distinguish [must] 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 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.

The examiner's worksheet, which is used by examiners to record, inter alia, the research carried out in respect of registrability of trade marks under s.41, indicates, in the present case, that before acceptance of the mark the examiner consulted different relevant sources, including those on pharmaceutical preparations.  From perusing the results of that research and relying on my own research I am satisfied that the applicant's mark is one which other traders would not be likely to require for use in respect of similar goods.  Nothing has been submitted by the opponent to support the contention that the opposed mark is not capable of distinguishing.  I find therefore no reason for not agreeing with the examiner as to the mark qualifying for registration under the provisions of s.41 of the Act.

Conclusions
It follows from the above that the opposition is dismissed on all five grounds stated in the notice of opposition. 

Costs
Costs should follow the event.  The applicant being the successful party in these proceedings is entitled to costs.  I therefore direct that the opponent pay the applicant's costs.

Vija Zars
Hearing Officer

26 June 2000