Matthias Rath v Biofarma

TRADE MARKS ACT 1995

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

Re:Opposition by Matthias Rath to registration of trade mark application 902498(5) - DIASTOR - filed in the name of Biofarma.

Delegate:	Deirdre O'Brien
Representation:	Opponent Written submissions by Ms Natalie Murray-Jones of Griffith Hack Applicant Mr Wayne Willis of F B Rice & Co
Decision:	S44 ground not made out. Trade mark may be registered.

Background

1. Trade mark application no 902498 in the name of Biofarma (‘the applicant’) is an International Registration Designating Australia.  It was accepted for registration by this office but registration has been opposed by Matthias Rath (‘the opponent’).  Upon being advised of the opposition, the applicant nominated F B Rice & Co as its address for service.  The opponent is represented by the attorney firm Griffith Hack.

2. The opponent filed and served evidence in support[1].  The applicant responded by filing and serving evidence in answer[2].  The matter was set down for hearing by me in Sydney on 21 July 2004.  Mr Wayne Willis of F B Rice & Co appeared for the applicant.  Ms Natalie Murray-Jones of Griffith Hack made written submissions on behalf of the opponent.

   [1] Statutory declaration by the opponent Matthias Rath, made 31 October 2003.

   [2] Statutory declaration by Scott McKinnon of F B Rice & Co, made 22 January 2004.

   Ground of opposition

3. Ms Murray-Jones’s submissions all go to the ground of opposition under section 44 of the Trade Marks Act 1995.  She cites the opponent’s registration no 860021 in support.  Relevant details of that registration and of this application are as follows:

This application	Cited registration
Trade Mark	diastor	diacor
Priority date	23 July 2001	11 December 2000
Class 5 goods	Pharmaceutical products	Pharmaceutical preparations; vitamins and minerals for medical purposes; food supplements for non-medical purposes including those consisting of vitamins, amino acids, minerals and trace elements, dietetic substances for non-medical purposes, including amino acids and trace elements; all of the following for human use

1. Two legs of the section 44 ground are already established. The goods covered by each trade mark are the same and the cited trade mark has an earlier priority date. Ms Murray-Jones’s arguments go to the third leg, namely whether the trade marks are deceptively similar. She says that, although there are 77 trade marks on the register which have the prefix dia- and which are for class 5 goods, only two others share the prefix dia- and the suffix –or. Those trade marks are diadabor and diaplexor. According to Ms Murray-Jones the differences in the middle syllables of those trade marks means they can be distinguished both visually and phonetically. Here the subject trade mark diastor and the cited trade mark diacor have only minor differences in their middle parts and, applying the standard tests[3], Ms Murray-Jones argues they are both visually and aurally deceptively similar.

   [3] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1964) 109 CLR 407; Pianotist Co’s Appn (1906) 23 RPC…