Immunex Corporation v Maine Resources Pty Ltd

[2001] ATMO 114

TRADE MARKS ACT 1995

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

Re:Opposition by IMMUNEX CORPORATION to registration of trade mark application 802527(5) - Immuplex - filed in the name of MARINE RESOURCES PTY LTD.

Background

On 5 August 1999, Marine Resources Pty Ltd ("Marine") filed an application with the Australian Trade Marks Office ("the Office") to register the trade mark Immuplex.  Marine nominated Health/nutritional products in class 5 of the International Classification of Goods and Services as the goods in respect of which it sought registration.

Office support staff allocated number 802527 to the application.  In due course, an examiner considered it.  The examiner reported to Marine that an amendment of the goods would be necessary to clarify what the application was intended to cover.  In compliance with this, Marine requested amendment to Nutritional additive for medical purposes.  Amended to this, and subsequently accepted, the application proceeded to advertisement for the purposes of opposition, which is the next stage in registration of a trade mark under the Trade Marks Act 1995 ("the Act"). 

The Australian Official Journal of Trade Marks carried the advertisement of acceptance on 22 June 2000. The Act then allowed any person to oppose registration of Marine's application. There was a period of three months for doing so. The regulations also set out the circumstances in which the period might be extended. On 22 September 2000, Immunex Corporation ("Immunex", or "the opponent") filed an application to extend the period for filing a notice of opposition to 22 December 2000. The Registrar granted the extension. On 21 December 2000, Immunex filed a notice of opposition.

The regulations then allowed three months for Immunex to serve evidence in support of its opposition on Marine.  It did so within that period.  Marine has not responded to this evidence in any way.

Neither party requested a hearing when given the opportunity to do so.  The opponent, however, took the opportunity to file brief written submissions on 16 August 2001 through its attorney, Mr Andros Chrysiliou, of Chrysiliou Law, a Sydney firm.

The opposition matter now comes to me, as the delegate of the Registrar appointed for that purpose, to decide whether or not the trade mark should now be registered.  In making this decision, I must have regard to any evidence that has been properly served and the written submissions on the file.

Notice of Opposition

The notice lists ten grounds of opposition. Those to which the evidence and written submissions relate are in terms of the provisions of ss 43, 44 and 60 of the Act. Ground III nominates Immunex's trade mark registration 567826 as constituting a barrier to registration.

The remaining grounds are numbered I, II, VII, VIII, IX, and expressed in terms of ss 58, 41, 42, and 62, respectively.  The evidence and written submissions do not support or refer to those grounds.  I see no other reason to consider them.  So far as the opposition is based upon them, I find that it fails.

Evidence

The evidence consists of two declarations, both dated 20 March 2001, made by Andros Chrysiliou.  The first has four annexures.  The second has one, numbered sequentially to those in the first declaration.  I will treat the declarations jointly.

Mr Chrysiliou states that he has been informed and from his own enquiries believes that Immunex is the house brand of Immunex Corporation and is the trade mark under which its activities and products in the biopharmaceutical field are referred to and identified.

Annexure AC1 is the details of registered trade mark 567826, on which Immunex relies.  AC2 consists of extracts from a library search undertaken to show the nature and extent of publicity, in Australia, afforded the opponent and its registered trade mark, Immunex.  AC3 is a list of Australian medical articles located in the search.  AC4 lists some of the international journal articles which concern Immunex and its trade mark. AC5 is a copy of materials from the Immunex website.

There is no direct statement from the opponent about the nature or extent of its business.  The attorney has not indicated the basis for his information in or about the company.  I think the material must be treated with some caution.

It appears that Immunex is a biotechnology company, based in Seattle, Washington, and founded in 1981 by either one Dr Steven Gillis (according to one media report) or one Christopher Henney (according to others).  Apparently, its corporate aim is "..improving lives through immune system science innovations".  Its products are said to include Enbrel (used to treat rheumatoid arthritis, and with possible application to chronic heart failure, psoriasis and psoriatic arthritis), Leukine (which is used to stimulate the production of white blood cells), and Novantrone (used to treat some cancers and multiple sclerosis).

Immunex appears to be a well-known and profitable company in its field.  Its rheumatoid arthritis product is reportedly worth $US700 million in revenue annually.  According to Australian financial press reports in July 2000, Immunex was at that time one of the top ten US "biotechs", with an international presence.  Media reports in AC2 have it forming a strategic alliance or perhaps a partnership with a New Zealand research and development company, Genomics.

Discussion

Onus

Section 55 of the Act provides:

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.

The onus in an opposition proceeding is therefore on the opponent to establish at least one of the grounds of opposition specified in its notice of opposition.  This is consistent with the presumption of registrability under s 33, which applies at the examination stage.  There is no onus on an applicant to show that its trade mark should proceed to registration unless and until a ground of opposition is, to some extent at least, made out.

Mr Chrysiliou submitted that Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd ([1981] 1 NSWLR 196) is authority for the proposition that an opponent's evidence is strengthened by not having been contradicted or challenged. That is so, of course, provided that the evidence provided by the opponent does establish the requisite prima facie case. 

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

Section 43, when used as a ground of opposition to registration, requires an opponent to show that:

• there is a connotation in the proposed mark, or one of its parts; and

• because of this, the trade mark is likely, when in use, to deceive or cause confusion.

TGI Friday's Australia Pty Ltd v TGI Friday's Inc ([2000] FCA 720) confirms that the connotation must be in the applicant's trade mark itself. The connotation cannot result from external considerations, such as reputation or use.

If there is a deceptive or confusing connotation in the trade mark Immuplex, the opponent has not made clear what it thinks it to be.  So far as I can see, the trade mark is simply an invented word.  While to me the word suggests that the goods may be beneficial, I do not see that such a connotation is likely to deceive or cause confusion. 

I dismiss this ground of opposition.

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 ...; ...
....

(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 .....

For a trade mark application or registration to block another application under s 44, three conditions must exist. The first is that it must have a priority date earlier than the other application. Secondly, it must be registered by another person in respect of similar goods or services. Thirdly, the trade marks of each party must be sufficiently alike to be either substantially identical or deceptively similar.

Here, the first two conditions do exist.  The opponent's registration 567826 has a priority date of 3 June 1991, based on a US application.  That date is much earlier than the application's priority date of 5 August 1999.  As to the goods, I agree with Mr Chrysiliou's submission that the Nutritional additive for medical purposes, in respect of which Marine seeks registration, is a subset of the Pharmaceutical products and all other goods in this class, in respect of which Immunex is registered.

I turn now to a comparison of the trade marks.

The well-known test for substantial identity is to compare the trade marks side by side, noting their differences and similarities [Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641; Shell Co (Australia) Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414]. Applying this test, is Immuplex so similar to Immunex as to be substantially identical to it?

The trade marks begin with the same four letters, immu- and end with the same two letters, -ex.  They are both three-syllable invented words.  However, I think that the visual and aural differences between the third syllables - on the one hand -nex and on the other, -plex - outweigh the similarities.  On this abstract test, I do not find them substantially identical.

The test for deceptive similarity is a broader one.  The enquiry is not based on a side by side comparison, but on the effect of memory.  The question is whether it is likely that a substantial number of persons, who know the registered trade mark Immunex are likely, on encountering the trade mark Immuplex, will be confused or deceived or even merely caused to wonder whether the goods come from the same source.  In considering this question, I am to take into account all the surrounding circumstances (Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 at para 50).

I take it to be common knowledge that nutritional supplements for medical purposes, like other pharmaceutical goods, are frequently sold under trade marks which are invented words.  It could be said to be the norm, rather than the exception, in relation to such goods.  I also take it to be common knowledge that such trade marks frequently take as their point of departure words having direct reference to the nature of the goods. 

These naming conventions imply, I think, that there will be a crowded market-place in respect of the suffixes -plex (from complex) and -ex and, to a lesser extent, the prefixes immu-, immun- and immuno- (from immunology).  To my knowledge, the relevant market-place is particularly crowded in respect of these suffixes, but also in respect of these prefixes.

The customers and staff of health food shops, chemist shops and pharmaceutical departments in large stores are likely to be familiar with these conventions, as are doctors, hospital staff and their patients.  I take such persons to be the ordinary customer in respect of both trade marks.

Mr Chrysiliou, in his written submissions, directed my attention to an earlier decision of the Registrar, Nicholas Proprietary Ltd v Warner Lambert Pharmaceutical Company [(1970) 30 AOJP 3301], where Migravan was found deceptively similar to Myavan.  Although the circumstances are superficially similar, I do not think that the ordinary customer, at the relevant date of 5 August 1999, is quite the same as existed more than 20 years ago.  Moreover, the trade marks are not the same as was there the case.

In the same submissions, Mr Chrysiliou recommended that I take particular note of the special circumstances created by the lack of clarity of handwriting by doctors, and the dangerous consequences of using the wrong medication. 

Assuming that Nutritional supplements for medical purposes are prescription goods, they will be dispensed with particular care by highly trained persons who are aware of the consequences of error.  Moreover, I am aware from my own experience that doctors are increasingly likely to issue a typed prescription, using a computer in their consulting rooms, rather than writing prescriptions longhand. 

I believe that the ordinary customer, in all the circumstances of modern-day trade in this sector, is used to distinguishing between such trade marks.  The difference between Immuplex and Immunex is sufficient, in my estimation, to make it unlikely that there will be confusion or deception.

As I find the trade marks to be neither substantially identical nor deceptively similar, the opposition in terms of s 44 fails.

Trade mark similar to trade mark that has acquired  a reputation in Australia

60. The registration of a trade mark in respect of particular goods .... may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods ..., had 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.

For Immunex to establish that s 60 constitutes a barrier to registration of Marine's accepted trade mark, it must show that, at the date the application was filed:

• there existed a substantially identical or deceptively similar trade mark;

• this other trade mark had already acquired a reputation in respect of goods in relation to which it had been used; and

• the proposed use of the trade mark in the application would, as a result of that reputation, be likely to lead to deception or confusion in the market-place.

I have formed the view that the trade marks are neither substantially identical nor deceptively similar.  The opposition on this ground therefore fails at the first hurdle.

It is therefore not necessary for me to consider whether the opposition establishes the extent of the reputation of the Immunex trade mark, nor the likely effect of that reputation.

I dismiss the ground of opposition based on s 60.

Decision

I have found that none of the grounds on which the opposition was brought have been established.  Accordingly I direct that the application may proceed to registration after 30 days from the date of this decision, subject to the payment of the appropriate fees.  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

Although Immunex requested costs, its opposition has been unsuccessful.  However, the applicant, Marine, has taken no active part in the opposition proceeding.  In the circumstances, I make no award as to costs.

Arminel Ryan
Acting Hearings Officer
Trade Marks Hearings
15 November 2001