Leo Pharmaceutical Products Ltd A/S v ACP Masthead Nominees Pty Limited

[2004] ATMO 48

TRADE MARKS ACT 1995

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

Re:Opposition by Leo Pharmaceutical Products Limited A/S to registration of trade mark application 761493 (5) CLEO proceeding in the name of ACP Masthead Nominees Pty Ltd.

Delegate:

Ian Thompson

Representation:

Opponent Robert Kelson of Callinan Lawrie via teleconference
Applicant  Did not appear – written submissions by Macek Rubetzki and Michael O’Connor of Dibbs Barker Gosling.

Decision:

1.s52 opposition: section 44 no deceptive similarity; – section 187 opposition – nexus between publications and vitamins and minerals – grounds not established

2 Costs ordered against opponent.

Background

1. ACP Masthead Nominees Pty Ltd (“the applicant’) of Sydney, New South Wales, have filed application to register a defensive trade mark, current details of which are:

   App No:  761493
   Filing Date:  6 May 1998
   Acceptance Date:                   23 January 2003

   Goods:  Class: 5 Vitamins and minerals

   Trade Mark:  CLEO

   Endorsement:  Registration of this trade mark as a defensive trade mark is based on registered trade mark number 261145.

2. On 22 April 2003, Leo Pharmaceutical Products Ltd A/S, (‘the opponent’) of Ballerup, Denmark, filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice cites grounds including those under sections 44 and 187 of the Trade Marks Act 1995 which were argued at the hearing.

3. Evidence in support was served and filed, as was evidence in answer, as allowed by the Act and Regulations thereto. 

4. A hearing was held before me, as a delegate of the Registrar of Trade Marks, in Canberra, on Monday 23 August 2004.  Robert Kelson, of Callinan Lawrie represented the opponent by teleconference.  The applicants relied on written submissions by their solicitors, Macek Rubetzki and Michael O’Connor of Dibbs Barker Gosling.

   Evidence

5. The evidence comprises the following declarations:

Declarant	Position Known as	Date Made		Exhibits
Evidence in Support
Ernst Lunding	President of  Opponent Lunding	3 September 2003		EL-1 – EL-6 and EL-A and EL-B*
Helen Daly	Daly	31 October 2003
Michelle Marie Hooy	Hooy	18 August 2003
Nathalie Verschaeve	Verschaeve	14 November 2003
Anne Gillian Mellor	Mellor	6 November 2003
Fiona Leslie	Leslie	30 October 2003
Pascale Whyte	Whyte	1 November 2003
Catherine Hendy	Hendy	17 October 2003
Evidence in Answer
Macek Rubetzki	Associate, Dibbs Barker Gosling Rubetzki	18 May 2004		MR1
Thomas Punch	MD of Haven Licensing Pty Ltd	6 June 2004
Pat Ingram	Group Publisher Ingram	20 May 2004		P1 – P14

1. Exhibits EL-A and EL-B to Lunding are confidential. 

2. The Daly, Hooy, Verschaeve, Mellor, Leslie, Whyte and Hendy declarations are in common form and attest that if the people who made these declarations saw the trade mark CLEO on vitamins or minerals, they would not assume a connection with the applicant’s trade mark CLEO.

3. I will state now that I place minimal weight on Daly, Hooy, Verschaeve, Mellor, Leslie, Whyte and Hendy since they do not accord with the usual standards that are required of such evidence.  The respondents are in no sense ‘expert witnesses’: see, for example, the discussion in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539. These declarations might, alternatively, be considered to reflect the results of some kind of survey.

4. The issues surrounding survey evidence were discussed in, for example, Kellogg Company v PB Foods Ltd [1999] FCA 1610. Here, the respondents do not reveal exactly what question was asked of them, where it was asked, how their ‘interrogator’ identified him or herself and if there was any prior relationship between them, who asked the question, whether the person who carried out the survey was an independent survey firm or a person connected with the opponent. The results have been presented as a ‘bundle’ with no further information as to how the respondents were selected, whether these were the only respondents selected, what (if any) any connection the respondents might have with opponent (at least four of these seven respondents work in the healthcare industry). The fact that four of the seven respondents work in the healthcare industry might suggest some form of bias in their selection or that they are not a representative sample. The wording that each of the respondents use as to their opinion is identical: this is either a remarkable coincidence or suggests that a person other than the respondents has selected the wording and it is not the respondents’ freely expressed opinion in their own words. The number of people surveyed is also very small and quite possibly statistically insignificant even were the other concerns about the survey properly addressed.

5. The Lunding declaration attests to the use and registration by the opponent of the trade mark LEO in relation to pharmaceuticals.  The declaration attests to the extensive use of the trade mark LEO in relation to pharmaceuticals by the opponent.  Since section 60 is not a ground of opposition and the opponent does not otherwise rely on the reputation of its trade mark, it is not necessary for me to assess whether the opponent’s trade mark has a reputation.

6. The Punch declaration is by the Managing Director of a licensing company who attests to the fact that if he saw the applicant’s trade mark CLEO appearing on vitamins or minerals, he would believe that those emanated from the applicant or was licensed by them.

7. The Ingram declaration comprehensively sets out the history of the applicant’s trade mark CLEO and brings into evidence the declaration of Ben Ashton, made during the examination phase of this opposed application.  The applicant’s trade mark CLEO has been used in relation to a magazine which deals with women’s issues and women’s lifestyle and which was first published by the applicant (or a related company) in October 1972.  The opponent does not appear to dispute that, since that time, the magazine published under the trade mark CLEO has become very well-known amongst Australians.

8. For reasons that will become obvious, it is not necessary to this decision to discuss the evidence further. Neither party appears to dispute the facts thus far. What is at issue is whether the opponent has established its opposition to my satisfaction under either section 44 or 187 of the Act.

   Reasons

9. Section 187 provides:

   187  Additional grounds for rejecting application for registration or opposing registration

   In addition to any other ground on which:

   (a)       an application for the registration of a trade mark as a defensive trade mark may be rejected; or

   (b)       the registration of a trade mark as a defensive trade mark may be opposed;

   the application must be rejected or the registration may be opposed:

   (c)       if the trade mark is not registered as a trade mark in the name of the applicant; or

   (d)      in the case of a registered trade mark—if it is not likely that the use of the trade mark in relation to the goods or services in respect of which its registration as a defensive trade mark is sought will be taken to indicate that there is a connection between those goods or services and the registered owner.

   Note: Division 2 of Part 4 sets out the grounds for rejecting an application but section 41 does not apply to defensive trade marks (see section 186). Division 2 of Part 5 sets out the grounds for opposing registration.

10. The registration on which the applicant bases its defensive registration is:

    Reg Number  261145
    Priority date:  15 August 1972
    Goods/Services:  Class: 16  Magazines
    Trade Mark:  CLEO

11. Here, the opponent argues that its is not likely that the use of the trade mark CLEO on vitamins and minerals will be taken so as to indicate a connection between the applicant and those goods.  But argue is all the opponent has done: there is no evidence of any substantial weight that it has submitted to support its contention.  In essence, all of the opponent’s substantive arguments are based on its perceptions of shortcomings in the applicant’s evidence.  This is not, in my consideration, sufficient to establish an opposition for the following reasons.

12. The onus in these proceedings is not on the applicant to establish that its trade mark is fit for registration: there are four factors which militate against this approach and suggest that it is for the opponent to establish its opposition via evidence.  Firstly, section 33 provides for a presumption of registrability – it provides:

    33  Application accepted or rejected

    (1)       The Registrar must, after the examination, accept the application unless he or she is satisfied that:

    (a)       the application has not been made in accordance with this Act; or

    (b)       there are grounds for rejecting it.

    Note:For the grounds on which an application may be rejected see Division 2.

    (2)       The Registrar may accept the application subject to conditions or limitations.

13. Secondly, the Registrar has already accepted the application for registration on the basis of the declaration by Ben Ashton.  Here the Ashton declaration has additional support from at least the Punch declaration.  If the Registrar is going to accept that the opponent has established its opposition, it must be on the basis of cogent evidence put forward by the opponent which has the strength upon which to base such a decision and displace the previous decision.

14. Thirdly, section 187, as an additional ground of opposition, continues to be governed by the provisions of section 55, below, which makes it plain that it is for the opponent to establish its opposition.

15. Fourthly, the applicant’s evidence is entirely responsive to the opponent’s evidence in support of its opposition: it is, quite literally, evidence in answer.  If there is no cogent evidence in support of the opposition which goes to support the opponent’s perceptions of a lack of a necessary perceived link between ‘magazines’ and ‘vitamins and minerals’,[1] there is nothing for the applicant to respond to in its evidence.  Thus, any shortcoming in the applicant’s evidence can be regarded as a logical consequence of the shortfalls in the opponent’s own evidence.  In an opposition where an opponent submits no evidence in support, that opposition should not be established[2] neither is there anything for the applicant to answer: in an opposition where the evidence does not address the grounds pursued, the effects are logically the same.

    [1] Such evidence might be, for example, professionally conducted surveys which are probative; expert opinion from those in the field or similar opinion from marketing or licensing experts, and so forth.

    [2] Although this may not include situations where the opponent has arguably included some of the evidence (such as trade marks relevant to section 44) in a notice of opposition.

16. Moreover, any weight that might be put on the opponent’s ‘survey evidence’ is more than adequately addressed by the views of Mr Punch, above, who has some 15 years of experience in licensing trade marks and is Managing Director of a company involved in this field.

17. The opponent has not established its section 187 ground of opposition.

    Section 44

18. Section 44 provides, relevant to these proceedings:

    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.

19. Thus, to establish its opposition under section 44, the opponent requires:

    ·a prior application or registration

    ·which is either substantially identical with or deceptively similar to the opposed trade mark, and being

    ·in respect of the same or similar goods. 

20. Abstracts of the opponent’s registrations on which it relies within its evidence lie within an exhibit which is marked Confidential Exhibit EL-1.  As the contents of this exhibit are a matter of public record, and are the registrations on which the opponent relies, and are mentioned within the body of the Lunding declaration without any claim as to confidentiality, I will ignore the confidentiality claim on the exhibit.

21. The opponent relies on registrations of trade marks of its trade mark LEO, which include:

    Reg Number  106596
    Priority date:  26 June 1951

    Goods/Services:  Class: 5  Chemical substances prepared for use in medicine and pharmacy

    Trade Mark:  LEO

22. The opponent also has two registrations of the word LEO accompanied by the figurative element of a heraldic lion, walking.  These registrations are in respect of a range of goods which is arguably slightly wider within Class 5 than that above.  However, as these trade marks are less similar to the opposed trade mark than is the word LEO, solus, I will consider the issue of deceptive similarity from the viewpoint of the opponent’s trade mark LEO.

23. While it is not argued otherwise by the opponent, I note that the trade marks are (on a side by side comparison) very obviously not substantially identical: The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 414.

24. Deceptive similarity is to be assessed according to the test stated by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

25. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, at page 658, put the same question thus:

    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, their 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.

26. I must also consider the market context in which the goods are likely to be sold: Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd 1A IPR 379 at 380; (1906) 23 RPC 774 at 777, 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. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

27. And the so-called 'doctrine of imperfect recollection' springs from the principle posited by Luxmoore LJ in Re Application by Rysta Ltd (1943) 60 RPC 87 at 108, where he said:

    The answer to the question whether the sound of one word resembles too nearly the sound of another so as to 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 assistant ministering to that person’s wants.

28. Finally, if the trade marks share some feature, I am to consider whether this feature is common within the trade in question (or not) and the effects of this: Coca Cola Co of Canada v Pepsi Cola Co of Canada (1940) 59 RPC 127.

29. I am therefore to consider:

    ·     The trade marks not side by side

    ·     Used in a fair and normal manner to the extent of the specifications of goods

    ·     Whether the trade marks have an shared essential feature and whether this is common within the trade or inherently distinctive and the effects of this

    ·     The ideas and significations, if any, of the trade marks

    ·     The trade marks as wholes

    ·     The effects of imperfect recollection

    ·     Within the relevant market

    ·     Taking account of the surrounding circumstances

30. Further, deceptive similarity is defined in terms of section 10 of the Act:

    10  Definition of deceptively similar

    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.

31. French J said of deceptive similarity in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999):

    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) 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."

1. Mr Kelson’s submission is that:

   ·The words CLEO and LEO both have two syllables

   ·The word CLEO contains the word LEO in full with only one additional letter

   ·The additional letter ‘C’ is phonetically weak and is easily slurred

   ·The initial letter ‘C’ might be hidden from view when on packaging such as bottles

   ·Both trade marks consist of short given names and are likely to be remembered and recalled on that basis

2. Mr O’Connor and Mr Rubetzki submit that:

   ·The word CLEO consists of four letters while the word LEO consists of three and this is a visual distinction which would not be overlooked by consumers

   ·There are strong aural differences between the words CLEO and LEO which arise from the fact that the letter C is a ‘hard’ consonant appearing at the beginning of the word CLEO, a position of great prominence

   ·The beginning of the word CLEO cannot be slurred in ordinary speech, emphasising the aural differences between the trade marks

3. Thus, argues the applicant, the ‘total impression’ of the trade marks in question is different.  The applicant further submits that:

   ·The word CLEO is an accepted abbreviation of the name CLEOPATRA whereas LEO is a European forename in its own right and is not an abbreviation

   ·The word CLEO or CLEOPATRA introduces a Middle Eastern flavour, whilst the word LEO imports a European flavour

   ·LEO is a word associated with ‘lion’ whereas the words CLEO or CLEOPATRA have no conceptual association with any animal

   ·CLEO or CLEOPATRA are female names whereas LEO is a male name.

4. I agree that the letter ‘C’ at the beginning of the word CLEO is a hard sound and is pronounced as is the letter ‘K’ at the beginning of the word ‘krypton’.  It is not, in the usual mode of speech of Australians, likely to be softened, modified or suppressed as it might at the beginning of the words ‘cerise’, ‘church’ or ‘cnidoblast’.  As the letter falls at the beginning of the word, greater emphasis might be expected to be put on it in speech and subsequently for the purposes of comparison: London Lubricants (1920) Ltd's Application, (1925) 42 RPC 264 (CASTROL/TRIPCASTROID).

5. Many words change their meaning and signification completely with the addition of a single initial letter, such as, for example, the words RAIN and BRAIN, ARM and FARM or WIPE and SWIPE, yet these words are conceptually distinct and would not normally be seen as related or remembered and recalled in similar ways by ordinary Australians.  I consider that the words LEO and CLEO are very similar to the examples that I have given, with the exception, of course, that they can both function as proper names.  Most people do not, I consider, think of the word CLEO as being the word LEO with the letter ‘C’ in front of it – they see it as something separate and conceptually distinct.

6. Both words, as proper names or otherwise, have different sets of associations: with CLEO, it is possibly the queen of Egypt immortalised in Shakespeare, or an unusual but not rare female forename – viz, the singer Cleo Lane, and, possibly, the applicant’s publications.  With Leo, it is a comparatively common male forename, the name of a constellation of the Zodiac, the Latin for ‘lion’ (and used as such in children’s stories and fables) and is historically the name of several Popes.

7. I do not consider that the trade marks are deceptively similar – they are likely to be remembered and recalled in completely different ways and are visually and phonetically distinct from each other.

8. Accordingly, there is no need to consider whether the goods of the parties are the same goods or goods of the same description.  However, I am satisfied, given the remote relationship between the trade marks in question, that the concurrent user of the trade marks in a fair and normal manner on the goods in question would not give rise to deception or confusion.

9. The opponent has not established its grounds under section 44.

   Decision

10. Section 55 of the Act provides:

    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.

11. Subject to the opponent notifying the Registrar of an appeal against my decision within one month of the date of this decision, the application may proceed to registration.  If such appeal is notified and not withdrawn, the application should be dealt with as the Court directs.

    Costs

12. Costs may follow the event and I order costs against the opponent.

    Ian Thompson
    Hearing Officer
    Trade Marks Hearings
    30 August 2004