Matthias Rath v Biofarma

[2004] ATMO 55

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 774; Clark v Sharp (1898) 15 RPC 141; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592

2. It is true both trade marks start with dia and end with or, however I do not consider that they necessarily have the same suffix.  Both trade marks are invented words and convey no obvious meaning.  There is no expert testimony in evidence as to how they are likely to be pronounced by ordinary Australians[4].  Ms Murray-Jones submits they will be pronounced di-a-stor and di-a-cor respectively.  If that is the case, then the suffixes are stor and cor.  Ms Murray-Jones argues that the c in cor will be spoken by some as s and points to the pronunciation of the words decide, ace, accept, device and others to support her argument.  I am aware of other words such as pharmaceutical and acid where the c is spoken as s.  However I am not aware of any English words where the letter c falls between an a and or and is pronounced as an s.  Indeed, it is my understanding that such pronunciation only occurs when the c is followed by e, i or y.  In the absence of expert testimony to the contrary, I do not give any weight to the possibility of the c in diacor being pronounced as s.  I consider the suffixes stor and cor will be pronounced as store and core respectively.  Those words require clear enunciation and so do not fall into the category of the ‘slurred endings’[5].  The differences in sound of di-a-stor and di-a-cor make any confusion on the basis of aural similarity unlikely.

   [4] The goods are not restricted to those available on prescription and may be self-selected by the ordinary person with no knowledge of the naming conventions for pharmaceuticals.

   [5] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264

3. I turn now to the likelihood of confusion based on the visual appearance of each word.  As previously stated, both trade marks are invented words of no apparent overall meaning.  Their component parts, however, bring allusions with them which contribute to the impression created by each trade mark as a whole.

4. Both parties agree that dia is a very common prefix in names for pharmaceuticals.  It is unlikely to mean anything to the ordinary person although it is defined in the Macquarie Dictionary as ‘a prefix of learned words’.  The same cannot be said for the suffixes stor and cor.  They bring to mind ‘store’ and ‘core’ respectively.  On that basis I find that diastor and diacor as wholes will not be recalled in the same way.  Even though they differ only in their middle letters, they do not engender the same impression.  I am satisfied they can be distinguished by the ordinary consumer.

5. I have also considered the possibility raised by Mr Willis that some persons will regard both trade marks as commencing with di, a known word prefix defined in the Macquarie Dictionary as ‘twice’, ‘doubly’, ‘two’.  The other elements in each trade mark would be perceived by such persons to be astor and acor respectively.  Mr Willis says astor is Latin for star.  That is probably not a meaning that is well known in Australia given that Latin is no longer regularly taught in schools.  However astor is also a misspelling of the flower name aster.  It is quite likely some persons will form an impression of diastor on the basis of the flower.  Mr Willis says cor is Latin for heart.  Again I doubt whether that meaning is widely known.  But it is obvious that diacor does not contain any allusion to a flower.  Moreover, when pronounced as di-astor and di-acor, the trade marks sound quite different.  So whether the trade marks are recalled as dia-stor and dia-cor, or di-astor and di-acor, I am satisfied that they are not deceptively similar.

6. The opponent did not provide any evidence that deception and/or confusion have occurred in the marketplace.  Sales figures pertaining to use of its trade mark in Europe[6] are in evidence but there are no Australian sales figures even though the trade mark was first used here on 2 August 2002[7].  The applicant has not provided any evidence of use of its trade mark[8] and it may be that its product is not yet available for sale in Australia. I have drawn no inference either way from the absence of documented deception/confusion. It is through applying the relevant tests that I find the trade marks are not deceptively similar and that the third leg of section 44 has not been established.

   [6] Paragraph 6 of Rath declaration

   [7] Paragraph 5 of Rath declaration

   [8] Its evidence all goes to the state of the register.

   Decision

7. I find the section 44 ground of opposition has not been made out. Trade mark application no 902498 may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

   Costs

8. I award costs against the opponent according to the Official Scale.

   Deirdre O'Brien
   Senior Examiner
   Trade Marks Hearings
   21 October 2004