Insight Clinical Imaging v Insight Radiology Pty Ltd

[2014] ATMO 85

TRADE MARKS ACT 1995

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

Re:Opposition by Insight Clinical Imaging to registration of trade mark application 1463912(44) - INSIGHT RADIOLOGY (Logo) - in the name of Insight Radiology Pty Ltd.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Siobhan Ryan of Counsel instructed by Barry Newman of Armour IP

Applicant: Victor Ng of Markwell Intellectual Property Lawyers

Decision:

2014 ATMO 85

s52 opposition to registration: s58 ownership – trade marks are substantially identical, registration refused.

Decision

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Insight Radiology Pty Ltd (‘the Applicant’) of Leeton, New South Wales, has made application to register the trade mark detailed below:

Application No: 1463912

Priority Date:  7 December 2011

Services:  Class 44: Radiology services

Trade Mark:  

(‘the Trade Mark’)

Endorsements:                Registration of this trade mark gives no exclusive right to use or authorise the use of the words INSIGHT RADIOLOGY in the State of Western Australia.

1. The application was examined as is mandated by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 2 May 2013.

2. On 6 June 2013 InSight Clinical Imaging (‘the Opponent’) of Midland, Western Australia, filed Notice of Intention to Oppose the registration of the Trade Mark.  On 31 July 2013 the Opponent filed an amended Statement of Grounds and Particulars alleging:

   Applicant not the owner of the trade mark (Section 58)

   Particulars: The Opponent commenced use of its strikingly similar trade mark

   in 2008, and claims ownership of the trade mark.

   Opponent's trade mark:

Trade mark is similar to a trade mark which has acquired a reputation in Australia (Section 60)

Particulars: The Opponent commenced use of its strikingly similar trade mark in 2008. Between 2008 and the filing date of the opposed application the Opponent acquired a substantial reputation in its trade mark.

Opponent's trade mark:

Trade mark is scandalous or contrary to law (Section 42)

Particulars: Use of the trade mark by the applicant constitutes a misrepresentation that the applicant is associated with the opponent.  This represents passing off, and is contrary to law.

1. On 14 August 2013 the Applicant filed a Notice of Intention to Defend.

2. Thereafter the parties filed evidence as detailed below in accordance with the Trade Mark Regulations 1995.  Subsequently, both parties were notified of their right to be heard and/or file written submissions.

3. Both parties elected to be heard; the hearing was before me as a delegate of the Registrar of Trade Marks on Wednesday, 3 September 2014 in Melbourne.  The Opponent was represented by Siobhan Ryan of Counsel instructed by Barry Newman of Armour IP and the Applicant was represented by Victor Ng of Markwell Intellectual Property Lawyers.

Onus & Relevant Date

1. The Opponent bears the onus of establishing at least one ground of opposition on the balance of probabilities.[1]  However, my decision can be appealed by either party on any ground (whether argued before me or not) to a Court that will hear the matter de novo.

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, most recently, Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 per Murphy J at [30] to [37].

2. The relevant date at which the grounds must be considered is the filing  date of the opposed application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited [1947] 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Evidence

1. The evidence in this matter comprises the following declarations:

   In Support

   Joseph Raymond Gauci, Managing Director of Insight Clinical Imaging Pty Ltd, dated 13 November 2013

   In Answer

   Alan Pham, a Director of the Applicant, dated 27 January 2014

   Dan Pettersson, Medical Practitioner, dated 30 January 2013

   Nelson Chua, Business Development Manager, dated 17 February 2014

   Victor Wei-Cho Ng, Trade Mark Attorney, dated 18 January 2014

   In Reply

   Joseph Raymond Gauci, Managing Director of Insight Clinical Imaging Pty Ltd, dated 15 April 2014

10.Mr Gauci’s evidence shows that the Opponent has a group of radiological practices which operate in Perth, Western Australia.

11.Mr Gauci states in his first declaration that the trade mark appearing below (‘the Opponent’s trade mark’) was adopted to use in relation for radiological services by the Opponent in December 2007 and the first practice was opened in Midland, WA, on 18 August 2008.

12.For the purposes of this decision, I accept that the first public use for radiological/clinical imaging and related services by the Opponent of the Opponent’s trade mark was by at least 18 August 2008.

13.Mr Alan Pham states that the Applicant first used the Trade Mark in February 2012.

Section 58

14.Section 58 of the Act provides:

58Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:For applicant see section 6.

15.Here the Opponent claims that it is the owner of the trade mark.  In order to establish its ownership of a trade mark, an opponent needs to satisfy me that it has authored[2] and used[3] a trade mark which is at least substantially identical[4] to the impugned trade mark in relation to goods or services which are ‘the same kind of thing’[5] as the services in respect of which registration is sought before either the first use or filing date of the impugned trade mark, whichever is the earlier.

[2] Shell Co of Australia Ltd v Rohm & Haas [1948] HCA 27; (1949) 78 CLR 601; [1949] ALR 661; 1A IPR 438 at [7].

[3] Buying Systems (Australia) Pty Ltd v Studio Srl[1995] FCA 1063; (1995) 30 IPR 517; [1995] AIPC 91-119

[4] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049.

[5] Re Hicks’ Trade Mark (1897) 22 VLR 636 and see Jackson & Co v Napper (1886) 35 Ch D 162 at 178.

16.It is common ground between the parties that the Opponent’s trade mark was used prior to the Trade Mark in relation to ‘the same kind of thing’: radiological/clinical imaging services.  What is in dispute is whether the trade marks in question are substantially identical.

17.Substantial identity, the parties agree, is to be assessed according to the tests in in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 by Windeyer J. at [12]:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

18.The essential features in the trade marks are, in my consideration, the word ‘Insight’ in common between the trade marks and to a lesser extent the circular ‘eye’ or ‘lens’ device in common between the trade marks.  The descriptive matter, the words ‘clinical imaging’ and ‘radiology’ are subject to heavy discounting in the comparison: they are words which come within a similar ambit to those referred to by Carr J in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; [1999] AIPC 40-117; (1999) 47 IPR 47 (‘Malanda’) at [38] in connection with flavoured ice cream:

The question to be decided in each case is largely one of fact, provided that the test is properly applied. Comparing CHOC CHILL, or COFFEE CHILL, or VANILLA CHILL or STRAWBERRY CHILL with CHILL, I note the differences comprising an extra word of varying length the function of which is to describe flavour, but I note the similarity of the constant use of the word CHILL. I have already mentioned the importance of CHILL and the degree to which it is essential to the mark. Bearing in mind the relative importance of CHILL I give very little weight to the descriptors CHOC, COFFEE, VANILLA or STRAWBERRY.

19.Similarly I give very little weight in the comparison to the descriptors ‘clinical imaging’ and ‘radiology’: they mean, in this context, the same thing and refer directly to the similar services of the parties.  Mr Ng submitted that Malanda should be distinguished from Malanda on the basis that there was involved in that decision a ‘claim to vary’ which operated in much the same way as a disclaimer.  I disagree: if disclaimers or claims to vary were still commonly entered onto the Register, the words ‘clinical imaging’ and ‘radiology’ would no doubt be subject a appropriate disclaimer or claim to vary.  The relevant passage in Malanda reads, at [38]:

In the end, I found myself in agreement with the delegate's reasoning and conclusion which is set out at p10 of her reasons as follows:

"When the side by side comparison is made between the mark CHILL, used by Malanda, and the application trade mark it is not a simple one to one comparison. P B Foods' mark is not simply CHOC CHILL. PB Foods has chosen to file its mark as one which will be varied in use and in doing so has made it clear that the essential feature of its trade mark is the word CHILL which is used with a purely descriptive variable feature. In selecting the goods, a prospective purchaser will therefore recognise the word CHILL as the badge of origin and will see the word CHOC or COFFEE or STRAWBERRY or VANILLA as nominating nothing more than the flavour of the product. When considered in this light, it seems to me that the comparison between CHILL and CHOC CHILL does lead to a "total impression of similarity" and the proprietorship claim is supported."

20.As I have observed, if it were now common practice to enter disclaimer onto the Register, it is likely that the words ‘clinical imaging’ and ‘radiology’ in the trade marks would be, in all likelihood, disclaimed.  Disclaimer, or claim to vary, was only relevant in Malanda in confirming that particular matter lacked any inherent adaption to distinguish: there is no doubt here that the words ‘clinical imaging’ and ‘radiology’ are generic in relation to the specified services.  The lack of a disclaimer in the present case does not, in my consideration, make Malanda any less relevant.  Further, Malanda has been discussed with approval by the Full Bench of the Federal Court in Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506; (2007) 243 ALR 127; [2008] AIPC 92-272; (2007) 74 IPR 246 in which case disclaimer or claim to vary was not a factor.

21.Concerning the ‘eye’ or ‘lens’ devices in the trade marks: in the context of the trade marks under consideration the devices appear to me to be differing versions of the same thing.  Both have an inner and outer circle.  Both have a break on the right hand side.  Both have some contrast between the inner and outer circle.

22.The ‘lens’ or ‘eye’ devices have some facility in relation to radiology or clinical imaging and the word ‘insight’ in an analogous manner to the word CHOC which referred to the goods in Malanda or the way that the device of a footprint referred to the word ‘barefoot’ within the trade mark in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381 at [69]. It will be noted that the High Court was not comparing two differing representations of the same object (a footprint) but two trade marks with the complete absence of the representation of a footprint in one of the trade marks under comparison.

1. Here, however, the differing representation of the same thing is present in both trade marks where the other essential feature – and the sign by which the services will be known and identified is the word ‘insight’.

2. The above factors lead me to conclude that the trade marks in question are substantially identical and that, accordingly, the Opponent has established its opposition under section 58 of the Act as it is the owner of the Trade Mark.

Decision

25.Subsection 55(1) of the Act provides:

55Decision

(1)Unless subsection (3) applies to the proceedings, 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.

Note:For limitations see section 6.

26.I refuse to register application 1463912.

Costs

27.The Opponent, having been successful, is entitled to its cost which I order against the Applicant at the Official Scale.

Iain Thompson

Hearing Officer

Trade Marks Hearings

15 September 2014