Johnson & Johnson v Virbac (Aust) Pty Limited

[2000] ATMO 107

TRADE MARKS ACT 1995

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

Re:Opposition by Johnson & Johnson to the application to remove trade mark registration number 332815(5) - FLUKIVER- under section 92 of the 1995 Act by Virbac (Aust.) Pty Ltd.

Background

Application to register this trade mark was made on 15 May 1979 by Johnson & Johnson. The trade mark was advertised as accepted in the Australian Official Journal of Trade Marks (the Journal) of 22 January 1981 and has remained on the Register from that time. Virbac (Aust.) Pty Ltd (the non-use applicant, hereafter 'the applicant') has applied to have the mark removed from the Register under the provisions of s.92(4)(b) of the Trade Marks Act 1995. The non-use application, accompanied by the declaration of the attorney for the applicant, Gerard James Skelly (the Skelly declaration), as required by Regulation 9.1(b), was filed on 22 July 1999. Advertisement of this application occurred in the Journal of 19 August 1999.

Johnson & Johnson (the opponent) filed a notice of opposition to the removal action, within the three month statutory period, on 18 November 1999, followed by service of its evidence in support on 4 February 2000. This evidence comprises a declaration with exhibits from Sean Francis McManis, attorney for the opponent (the McManis declaration). After the applicant confirmed that it did not intend to file any evidence in answer, the matter came before me in Sydney on 17 July 2000.

The substance of this removal action revolves around a claim by the applicant that it has an intention to expand its international portfolio of trade marks, to include a set or family of trade marks based on a FLUK- prefix. The applicant has claimed that continued registration of the present mark will prevent smooth passage of the FLUK- marks to registration and desires the removal of the mark to prevent this circumstance. The opponent, whilst conceding that it has no commercial use in the relevant three year period, has claimed that the applicant is not a 'person aggrieved' in terms of s.92(1) of the Act. Alternatively, in the event that I do find that the applicant is a 'person aggrieved', the opponent has also requested the provisions of s.101(3) be invoked. These provisions set out the Registrar's position to allow the mark to remain on the Register, even where the case for removal has been established, if the Registrar is satisfied that it is reasonable to do so.

At the hearing the opponent was represented by Sean McManis, of Baldwin Shelston Waters, Intellectual Property, whilst the removal applicant was represented by Gerard Skelly, of Spruson and Ferguson, Patent and Trade Mark Attorneys.

The Evidence

The evidence in support of the opposition consists of a single declaration, dated 4 February 2000, together with exhibits 'A' to 'F' and 'SFM 1' from Sean Francis McManis, attorney for the opponent (the McManis declaration).

The Skelly declaration claims that the applicant is the owner of trade marks FLUKARE and FLUKAMEC and intends to market 'a range of veterinary preparations and animal health care products under a family of trade marks each commencing with FLUK-'. It therefore claims to be aggrieved by the continued registration of FLUKIVER (332815) - the trade mark presently under consideration for removal. Mr Skelly has also provided some detail of his investigations into the relevant market for use of the present trade mark and states that he has failed to verify any use in the last seven years.

The evidence in support of the opposition to removal, the McManis declaration, annexes seven exhibits. The first exhibit is a copy of a letter, dated 17 May 1999, from the applicant's attorneys written to the opponent's attorneys. This letter gives notice that the applicant intends to extend its 'family' of trade marks with prefix FLUK- and requests the opponent to either voluntarily cancel the present registration or to assign it to the applicant. The next two exhibits contain introductory pages to both the MIMS 1999 IVS Annual veterinary guide and the McGraw-Hill Dictionary of Scientific and Technical Terms.

The fourth and fifth exhibits ('D' and 'E') provide detail of the search strategy and results for a search done on the U.K. Register of trade marks for words with prefix FLUK- found in class 5.

Exhibit 'F' is a copy of a letter from a financially controlled subsidiary of the opponent giving information about the use of the present trade mark in various European countries and in South Africa. The final exhibit shows promotional material used in relation to the mark in the French market.

Submissions

Mr McManis conceded that the opponent has not used the mark commercially within Australia during the relevant three year period as may be calculated under s.92(4)(b). He submitted, however, that the applicant is not a person aggrieved. Mr McManis commented, to support this argument, that the applicant has neither provided evidence to support any use of its FLUKARE mark nor has it given detail of its alleged 'family' of marks with prefix FLUK-. Without such information the applicant has not shown itself to be aggrieved in any 'legal or practical sense', he said. Mr McManis also submitted that the opponent's evidence to show the coexistence of many marks with prefix FLUK- on the U.K. Register, for the present goods, indicated that the present mark could coexist with other such marks owned by the present applicant, without the need for the removal of the mark. The attorney claimed that, because the goods involved are for treatment of liver fluke, a common name for a group of parasitic flatworms, the prefix FLUK- in a trade mark for such goods embodied a descriptive element that should be available to other traders. He said that in these circumstances it is inappropriate for the applicant to seek a monopoly in the prefix FLUK- for its trade marks, in the manner that it appears to be attempting. He asserted that the applicant has not shown that it is suffering any sort of detriment or disadvantage by the continued registration of the FLUKIVER mark as should occur if the applicant truly is 'a person aggrieved' by the opponent's registration. Mere speculation of a possible disadvantage does not enable the applicant to claim that it is 'a person aggrieved', he added.

Mr McManis submitted that comments that I had made, as the Registrar's delegate, in Puma Industrial Co Limited v UnoResourcing Inc., (2000) AIPC ¶91-581, applied with equal force in the present matter. These comments concern the differences that are set in train in a non-use matter where the application is not opposed in comparison with situations where the application is opposed. Mr McManis specifically quoted two paragraphs as having direct application. These read at 37,720:

If a non-use application that conforms to the requirements of s.92(1) and s.92(2) is not opposed, in accordance with s.97 the mark is removed from the Register. The Registrar here will be satisfied by the statements made in the application and will not inquire further into the applicant's standing unless there is good reason to do so.

Where a non-use application is opposed, however, and where a bald statement as to status is challenged, the applicant will need to substantiate its claim that it stands aggrieved[1] by the continued registration of the trade mark.

[1] Figgins Holdings Pty Ltd v Beltrami SpA 46 IPR 411.

Mr McManis also sought to rely on the principles from previously reported judgements[2].

[2] The Ritz Hotel Ltd v Charles of the Ritz 12 IPR 417;

In the alternative, that I found that the applicant is 'a person aggrieved', Mr McManis submitted that application of the Registrar's discretion to allow the mark to remain on the Register, in terms of s.101(3), is appropriate. The circumstances to provide such suitability, Mr McManis added, lay particularly in the overseas use of the FLUKIVER mark by the opponent, which showed that it had a real interest in maintaining the Australian registration for future use. The application of s.101(3) was also warranted in that there was no issue of public interest involved in removing the mark, he said. Finally, Mr McManis requested costs on behalf of the opponent.

Mr Skelly, on behalf of the non-use applicant, opened his submissions with the contention that proof of the opponent's intention to extend its 'family' of FLUK- prefix marks could be seen in the evidence. This is apparent, he said, both from the copy of the letter to the opponent's representative, exhibited to the McManis declaration, and also by the fact of the filings of FLUKAMEC (trade mark number 773143) and FLUKARE (773144) prior to the non-use application and FLUKAZOLE (808767) shortly after.

Mr Skelly said that there is no dispute on the relevant cases to be applied. He contended that in Powell's Trade Mark, 11 RPC 4, the phrase 'person aggrieved' had been given a very broad interpretation. He followed this up by directing my attention to the Full Federal Court decision in Kraft v Gaines, supra, at 207-208, where Justice Sackville mentioned cases where the non-use applicant was aggrieved.

While care must be taken not to introduce too much refinement, the authorities have identified certain circumstances in which an applicant for removal of a trade mark is, or is very likely to be, a “person aggrieved”. Powell v Birmingham Brewery illustrates that a person who is in the same trade as the registered proprietor of the mark and who shows that he or she will use the mark, is ordinarily a “person aggrieved” for the purposes of a removal application. A trader who has dealt in the same class of goods as the registered proprietor and shows that he or she could use the mark, establishes a prima facie case that he or she is a person aggrieved for the purposes of a removal application. The inference may be rebutted by evidence from the objector, demonstrating that the applicant would not take advantage of the opportunity to use the mark, but in the absence of such evidence the prima facie inference remains. A person who has used a mark, especially if the mark has been used on a similar class of goods, and who remains in the same business, also will usually be a “person aggrieved” for the purposes of s 23 (1) of the TM Act ….

Mr Skelly said that the applicant and the opponent are in the same trade and deal in the same class of goods and, as shown from the above quotation, that these factors lead to the conclusion that the applicant is 'a person aggrieved'. Mr Skelly also wanted me to consider the disadvantage produced for the applicant by reason of the likely deceptive similarity between the present mark and the applicant's intended 'family' of marks.[3]

[3] 'Semigres' Trade Mark [1979] RPC 330;

In respect of the opponent's evidence based on the search from the U.K. Register, Mr Skelly said that it was clear that the 'state of the Register' was not a relevant factor even within the home jurisdiction[4] - and even less so from a foreign jurisdiction.

[4] British Sugar plc v. James Robertson & Sons Ltd. [1996] R.P.C. 281,

He submitted that the applicant would suffer a real, legal[5] disadvantage if the present mark stayed on the Register, as such an outcome would act as an encouragement for others to want to register marks with the prefix FLUK- on similar goods. The applicant would also suffer a practical[6] disadvantage, he added, by the increased cost of trying to develop a 'family' of FLUK- marks in the face of other marks on the Register.

[5] Ritz Hotel v Charles of the Ritz, supra at 454.

[6] Ibid.

In relation to the exercise of the Registrar's discretion to allow the mark to remain on the Register, even although the case for removal has been made out, Mr Skelly submitted that there is no evidence from the opponent to show why the mark should remain on the Register. He said that there is no evidence of any use of the mark in Australia, or any intention to do so, despite the passing of 21 years since registration. There is simply no public interest to retain the mark on Register, he added. Mr Skelly also sought costs on behalf of the applicant.

Discussion

This removal action has been brought under s.92(4)(b) of the Act. The relevant legislation reads:

Application for removal of trade mark from Register etc.

92.(1)  A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

(2) The application:

(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3) ….

(4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

(a) ….
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

Note:  For file see section 6.

Subsections (3) and (5) and paragraph (4)(a) of s.92 find no application here.

As the application was filed on 22 July 1999, the relevant three year period concerning use of the mark, as calculated in terms of the conditions set out in s.92(4)(b), runs from 22 June 1996 to 22 June 1999. The opponent has not contested that any commercial use was made of the mark during that time but, in the first instance, seeks to rely on the failure of the applicant to qualify as 'a person aggrieved'. In the event that I find that the applicant is 'a person aggrieved', the opponent requests that the mark remain on the Register under the provisions of the Registrar's discretion under s.101(3).

Person Aggrieved

In the event that a non-use application is opposed, and the opponent challenges the status of the applicant as being 'a person aggrieved', then determination of this threshold question will precede the question or questions to be decided under s.92(4). In the present case, the opponent has raised the issue of aggrievement at paragraph (iv) of the notice of opposition.

The applicant's position that it is aggrieved by the continued registration of the opponent's mark relies on two factors. These factors are that it claims to want to develop a 'family' of trade marks beginning with the prefix FLUK-, and that the present registered mark will prevent this development. The opponent's argument is that there is no evidence that this will be the case. Mr McManis claimed that it may be quite possible for the applicant's FLUK- prefix marks to coexist with FLUKIVER and so it could not claim to be aggrieved by the continued registration of the mark.

As per the words of McLelland J in The Ritz Hotel case, supra, at 455, the position must be determined as at the date on which the non-use application has been made.

Ascertainment of the date of an application is significant under the Act not only as the date as at which it must be determined whether the applicant is a "person aggrieved" …

In addition, I accept the proposition from Mr Skelly that it is appropriate for me to consider the test developed by Justice McLelland in The Ritz Hotel at 454. This test reads:

The meaning of the expression 'person aggrieved' in legislation cognate with ss 22(1) and 23(1) of the Act has been the subject of consideration in numerous cases, …

…

It is sufficient for present purposes to hold that the expression would embrace any person having a real interest in having the register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed.

The applicant's alleged disadvantage in either 'a legal or practical sense' may take many forms, but there must be a reasonable possibility of a real rather than a merely hypothetical disadvantage.

Mr Skelly argued that the term 'person aggrieved' has been given broad application in previously decided cases. It has often been sufficient, as in the examples outlined in Kraft v Gaines, supra, to simply show that 'the applicant and the opponent are in the same trade and deal in the same class of goods', he claimed. I do note, however, that in those examples a significant comment is made concerning the 'mark' that is involved in each of the examples. The words, to which I refer, from the passage quoted from Kraft v Gaines above, are:

• 'who shows that he or she will use the mark',

• 'who shows that he or she could use the mark',

• 'may be rebutted by evidence from the objector, demonstrating that the applicant would not take advantage of the opportunity to use the mark' and

• 'a person who has used a mark'.

These statements indicate, to me, that the 'person aggrieved' has indicated either a clear intention to use a certain mark or has actually used the mark already. Further, from the context of the quoted passage, it appears that the 'mark' involved, for which the non-use applicant seeks removal from the Register, is the same mark for which the applicant seeks use. In the present matter, the applicant has not clearly indicated the mark or marks with prefix FLUK- that it intends to use at all - save that it is a 'family' of such marks. The opponent has contended that it may be possible for coexistence of FLUKIVER with the applicant's family of FLUK- prefix marks, even if the applicant does develop a 'family' of such marks. In attempting to evaluate this contention, I must say that I generally accept Mr Skelly's comments in relation to disregarding the state of the Register, especially insofar as the fate of particular applications is concerned. Thus, I give little weight to the evidence provided by the opponent in relation to the U.K. Register.

There is one factor, however, which is provided by means of the Australian Register, although it could have been supplied as a statement of fact by other means, of which I do intend to take note. This involves the applicant's interest in two trade marks, namely, FLUKAMEC and FLUKARE, as shown by the applicant's registration of these trade marks as at the date of the non-use application. A third mark, FLUKAZOLE, applied for by the applicant does not impinge directly on this discussion as it was not filed until after the date of the non-use application. Although these two marks assist in substantiating the applicant's claim that it intends to develop a 'family' of FLUK- marks, they do not progress the applicant's cause that it is 'aggrieved' by the continued registration of FLUKIVER. From these two specific examples no evidence of any disadvantage for the applicant has been submitted. If the applicant's claim for a 'family' of marks were to be accepted, it would be expected that the applicant would make further applications in the future. However, in the absence of a particular problem, or at the very least an obvious setting that could lead to a particular problem, beyond the general claim that the applicant 'would like to develop…. a family of trade marks each commencing with FLUK-', I find that I am not inclined to accept that the applicant is actually disadvantaged in either a 'legal or practical sense'. This leads me to conclude that the applicant has not sufficiently demonstrated that it is aggrieved by the continued registration of FLUKIVER.

One other aspect of the judgement in Kraft v Gaines, supra, also directs my attention to a shortcoming in the present application. This concerns the words of Sackville J, at 209, in his weighing up of the applicant's claim of being 'aggrieved', and for which Sheppard J and Tamberlin J concur. This passage reads:

Yet, in substance, the only evidence adduced by Kraft to support its claim to be a “person aggrieved” was proof that it had filed the application for registration of the GAINES mark on 22 June 1989 (the day before the removal application was filed) and that it had subsequently lodged a statement of user.

The statement of user merely recited the words of reg 8 (1) of the TM Regulations, without providing any further information to clarify which of the two apparently mutually exclusive propositions (current use or intention to use) Kraft was asserting was true.

….

It follows that the only evidence from which it might be inferred that Kraft intended to use the mark in June 1989 was the filing of its application for registration on 22 June 1989. The filing of the application, of itself, does not necessarily require an inference to be drawn that the applicant intended to use the mark. If the application had been accompanied by a clear statement of such an intention, the position is likely to have been different. But Kraft’s application was accompanied by a statement of user that carried no probative weight in the present proceedings on the issue of intention to use.

In the above case, despite an actual application for registration having been filed, the applicant had not sufficiently demonstrated that it intended to use the mark. The applicant's case here, in my opinion, is even less strong. In the present matter, there is not a specific trade mark involved, merely a claim for a 'family' of marks with the prefix FLUK-, some of which have proceeded to registration without impediment, and none of which are currently facing difficulties. If Kraft v Gaines turned on the matter of whether the applicant for removal had demonstrated a clear intention to use a mark, then any such clear intention is even more masked in the present case, where the applicant has not pointed to any particular mark that is experiencing obstruction. In these circumstances, it is difficult for me to conclude that the applicant is disadvantaged in either a 'legal' or a 'practical' sense.

Both the opponent's goods in the present registration and the applicant's field of interest (as outlined in the Skelly declaration) include veterinary goods for the treatment of liver fluke. I believe that, it is highly likely that prospective purchasers of the goods will make the connection between the use of the goods for treating liver fluke and the prefix FLUK- of the trade marks. Given this descriptive element in both the applicant's marks and the opponent's present registration, it is difficult to justify the applicant's claim for a monopoly in single word trade marks with the prefix FLUK-, for any possible suffix, in relation to the goods of interest. In effect, it is the claim for such a monopoly that the applicant is making by stating that it is somehow disadvantaged from developing a 'family' of marks with prefix FLUK- without restriction of the suffix. In my view it would be possible for a number of different owners to register such marks - depending on the degree of dissimilarity of the suffix for each.

Mr Skelly encouraged me to find that the applicant's 'family' of marks, to be constructed with the prefix FLUK-, would face difficulties in gaining registration because they would fall foul of s.44, being deceptively similar to the opponent's FLUKIVER mark. He submitted this argument on the basis that I should consider the present matter in a similar manner to an earlier decision, McDonald's Corporation v Macri Fruit Distributors Pty Ltd [2000] ATMO 37, dealing with opposition to registration, where as the delegate of the Registrar, I had found the trade marks McSALAD and McFRESH to be deceptively similar to a number of the opponent's trade marks with the prefix 'Mc-'. In that decision, however, it was not the fact that the opponent, McDonald's Corporation, owned a set of marks with an identical prefix of 'Mc-' that resulted in their successful opposition under s.44 and s.60 - but, rather that they owned a group of trade marks that were, each, contextually deceptively similar to the applicant's marks.

In the present matter, the applicant has not provided detail of its marks with the prefix FLUK- that it alleges may conflict, for me to assess possible deceptive similarity between them and the present registration for FLUKIVER.

Conclusion

From the above, I find that the applicant has not established that it is 'a person aggrieved' for the purposes of s.92(1) of the Act. I find, therefore, in my capacity as a delegate of the Registrar, that the application to remove the trade mark from the Register was not properly made and that the opponent has no case to answer concerning use of the mark.

Costs

Both parties have requested their costs in the matter, however, as I have no material before me to suggest that the costs should not follow the result, I award costs against the non-use applicant, Virbac (Aust.) Pty Limited, according to the Official scale.

Don Nancarrow
Hearing Officer

3 October 2000

Kraft Foods Inc (previously known as Kraft General Foods Inc) v Gaines Pet Foods Corporation 34 IPR 198

Beck, Koller & Co (England) Ltd's Application 64 RPC 76.

Ocean Spray Cranberries Inc v Registrar of Trade Marks 47 IPR 579.