Intervet International B.V. v Randlab Australia Pty Ltd
[2010] ATMO 45
•17 June 2010
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Intervet International B.V. to registration of trade mark application 1177556(5) - REG-U-LATE - filed in the name of Randlab Australia Pty Ltd.
Delegate: | Iain Thompson |
Representation: | Opponent: Gerard Skelly of Spruson and Ferguson Applicant: George Griziotis of Peter Maxwell & Associates |
Decision: | 2010 ATMO 45 s52 opposition - s44: evidence, if filed as expert evidence as to marketplace, should address state of marketplace fully. Trade marks REG-U-LATE and REGUMATE deceptively similar in respect of hormone preparations for mares. Registration refused. Costs awarded against applicant. |
Background
In this matter, Randlab Australia Pty Ltd of Lugarno, New South Wales, (‘the applicant’) has applied to register a trade mark, under the Trade Marks Act 1995 (‘the Act’), current details of which appear below:
Application No: 1177556
Priority Date: 21 May 2007
Goods:Class: 5 Veterinary preparation for control of breeding cycle in female horses
Trade Mark: REG-U-LATE
After examination of the application, it was accepted and advertised for possible registration in the Australian Official Journal of Trade Marks on 20 September 2007.
On 20 December 2007, Intervet International BV, of The Netherlands, (‘the opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice is couched in broad terms and includes the grounds under sections 44, 60, 42(b) and section 41 on each of which the opponent relied at the hearing. For the sake of completeness I find now that those other grounds mentioned in the Notice have not been established.
The parties completed the process of serving and filing of evidence in relation to these proceedings as provided for by the Act and subsequently applied to be heard in the matter.
I conducted the hearing as a delegate of the Registrar of Trade Marks in Sydney on 12 May 2010. Gerard Skelly of Spruson and Ferguson, represented the opponent. George Griziotis, of Peter Maxwell & Associates, represented the applicant.
At the end of the hearing I reserved my decision which I now provide along with my written reasons.
Evidence
The evidence served and filed in relation to this matter is as follows:
| Declaration | Position | Date Made | Exhibits |
In Support: | |||
Mark Albrecht | Senior Regulatory Affairs Specialist | 16 September 2008 | MA-1 to MA-15 |
Dr Gordon Watt | ‘Trade’ | 26 August 2008 | |
Dr John Brown | ‘Trade’ | 27 August 2008 | |
In Answer | |||
Angelis Vasili | Managing Director of opponent | 17 February 2009 | AV-1 to AV-4 |
Dr Brett Williams Jones | ‘Trade’ | 8 April 2009 | |
Dr Brett Williams Jones | ‘Trade’ | 8 April 2009 | |
Dr David Seale | ‘Trade’ | 8 April 2009 | |
Dr Alan Frogley | ‘Trade’ | 1 April 2009 | |
Dr John Walker | ‘Trade’ | 19 May 2009 | |
Dr John Crowley | ‘Trade’ | 16 June 2009 | |
Dr Jennifer Stewart | ‘Trade’ | 16 June 2009 | |
In reply | |||
Andrew Spear | ‘Trade’ | 26 October 2009 | |
Matt Pope | ‘Trade’ | 27 October 2009 | |
Gregory Powell | ‘Trade’ | 27 October 2009 |
Mr Albrecht’s declaration states that since 1993 the opponent has sold a veterinary preparation in Australia under the trade mark REGUMATE; I note here that the applicant’s ‘trade’ evidence explicitly acknowledges the use and reputation of the opponent’s trade mark[1]. Two iterations of this trade mark are registered in Australia by the opponent and the details are as follows:
[1] See paragraph 15 of this decision and paragraph 2 of ‘trade’ declaration.
Registration No: 375393
Priority Date: 12 May 1982
Class: 5
Goods:Pharmaceutical, veterinary and sanitary substances; disinfectants; preparations for killing weeds and destroying vermin; anti-parasitic preparations and all other goods in this class
Trade Mark: REGU-MATE
Registration No: 391508
Priority Date: 18 May 1983
Class: 5
Goods:Pharmaceutical, veterinary and sanitary substances disinfectants, preparations for killing and destroying vermin, all of the aforementioned being used or for use on or in relation to horses; and all other goods in this class used or for use on or in relation to horses
Trade Mark: REGUMATE EQUINE, REGUMATE (series)
I do not think that the differences caused by the presence or absence of the hyphen in the opponent’s trade marks, above, are substantial[2] and will refer to them henceforth as ‘the opponent’s trade mark.’
[2] Re Application by Waterbed Association of Retailers & Manufacturers (1990) 20 IPR 605 (trade mark including the ‘word’ W.A.R.M.), see also Re Application by Chubb Australia Ltd (1990) 20 IPR 175 (inclusion of hyphens in trade mark DOWN-UNDER not affecting identity of trade mark DOWNUNDER) and discussion at page 480 of Mark Foy’s Ltd v Davies Coop & Co Ltd and Another (1956) 1A IPR 470 (TUB-HAPPY compared with TUB HAPPY).
From 1993, the opponent’s trade mark has been used in Australia by the opponent (or under its aegis) in relation to an oral progesterone hormone preparation for controlling the oestrus cycle in sows and gilts.
Since 1996, the opponent’s trade mark has also been used by the opponent (or under its aegis) in Australia in relation to an oral progesterone product for programming of oestrus in mares.
Both of these uses fall within the compass of the specifications of goods of the opponent’s registration.
Mr Albrecht provides confidential details of revenues under the opponent’s trade mark which are, considering the specialty of the goods and the comparative smallness of the marketplace, respectable.
The trade declarations served and filed in support of the opposition are in common form and, the declarants, after stating their names, state their belief that the trade marks of the parties are deceptively similar. Dr Gordon Watt states:
I am a practicing veterinarian and a director of Peninsula Animal Hospital. I have an interest in horses and am part-owner of five racehorses.
I am well aware of the veterinary goods marketed and sold by Intervet International BV. (“Intervet”) under the trade mark REGUMATE (and REGU-MATE) and am familiar with their use.
In my view, the REGUMATE trade mark is viewed by Australian veterinarians and other consumers in the trade as exclusively indicating Intervet as the commercial origin of REGUMATE goods. Further, I would consider use of a mark as similar to REGUMATE as REG-U-LATE, in connection with similar goods, as likely to cause deception of confusion in the trade.
Intervet has a significant reputation and profile in the Australian marketplace, and in view of Intervet's use of REGUMATE in Australia since 1993, I consider that any similar mark such as REG-U-LATE could not have been adopted without at least some prior knowledge of Intervet's REGUMATE goods.
My understanding is that the veterinary preparation in respect of which the opposed trade mark is sought to be registered is a hormone which delays the onset of ovulation in mares. If a mare is proposed to be raced, or taken to where a stallion stands at stud, or is to take part in show-jumping or eventing competitions, such a delay has obvious benefits to the horse owner’s management of mares undertaking such activities.
Mr Vasili, in his evidence in answer, states:
I invented the trade mark REG-U-LATE prior to lodgement of the application with IP Australia on the basis that it was a derivative of the word “regulate”, and without any intention to cause the alleged confusion with the Opponent’s trade mark REGUMATE. Specifically, REG-U-LATE was adopted because I believe it to cleverly and simply signify the goods as being those that would allow you (the vet) to regulate the late onset of the breeding cycle in female horses, hence REG-U-LATE.
The goods offered under the trade mark REG-U-LATE must be purchased by prescription of a veterinarian, and are not available “over the counter” from supermarket or pharmacy shelves to any other member of the public. Specifically, the goods are available only on request of a veterinarian to a wholesaler of veterinary products, the wholesaler having a record of the veterinarian’s authorisation to purchase the goods.
I believe that the likelihood of imperfect recollection of the invented[3] trade mark REG-U-LATE and the opponent’s trade mark REGUMATE will not be high based on this mode of purchasing the relevant goods. Equine veterinarians are expected to have a sound knowledge of all equine veterinary products available from different wholesalers, and there is little prospect that a highly trained class of persons such as equine veterinarians would be confused by the two trade marks.
The trade mark REG-U-LATE includes hyphens that cause the word to be spoken in a staggered and deliberate manner, and so will reinforce the sound of the letter “L”. The letter “L” is at the beginning of the “LATE” part of the trade mark, and the overall impression this would provide to equine veterinarians is different to the corresponding “MATE” part of the opponent’s trade mark REGUMATE. The overall impression arising from the juxtaposition of “LATE” alongside “REG-U-” in the present trade mark is that of the importance of timing, whereas the overall impression arising from the juxtaposition of “MATE” alongside “REGU” in the Opponent’s trade mark is that of the importance of mating. These different overall impressions would be lasting ones in the mind of the equine veterinarian, particularly as there is much commercial value associated with the late onset of the breeding cycle in female race horses.
[3] Although not of direct relevance to this decision, I note that the opposed trade mark is not an invented word: Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175 (trade mark ROHOE in relation to the goods ‘rotary hoes’).
With the exception of the declaration by Dr Brett Jones, the applicant’s ‘trade’ declarations served and filed as part evidence in answer by the applicant are in common form. The declarants each state their names, the fact that their profession is as veterinaries or veterinary surgeons and their varying lengths of time in the profession. They go on to state:
In making such decisions and writing prescriptions for purchasing equine medicines from a veterinary product wholesaler, I have careful regard to the name of the product as any mistake in prescribing the product by its correct name has the potential to lead to serious problems, especially in view of the extremely high value of racing and breeding mares in the horseracing industry. It is for this reason that I have and continue to maintain a sound knowledge of all equine products available from different wholesalers in my field of expertise.
I am well aware of, and have used for the purposes of my practice, the veterinary product marketed and sold on behalf of Intervet International B.V. (“Intervet”), under the trade mark REGUMATE.
I am aware of a similar competing product that is intended to be marketed and sold under the trade mark REG-U-LATE.
I would not be confused by the use of these two trade marks for similar products when making purchasing decisions in my Industry.
The different look of the two trade marks and their different pronunciation, plus the different impressions they leave in my mind when I look at them or hear them spoken, are enough that I, consistent with the care I normally take in identifying the name of a product I prescribe, will not be confused or deceived into thinking that both products originate from the same commercial source.
Dr Jones, whose declaration varies from the applicant’s other trade declarations, states the above and adds:
It is not uncommon to see similar competing products in my industry marketed and sold with names that differ only slightly or differ to the extent of the differences between REGUMATE and REG-U-LATE. For instance, 24(2-methy1-3-(trifluoromethyl)phenyl)amino)pyridine-3-carboxylic acid is a non-steroidal anti-inflammatory drug (NSAID) analgesic, and antipyretic used in horses. It is often formulated as the meglumine salt, and the name of the active constituent is Flunixin Meglumine. It is marketed under three names by three separate companies, each of which are available to veterinarians in Australia. The names are FLUNIXON available through Norbrook Laboratories Australia Pty Limited in Australia, FLUNIXIL available through Troy Laboratories Pty Limited in Australia, and FLUNIX[4] available through Bomac Laboratories Limited in Australia and formerly through Parnell Laboratories (Aust) Pty Limited in Australia. I do not confuse these brand names and am aware that they originate from different commercial sources. The standards of my industry are such that the trade marks REGUMATE and REG-U-LATE are not unusually close and can coexist in identifying the different commercial sources from which similar products originate, and I would not confuse these trade marks either.
[4] None of the FLUNIX- prefixed trade marks mentioned by the declarant are registered trade marks in Australia.
The evidence in reply from the opponent is also in common form being trade declarations by three veterinaries. After stating their names and length of time they have been veterinaries, they state:
I am well aware of the veterinary goods marketed and sold by Intervet International B.V. ("Intervet") under the trade mark REGUMATE (and REGU-MATE) and have used them extensively in the course of my clinical work.
In my view, the REGUMATE trade mark is viewed by Australian veterinarians and other consumers in the trade as exclusively indicating Intervet as the commercial origin of REGUMATE goods. Further, I would consider use of a mark as similar to REGUMATE as REG-U-LATE, in connection with similar goods, as likely to cause deception of confusion in the trade.
Intervet has a significant reputation and profile in the Australian marketplace, and in view of Intervet's use of REGUMATE in Australia since 1993, I consider that any similar mark such as REG-U-LATE could not have been adopted without at least some prior knowledge of Intervet's REGUMATE goods.
At the hearing, Mr Griziotis, for the applicant, sought to put into evidence some labels bearing the opposed trade mark which, he said, showed the trade mark in use. There was no formal application filed by the applicant to serve and file this Further Evidence. Mr Skelly objected to the introduction of this evidence as, he submitted, it changed the nature of the hearing. I agreed that this late introduction of evidence, if it established use of the opposed trade mark,[5] could constitute an issue to be addressed by the opponent and I suggested at the hearing that if the applicant wanted to rely on these labels I should adjourn the proceedings so that a formal application to serve and file Further Evidence could be properly lodged. In this way, the opponent would be afforded the opportunity to consult with its legal representative about the import of this evidence, give instructions, and possibly serve and file its own Further Evidence in response. It is preferable to have an issue aired as fully as is possible before the Registrar or one of her delegates; however, it is also important to ensure that both parties are afforded procedural fairness. The applicant chose not to avail itself of the opportunity to adjourn the proceedings in order to file an application to serve and file Further Evidence.
[5] It is unlikely that the existence of product labels, without more, would establish use of a trade mark.
Onus
Mr Skelly submitted that the onus is on the opponent to satisfy the Registrar that a ground of opposition has been established. He said it appears that, in the case of an appeal from a decision of the Registrar, it may be necessary to establish that the relevant trade mark should clearly not be registered. In proceedings before the Registrar, however, an opponent needs to satisfy the Registrar on the balance of probabilities. In support of this submission, Mr Skelly cited:
· Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411,
· Lomas v Winton Shire Council [2002] FCAFC 413,
· Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 91,
· Pfizer Products Inc v Karam [2006] FCA 1663,
· Television Food Network, G P V Food Channel Network Pty Ltd (No 2) [2009] FCA 271,
· Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891.
I proceed on the basis that, to succeed, the opponent bears the onus of establishing at least one of its grounds of opposition on the balance of probabilities but observe that, if the higher onus applied and the opposed trade mark clearly should not be registered, my decision would remain unchanged.
The Grounds
Section 44 of the Act relevantly 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.In order to establish this ground, the opponent thus needs to evidence:
· At least one registered trade mark with an earlier priority date than that of the opposed trade mark;
· which is registered or pending in the name of a person other than the applicant;
· in respect of respect of the same or similar[6] goods; and,
· which is as a minimum deceptively similar to the opposed trade mark.
[6] Subsection 14(1) provides that goods are similar to other goods if they are if they are the same as the other goods; or if they are of the same description as that of the other goods.
In this matter, there appears to be agreement between the parties that the first three legs of the tests, above, have been established by the opponent: the priority dates of the registration trade marks on which the opponent relies are earlier than that of the opposed trade mark; the registered trade marks on which the opponent relies are in the name of a person other than the opponent; and, the goods of the opposed application fall within the scope of the specifications of both of the registered trade marks on which the opponent relies.
As it is not argued by the opponent that the trade marks on which it relies are substantially identical to the opposed trade mark, it remains to be decided whether the trade marks in question are deceptively similar.
What constitutes trade marks which exhibit ‘deceptive similarity’ is defined by section 10:
Definition of deceptively similar
10. For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The major principles to be applied are agreed by the parties in broad form and are set out by me in paragraphs 29 to 32, below.
In Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641, Dixon and McTiernan, 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.
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.
The comparison of the trade marks is to take place in the context of the particular marketplace for the goods in question: 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, as he then was, 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.
And the comparison of trade marks is regulated in the manner described by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (‘Woolworths’) at paragraph 50:
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.”
Submissions
Both parties referred me to ‘notional use’ test which was formulated in Smith Hayden and Co’s Application (1946) 63 RPC 97. The recasting of this test by French J at paragraph 88 of Woolworths, above, reflects the transfer of the onus from the applicant (which governed proceedings under the Trade Marks Act 1955)[7] to the opponent under the current Act. French J said:
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 [goods or] services covered by the proposed registration. [parenthetical material added]
[7] See, Eclipse Sleep Products Inc. v. The Registrar of Trade Marks [1957] HCA 86; (1957) 99 CLR 300, at 313, where Dixon C.J, Williams and Kitto JJ observed of the onus under the predecessors of the Act:
[an applicant for registration] at that stage is “in petitorio” and if the tribunal is left “in dubio” whether to grant the application or not, the application should be refused : Eno v. Dunn (1890) 15 App Cas 252, at p 257.
I note that amongst the potential uses of the parties’ trade marks there also occurs the actual use proposed by the applicant (see footnotes under paragraph 45, below) and the use to which the opponent has put its trade mark as shown by its evidence. While the specifications of goods of the parties are not restricted to those ‘prescribed’ by veterinaries (and the applicant offered at the hearing to so restrict its goods) it is convenient for me, for reasons which will become obvious, to discuss this matter as if the goods of the parties were so restricted. It follows from my reasoning in this matter that whatever my decision in relation to preparations ‘prescribed’ by veterinaries it will apply with greater force to such preparations within the specifications of goods which are available ‘over the counter’.
Mr Skelly’s submissions, on behalf of the opponent, can be summarized as follows:
· In Torpedoes Sportswear Pty Ltd v. Thorpedo Enterprises Pty Ltd [2003] FCA 91, Bennett J., at paragraph 75, summarised principles relevant to determining the deceptive similarity issue. Her Honour also observed that each case turns on its particular facts and that it is helpful to see the process of reasoning applied in previous cases.
· Due to the tendency of English speakers to “slur” the end of words the first syllable of a word is generally regarded as the most important for the purpose of distinction: London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264 (CA UK).
· The first two syllables (or prefix) of the respective marks “REGU”/“REG-U” are identical.
· The applicant’s REG-U-LATE trade mark differs from the opponent’s trade marks by only one letter, “L”, positioned towards the end of the word following the shared prefix “REGU”, so that the overall pronunciation of the respective marks shares the same cadence, or rhythmic flow.
· The suffix of each mark is also similar both in appearance and sound if not carefully and deliberately enunciated.
· The trade marks differ visually by only one letter of the last syllable of the respective marks. As the reader’s eye in English travels from left to right, the overall visual impression gained by a perusal of the marks is dominated by the shared prefix and close similarity of the suffix of each mark.
· In Johnson & Johnson v. Kalnin [1993] FCA 210, Gummow J observed:
… the process of perception and recognition of a word involves not so much the reading of the entire word … but the seeing and identification of certain features which are then matched to that which is contained in the memory …
· REG-U-LATE could also be perceived as a product variant of the opponent’s REGUMATE progesterone products in the sense of being a supplementary product designed to “regulate” an animal’s reproductive cycle in concert with or following use of the REGUMATE product.
In response Mr Griziotis submitted on behalf of the applicant:
· The goods offered under the trade mark REG-U-LATE must be purchased by “prescription” of a veterinarian, and are not available over the counter to any other member of the public. Specifically, the goods are purchased only on request of a veterinarian to a wholesaler of veterinary products, the wholesaler having a record of the veterinarian’s authorisation to purchase the goods.
· The likelihood of imperfect recollection between the applicant’s and the opponent’s trade marks will not be high based on the aforementioned purchasing practice and the highly technically trained class of persons (equine veterinarians) who would purchase the goods in this specialised market.
· The trade marks need to be considered in their entireties for comparative purposes; Clark v Sharp (1898) 15 RPC 141. Merely because one trade mark contains one word in common with another trade mark does not mean that they are necessarily deceptively similar. The overall impression needs to be taken into account.
· The class of purchasers will vary with the nature of the goods. “Where goods or services are expensive or of a technical nature, it is likely that they will be bought by discerning people or those of relevant training”. (Shanahan, Australian Law of Trade Marks and Passing Off, 4th ed., 273).
· In “GE” Trade Mark [1973] RPC 297 (‘the GE trade mark’) at 321, Lord Diplock (HL) stated:
“[W]here goods are of a kind which are not normally sold to the general public for consumption for domestic use but are sold in a specialised market consisting of persons engaged in a particular trade, evidence of persons accustomed to dealing in the market as to the likelihood of deception and confusion is essential. A judge, though he must use his common sense in assessing the credibility and probative value of that evidence, is not entitled to supplement any deficiency in evidence of this kind by giving effect to his own subjective view as to whether or not he himself would be likely to be deceived or confused”.
· In the present circumstances, this would apply to the claimed veterinary goods purchased exclusively by highly technically trained equine veterinarians from specialist wholesalers of veterinary products sold under the applicant’s and the opponent’s trade marks.
· The impression or idea suggested by the trade mark REG-U-LATE is different to that of the trade mark REGUMATE. The impression or idea arising from the juxtaposition of “LATE’ and “REG-U” is that of the importance of timing, whereas the impression or idea arising from the juxtaposition of “MATE” and “REGU” is that of the importance of mating. The different ideas suggested by these trade marks would be lasting ones in the mind of a highly technically trained equine veterinarian, who would readily appreciate that there is much commercial value associated with the late onset of the breeding cycle in female race horses.
· Such equine veterinarians, when purchasing the relevant goods, take extreme care and attention in correctly identifying the goods according to their trade mark. They are experienced and have a wide understanding that small differences in a product name may sometimes refer to a different veterinary product. Examples of such small differences are apparent from a review of the Register […] and from a consideration of veterinary products from different trade sources bearing similar common law trade marks available in Australia, such as FLUNIX, FLUNIXIL and FLUNIXON presented in the Applicant’s evidence. Recently, pharmaceutical products bearing similar names that are available by prescription in Australia have come to our attention, namely LIVALO and LIVIAL; ZINNAT and ZINVIT; AVANZA and AVANDIA; ANAPROX, AROPAX and APRINOX (which were considered in the recent decision of Kowa Co Ltd v NV Organon (2005) 66 1PR 131; [2005] FCA 1282 (‘Kowa’).
· In the Kowa case, the Court held that the LIVALO trade mark was not deceptively similar to the LIVIAL trade mark for similar goods in class 5, despite the similarities, both visual and aural, between the trade marks.
· The evidence of the applicant indicates, by means of trade declarations, that equine veterinarians would immediately recognise the differences between REG-U-LATE and REGUMATE and would not, despite the similarities that do exist in some aspects of the trade marks, be led to assume that, or be caused to wonder if, the veterinary products sold under those trade marks are related as to their trade origin.
· Another factor which tends to suggest that equine veterinarians would not be confused in making their purchasing decisions is the state of the register, which reveals that many registered trade marks exist in class 5 that contain the prefix REG and/or the suffix ATE, as is apparent from the Applicant’s evidence.
· There is no objective evidence to indicate that veterinary goods offered for sale or sold under REG-U-LATE have in the course of trade been confused by equine veterinarians as originating from the same trade source as similar goods sold under REGUMATE. The Opponent uses no other marks incorporating REGU and cannot rely on a family of marks.
Discussion
Mr Skelly submitted at the hearing that veterinaries are not the market for the goods of the parties – they are the channel through which the parties’ goods enter the market. My observations of the world,[8] as a person who has interaction with the marketplace for equine goods, is that Mr Skelly is correct. There are, I consider, at least three principal areas within the equine industry, if it can be termed such, in which the veterinary preparations of the parties are likely to be used: in,
· Horse racing,
· Thoroughbred breeding; and in
· Eventing and show-jumping.
[8] See Konckier v Amco Wrangler Ltd (1987) AIPC 90–385 at 456–457; Dow Chemicals Co v CH Boehringer Sohn KG (1987) 9 IPR 360 and Prosimmon Golf (Aust) Pty Ltd v Dunlop Australia Ltd (1987) 9 IPR 425. In Prosimmon, the delegate, Mr Terry Williams, comments that the registrar is entitled to have regard to his own general knowledge and in Dow Chemicals, supra, he states that the registrar is not precluded from taking account of ``reference material at his disposal, circumstances which his own inquiries show to prevail in a particular trade or place, the state of the Register of Trade Marks or to material contained in his own records'’
Each of these areas has interests in the regulation of the oestrus cycle in mares.
What I have before me, as far as trade declarations are concerned, amounts to a battle of the word processors with declarants for each party seemingly taking contrary views as to the likelihood of deception or confusion.
Mr Griziotis has submitted, in effect, that as I have declarations from five veterinaries who state that they would not be confused or deceived by alleged similarities between the trade marks in question, and as they are experts in the field, or constitute the marketplace, I should be slow to find that the trade marks are deceptively similar – in effect, Lord Diplock’s words quoted above from GE Trade Mark should apply. The ‘trade’ evidence of the opponent is thus, at first flush, countered by the ‘trade’ declarants for the applicant who state that they do believe that the concurrent use of the trade marks in question would not deceive or confuse.
However, one problem with the trade declarations served and filed for the applicant is that, as veterinaries, the declarants appear to assume (or the person who has drafted these similar draft declarations for signature has assumed) that veterinaries are the marketplace for the goods and are invariably present when hormonal preparations are administered to horses. However, my observations of the world are veterinaries are not inevitably present when horses have ‘prescribed’ preparations administered to them. Neither are veterinaries necessarily the marketplace for the goods although they do supply the goods to the equine industry.
Hormonal preparations for horses may be given orally; thus, administering a hormonal preparation to a horse may be as easy as measuring the dosage, then adding it to some grain and feeding it to the horse. It is difficult to understand why the presence of a veterinary should be required. It is usual, in my observations of the world, for those actively involved in the equine industries to acquire and maintain a collection of equine pharmaceuticals, preparations and nostrums (either supplied by a veterinary or a produce store) and administer these to the horses themselves as is required, whether orally, by topical application or by injection. This latter observation is borne out by an article in Hoofbeats magazine by Dr Christine Smith DVM DipACVS, written for those with horses, on how to administer injections to horses. The article opens:
There are times, in the course of horse ownership, where administering an intramuscular injection becomes necessary - mainly in situations that involve treatment being given several times a day and for an extended period.
Obviously, it is neither cost-effective nor practical in most situations to have a veterinarian call past on a twice-daily basis solely for the purpose of giving this type of injection so, for many people, it’s a case of taking a deep breath and being brave enough to assume responsibility. It can still be a little daunting the first few times a collection of syringes, needles and bottles are presented by the prescribing veterinarian! Even if instructions are given at the time, the intramuscular injection process can be quite nervewracking for many horse owners - with even the more experienced admitting that it can be trickier than it looks to choose the right spot, put the needle in and ensure that the contents of the syringe actually end up where it is supposed to.
As this is true of injections given to horses by those in the equine industries, it is, a fortiori, true of oral veterinary preparations which are given to horses via an oral syringe or mixed in their feed.
The applicant’s ‘trade’ declarations thus, while being completely frank, give an incomplete picture of the true state of the marketplace. As such, as expert evidence of true state of the marketplace and the likelihood of deception or confusion within it, the trade declarations are not of great weight. Similar observations can be made of the trade declarations for the opponent – they fail to give a market context in which the confusion is said to arise.
However, one notable difference between the ‘trade’ declarations of the parties is that while the declarants for the applicant state that they personally would not be confused, the declarants for the opponent state that they view the opposed trade marks as likely to cause deception of confusion in the trade. In other words, they are either looking at the marketplace as being broader than themselves or are assessing the likelihood of confusion in other veterinaries.
There are further problems with putting much weight on the parties’ ‘trade’ declarations. The declarations amount, in effect, to mini-surveys of veterinaries. The sample sizes are both very low and may be statistically skewed. There are no covering declarations which state how these veterinaries were selected, how many veterinaries were approached to arrive at the sample sizes, did other veterinaries who were to potentially be included in the surveys state that they (or their clients) would (or would not) be confused, so these results were discarded? Were the selected veterinaries personally known to the parties? It is apparent that the divergence in views between the declarants involved has been caused by the questions that they were asked – ie the questions have been formulated with the outcome in mind. Further, the declaring veterinaries for the applicant do not in reality describe the marketplace but only their personal diligence in ‘prescribing’ pharmaceuticals and preparations to the purchasers of such goods.
Issues surrounding survey evidence of this type were addressed by Sheppard J in Interlego AG v Croner Trading Pty Ltd (1992) 21 IPR 373 who considered that the suggestions of Whitford J in Imperial Group plc v Philip Morris Ltd [1984] RPC 293 (Ch D) provided guidance on what should be required of an admissible ‘survey’. This was:
· the interviewees must be selected so as to represent a relevant cross-section of the public;
· the size must be statistically significant;
· it must be conducted fairly;
· all the surveys carried out must be disclosed including the number carried out, how they were conducted, and the totality of the persons involved;
· the totality of the answers given must be disclosed and made available to the defendant;
· the questions must not be leading nor should they lead the person answering into a field of speculation he or she would never have embarked upon had the question not been put;
· the exact answers and not some abbreviated form must be recorded;
· coding must be accurately carried out;
· the instructions to the interviewers as to how to carry out the survey must be disclosed; and
· where the answers are coded for computer input, the coding instructions must be disclosed.
I weight the ‘trade’ declarations of the parties accordingly.
I consider that it is accurate to state that, while the goods of the parties are only available through a veterinary, the marketplace is, in reality, the three areas of the equine industry which I have described above. A person who is sufficiently engaged in the equine industry to ask a veterinary to supply the opponent’s oral progesterone product for programming of oestrus in mares would also be as likely to ask a veterinary to supply the applicant’s hormone preparation[9] to delay oestrus in mares. While the veterinary who supplies the products to the client may be aware that the products emanate from a different trade source, this is not necessarily true of the client who requests either or both of the hormonal preparations.
[9] Mr Skelly submitted that it is a matter of public record that the Australian Pesticides & Veterinary Medicines Authority (APVMA) database discloses the applicant’s REG-U-LATE oral progestogen product for horses was registered on 27 July 2009 under No. 61210. It is an S4 veterinary medicine with the active constituent being Altrenogest and in pack sizes of 125ml and 1 litre, which, I would add, would tend to indicate that the preparation is formulated to be orally administered.
It follows that these products are likely to be requested from veterinaries by those involved in the equine industries, in similar sized containers, stored side by side, or in close proximately to each other in collections of animal health preparations which are kept on racing, horse breeding or eventing and showing jumping establishments, and administered to mares by strappers or stablehands[10], stable foremen, assistant foremen, stable managers or trainers in the horse-racing industry; by stud hands, broodmare managers or stud managers in the thoroughbred breeding industry; and, by professional and amateur participants in the eventing and show-jumping marketplace. It is probable that the people involved in these industries do not have the same training, caution or the same discrimination between trade marks and the products on which they appear that the applicant’s evidence suggests that veterinaries might have.
[10] Strappers (stablehands) are responsible for the feeding of horses. The preparations of the parties are, or may be, orally administered in feed.
It is, I consider, in the context of the likely marketplace circumstances that I have discussed immediately above, that the comparison of the trade marks in question should take place.
The comparison of trade marks also occurs in the context of the particular goods in respect of which the trade marks are, or are proposed to be, used. The goods in question are ones which are likely to be viewed as being related, complementary, or as adjuncts to each other – one hormonal preparation regulates the oestrus or mating cycle in mares, the other promotes the late onset of the oestrus cycle in mares.
I do not think that much can be achieved by an analysis of which trade marks commencing with the prefix REGU- or terminate with the suffix –ATE have achieved registration in Class 5 of the International (Nice) Classification of Goods and Services on the Australian register of trade marks – what I am to consider is whether the trade marks of the parties are deceptively similar in relation to the goods in respect of which registration is sought. If trade marks have been placed onto the register in error, I am not bound to perpetuate those errors: Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177, and, further, the comparison should occur on its own merits and in the particular circumstances of the case.
Neither do I think that any consideration of what is alleged to be a crowded marketplace as far as alleged trade marks such as FLUNIX, FLUNIXIL and FLUNIXON is warranted. These trade marks are unregistered and are, according to the applicant’s evidence, each used in respect of the same preparation: Flunixin Meglumine. Variations following the prefix FLUNIX- might serve to signal the trade marks’ derivation from or connection with that particular preparation and might be distinguished on that basis – however, the prefix REGU- (or REG-U-) appearing within the trade marks before me does not serve a similar function in relation to a particular compound.
The examples of the trade marks co-existing in Class 5 of the register of trade marks, LIVALO and LIVIAL; ZINNAT and ZINVIT; AVANZA and AVANDIA; ANAPROX, AROPAX and APRINOX all arising in Kowa, above, are not of relevance to these proceedings as they are pharmaceuticals for human beings and are thus trade marks used in a different marketplace from the trade marks of the parties.
I agree with the opponent that the idea of the trade marks is the same: the prefix REGU- (or REG-U) within the trade marks could only serve to affirm to people who are aware of the nature of the goods that the goods are involved in the regulation of the oestrus cycle in mares. However, the fact that the trade marks have a common idea to do with the oestrus cycle in mares is not determinative – although it might be: see Cooper Engineering Company Pty Ltd v Sigmund Pumps Limited (1952) 86 CLR 536 (“Rainmaster” and “Rain King” for sprinklers and irrigation equipment) with Johnson & Johnson v Kalnin (1993) 26 IPR 435 (FC) (“BAND>>IT” and “BAND-AID”). I note again Mr Skelly’s submission that in the latter judgment, Gummow J observed:
the process of perception and recognition of a word involves not so much the reading of the entire word … but the seeing and identification of certain features which are then matched to that which is contained in the memory …
I consider also that the suffixes –MATE and –LATE within the trade marks in question, while different, and denoting differing meanings in the wider community, have related ideas in relation to goods which concern the oestrus cycle of mares and these suffixes both alliterate and rhyme with each other. The suffixes ‘resonate’ with each other and are, in the context of the goods of the parties, strongly associative. The trade marks do, as Mr Skelly submitted, have the same cadence, or rhythmic flow.
Such similarities strongly increase the likelihood that the trade marks will be imperfect recollected for each other: in Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196, 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 assistants 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.
Neither do I consider that the presence of the hyphens within the opposed trade mark will affect how the opposed trade mark is understood or pronounced by the likely users of goods sold under the trade mark. At an extreme, one might observe that the ‘words’ W-O-M-B-A-T or WOM-BAT are going to be immediately understood by the ordinary person as being the word ‘wombat’ and that the hyphens within the words will not affect the pronunciation of them.[11] However, it must also be noted that the opponent’s trade mark in registration 375393 is rendered with a hyphen as REGU-MATE and is referred to as such within the opponent’s ‘trade’ evidence in reply whereas the applicant’s trade evidence refers to it as REGUMATE. Additionally, as I have indicated in paragraph 9 of this decision, the different iterations of the opponent’s trade mark share an identity; it is not obvious why the opposed trade mark should be treated differently. I do not agree that the hyphens within the opposed trade mark will lead to it being pronounced in a staggered, deliberate or broken manner – the public is well used to hyphens appearing in trade marks and I am not aware that this has led to such trade marks being pronounced in a staggered, deliberate or broken manner. In my consideration, if the hyphenation of the opposed trade mark is of relevance, it is because the hyphens serve to indicate and highlight the fact that the trade marks are (notwithstanding the genesis of the opposed trade mark as a dictionary word) similarly coined and that this similarity of derivation is of importance.
[11] See also footnote 2, above.
The REGU- prefix is common to both trade marks and the suffixes, although they are different words, sound the same; in In the Matter of London Lubricants (1920) Limited’s Application to Register a Trade Mark (1925) 42 RPC 264 at 279, Sargant LJ made the observation:
But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.
This is particularly so when the terminations or suffixes of the trade marks have the same general sound and a related meaning in relation to the goods.
In the end, it is the similarities of the trade marks and the effects of those on the minds of the purchasers of the goods which I must consider – the particular differences between the trade marks which have been stressed by the applicant depend on one having the trade marks side by side for a detailed comparison – that approach is not appropriate for a consideration of deceptive similarity. It is the impression of the trade marks on the minds of the likely market for the goods that I must consider. In Television Food Network, G.P. v Food Channel Network Pty Ltd (No 2) (2009) 80 IPR 314 Collier J said (at [147]) in relation to the trade marks FOOD NETWORK and FOOD CHANNEL:
[T]he fact that the word “network” does not sound like “channel”, an issue raised by the respondent in written submissions, is in my view irrelevant. As the applicant submits, there are many cases in which relief has been granted in relation to marks which do not sound similar but the allegedly infringing trade mark has been found to be deceptively similar to the claimant’s mark (I note, for example, such cases as Re Application by PPI Industries Pty Ltd (1989) 17 IPR 667 (Poly drain and Poly Pipe), Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd [2006] FCA 767; (2006) 69 IPR 243 (“Whackos” and “Dogs go wacko for Schmackos”) and Newell v Mattel Inc (2001) 55 IPR 648 (Bar-B-Cute v Barbie) as well as the extensive list of such trade marks and decisions in the Appendix to Shanahan pp 955-982);
[T]he contention of the respondent that trade mark 967804 and the applicant’s trade marks are substantially different in appearance, and have no resemblance, is not an answer to a claim of deceptive similarity. That factor is of much greater relevance where the claimant alleges substantial identity between the trade marks under s 44(1).
In the instance of the trade marks in question they have a marked degree of similarity: they are similarly coined, the prefixes are to all intents identical and the suffixes sound the same, the prefixes share an idea and the suffixes share related ideas in relation to the goods, the trade marks alliterate and ‘rhyme’ with each other, they have the same cadence, and the trade marks are respectively used, or proposed to be used, in respect of very similar progesterone-based hormonal veterinary preparations which regulate different aspects of the oestrus cycle in mares. It is difficult to understand how those involved in the equine industry could not conclude because of these factors that the products are related equine hormonal preparations marketed by, or under the aegis of, the opponent. It is also likely that, in requesting goods from veterinaries by reference to the opponent’s trade mark, those in the equine industry will misremember it as the applicant’s trade mark or vice versa. I therefore decide that there is more than a reasonable likelihood of deception which would arise from the use of the opposed trade mark and that the trade marks of the parties are deceptively similar.
The lack of objective evidence of confusion between the trade marks in use is unsurprising as there is no evidence of use of the opposed trade mark at the priority date of the opposed application.
The opponent has established its ground under section 44 of the Act.
There is no need to consider the other grounds which were argued at the hearing.
Decision
Section 55 of the Act relevantly provides:
Decision
55. 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.
Note: For limitations see section 6.
I refuse to register application 1177556.
Costs
The opponent is entitled to its costs which I award at the official scale against the applicant.
Iain Thompson
Hearing Officer
Trade Marks Hearings
17 June 2010