Medicon eG Chirurgiemechaniker v A.R. Medicom (Australia) Pty Ltd
[2015] ATMO 106
•28 October 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Medicon EG Chirurgiemechaniker to registration of trade mark application 1592326(10, 21) - MEDICOM & Device - filed in the name of A.R. Medicom (Australia) Pty Ltd.
| Delegate: | Iain Campbell Thompson |
| Representation: | Opponent: Andrew Sykes of Counsel, instructed by FB Rice & Co Applicant: Jűrgen Bebber, a Principal of Griffith Hack, Patent & Trade Mark Attorneys |
| Decision: | 2015 ATMO 106 s52 opposition to registration; s44 established – honest concurrent use established; s60 established in relation to limited goods; s42(b) and s62A not established; registration refused but application may proceed to registration if goods are limited within two weeks |
Background
In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’), A.R. Medicom (Australia) Pty Ltd (‘the Applicant’) has filed application for the registration of the trade mark details of which appear below:
Application No: 1592326
Priority Date: 20 November 2013
(‘the filing date’ or ‘the relevant date’)
Goods:Class 10: Apparatus for dental purposes; Apparatus for dental use; Dental apparatus and instruments; Fluoride trays for medical or dental use; Gloves for dental use; Protective bonnets for the hair for wear by dental practitioners; Protective face masks for dental use; Protective mouth masks for dental use; Protective nose masks for dental use; Protective visors for dental use; Apparatus for medical purposes; Apparatus for medical use; Applicators in the nature of sponges (for medical use); Articles of rubber for medical purposes; Artificial sponges for medical purposes; Bags (fitted) for medical instruments; Bandages (elastic or supportive) for medical purposes; Bathing aids for medical purposes; Disposable bags for medical use; Disposable clothing for medical use; Disposable laboratory apparatus for medical use; Disposable protective gloves for medical purposes; Disposable sheeting for medical use; Examination gloves for medical use; Eye shields for medical use; Face masks for medical use; Face shields for medical use; Gloves for medical examinations; Gloves for medical purposes; Gloves for medical use; Latex gloves for medical use; Masks for use by medical personnel; Medical apparatus for sterilisation; Medical apparatus for use in sterilization processes; Medical gloves; Medical masks; Protective bonnets for the hair for wear by medical practitioners; Protective breathing masks for medical applications; Protective breathing masks made of non-woven materials for medical applications; Protective clothing for medical purposes; Protective face masks for medical use; Protective mouth masks for medical use; Protective nose masks for medical use; Protective visors for medical use; Suction apparatus for medical use; Disposable examination gloves; Gloves for surgical purposes; Gloves for surgical use; Gloves for use during operations; Gloves for veterinary use; Latex examination gloves for medical use; Latex gloves for surgical use; Medical examination gloves; Protective gloves for use by persons working in medicine; Protective gloves for use by persons working in the dentistry; Protective gloves for use by surgeons during operations; Rubber gloves for medical use; Rubber gloves for surgical use; Surgeons’ gloves; Surgical gloves; Surgical gloves for use in surgery; Surgical gloves for use in the examination of patients; Disposable or reusable surgical clothing, footwear and headgear including caps, gowns, masks and over-boots; Face masks for surgical use; High filter surgical masks; Protective breathing masks made of non-woven materials for surgical applications; Protective masks for use by persons working in medicine; Protective masks for use by persons working in the dentistry; Protective masks for use by surgeons during operations; Protective mouth masks for veterinary use; Protective nose masks for veterinary use; Respiratory masks for artificial respiration; Surgeons’ masks; Surgical breathing masks; Surgical filter masks; Surgical masks; Caps being disposable clothing for medical use; Caps being disposable clothing for surgical use; Surgical caps
Class 21: Disposable gloves for use in catering; Domestic gloves; Gloves for cleaning; Gloves for domestic use; Gloves for household purposes; Plastic disposable gloves for household purposes
(‘the Goods’)
Trade Mark:
(‘the Trade Mark’)
After the Trade Mark was examined as is mandated by section 31 of the Act it was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 10 April 2014.
On 4 June 2014 Medicon eG Chirurgiemechaniker – Genossenschaft (‘the Opponent’) filed Notice of Intention to Oppose followed on 24 June 2014 by its Statement of Grounds and Particulars which detailed grounds under sections 42, 44, 58, 60 and 62A of the Act.
On 23 July 2014 the Applicant filed its Notice of Intention to Defend.
Thereafter the parties have filed their evidence in accordance with the Trade Marks Regulations 1995 (‘the Regulations’).
I heard the submissions of the parties at a hearing in Melbourne on 18 September 2015. Andrew Sykes of Counsel, instructed by FB Rice & Co represented the Opponent. Jűrgen Bebber, a Principal of Griffith Hack, Patent & Trade Mark Attorneys, represented the Applicant.
Onus & Relevant Date
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26].
The relevant date at which the grounds must be considered is the filing date of the Trade Mark which is here the priority date of the opposed application.[2]
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.
Evidence
The evidence in this matter is comprised of the following declarations:
In Support
Joachim Schmid made on 24 October 2014 with annexures JS-1 to JS-14
Jeffrey Scott Church made on 29 October 2014 with annexures JSC-1 to JCS-5.
In Answer
Guillaume Laverdure dated 17 February 2015 with annexures GL-1 to GL-6
Evidence in Reply
Thomas Mittműller made on 27 March 2015 with annexure JS-1
Joachim Schmid is Managing Director of the Opponent and has held this position since 8 July 1999. Mr Schmid states that the Opponent is the owner of the following Australian trade mark registrations:
Registration No: 129584
Priority Date: 15 October 1956
Goods:Class 10: Surgical, medical and dental instruments, apparatus and contrivances and parts included in this class of such instruments, apparatus and contrivances, with the exception of surgical needles, mechanical ligators, sutures and ligatures, diagnostic imaging equipment, ultrasound equipment, x-ray equipment, and probes for use with the aforesaid diagnostic imaging equipment, ultrasound equipment and x-ray equipment
Trade Mark: MEDICON
Registration No: 812382
Priority Date: 2 November 1999
Goods/Services: Class 10: Surgical, medical, dental and veterinary apparatus and instruments including electrocardiographs, medical radiology equipment, medical ultrasound equipment including probes, medical probes (electronic and non-electronic), endoscopes including endoscope accessories such as video cameras, prostheses, medical diagnostic work stations comprising combined medical imaging systems such as ultrasound, radiology and tomography, medical imaging equipment, suture materials, resorbable and non-resorbable medical implants, resorbable screws, plates, rivets and membranes for surgical purposes, resorbable and non-resorbable implants for osteosynthesis and instruments and apparatus for the application/installation of such implants, coldlight-systems used in conjunction with minimally invasive surgical equipment such as arthroscopes, endoscopes, laryngoscopes and laparoscopes
Class 41: Organising and conducting seminars, congresses and continuing education, all in the field of medicine
Class 42: Operating a website providing information in the medical field and providing access to medical information via a global computer network
Trade Mark: MEDICON’
Mr Schmid says:
[The Opponent] was founded in 1941 following the merger of six companies specialising in the production of surgical instruments. Now shown to me and marked Annexure JS-1 is a true copy of the certificate of registration of [the Opponent] (in German) and a copy of that certificate which has been translated into English.
Since its registration as a cooperative in 1941, [the Opponent] has been engaged in the business of manufacturing and selling goods being (in broad terms), surgical, medical, dental and veterinary instruments and related apparatus and devices. These are the products covered by its trade mark registrations 129584 and 812382. [The Opponent] has only ever been engaged in the manufacture, distribution and sale of products of this kind.
[The Opponent] and its six subsidiary companies presently have approximately 400 employees and manufacture over 35,000 different kinds of surgical, medical and dental and similar products at 11 different facilities in and around Tuttlingen, a town in the south-western German state of BadenWurttemberg.
All MEDICON-branded products are manufactured in Germany which are then exported, distributed and sold in over 120 countries throughout the world through many different distributors.
[The Opponent’s] gross turnovers from sales of its products worldwide in 2013 was approximately 28,000,000 Euro.
Concerning the Opponent’s historical and ongoing sales under its trade mark in Australia, Mr Schmid states:
The first use of the MEDICON mark in Australia was in or about 1949. At the time of its introduction to the Australian market, [the Opponent] was manufacturing in Germany, a variety of surgical, medical, dental and veterinary instruments, as well as related medical devices and apparatus. It was products of this kind that were exported to, and distributed in, Australia in or about 1949.
The records of use by [the Opponent] of its mark MEDICON in Australia dating from around the late 1940s and early 1950s are incomplete. This is partly because, as I am aware from my own knowledge and belief, business documents and records only need to be kept for a period of 10 years in Germany.
I have, however, caused to be retrieved from the document archives of [the Opponent], a number of relevant documents. Now shown to me and marked Annexure “JS-2” is a copy of a document in German styled Bilanz und Inventur dated 31 December 1952 and a certified translated copy of that document. This document lists the outstanding invoices to [the Opponent’s] customers throughout the world as at 31 December 1952.
The Annexure shows three outstanding invoices to Australian customers being Caminer (account no. 1247), Elliots & Austr, (account no. 1427) and Martin & Co. (account no. 1320) who were all based in Sydney, as shown in the document.
I understand that Martin & Co is an abbreviation for Martin & Co (Surgical) Ltd which I am informed is now Beiersdorf Australia Ltd.
Although the Bilanz und Inventur document does not set out what the individual products were, I am aware from my own knowledge and belief that the products were surgical, medical, dental and veterinary instruments, apparatus and devices as these were the only kinds of products that [the Opponent] was manufacturing at the time.
Mr Schmid documents the Opponent’s use of its MEDICON trade mark in Australia over the years and I accept that it has been used for a range of medical and surgical hardware which is typically used in surgery, dentistry and possibly by veterinaries. Mr Schmid provides the Opponent’s gross turnover under the trade mark MEDICON in Australia for the period 2007 to 2014 and (since confidentiality is claimed) I would typify these as relatively modest when considering the likely unit cost of the goods (see [15], below) and the size of the market.
Jeffrey Scott Church is a director of one of the Opponent’s distributors in Australia. Mr Church’s company has distributed the Opponent’s goods under its trade mark since 2001 and is now its sole agent. Mr Church explains that:
… [his company] purchases MEDICON-branded products from [the Opponent] and distributes and sells to [his company’s] customers in Australia. In so doing, it adds a percentage markup to the wholesale price at which [his company] purchases product from [the Opponent]. For this reason, the price of a MEDICON-branded product in Australia may differ from the price per item that is reflected and reported in [the Opponent’s] turnover (and other financial data) for Australia.
Mr Church further states:
Since 2001, NSC has used the Medicon brand in Australia to promote MEDICON-branded products to hospitals, surgeons, nurses and other healthcare facilities, including by means of advertising the MEDCION brand on brochures, flyers, on our websites, and at trials and through various promotions as well as through all of NSC’s customer service and sales representatives who service all States and Territories in Australia. Now shown to me and marked Annexure “JSC2” are multiple examples of use of the MEDICON brand by NSC in advertising.
Medicon has over 17,000 surgical instruments in its range which are or can be distributed by NSC. The particular MED ICON-branded products that are available from NSC include all of those set out in the catalogues described in paragraph 18 above. These include instruments for general surgery, plastic surgery, ear nose and throat surgery, dental surgery, urology, gynaecology and obstetrics, devices for central sterile services departments and wards, as well as medical probes.
Concerning the reputation of the Opponent’s MEDICON trade mark, Mr Church states:
[The Opponent’s trade mark] is a very well-known and respected brand in Australia and throughout the world.
I am aware from my own knowledge that [the Opponent’s trade mark] has a very strong reputation in Australia among the healthcare profession as well as the wider healthcare industry, largely as a result of the strong promotion by [the company] since 2001 of the [Opponent’s trade mark] in Australia.
[The Opponent] is the second largest manufacturer of surgical instruments in the world. The quality of its instruments and manufacturing processes is, in my view, superior to that of its competitors.
The Australian healthcare industry requires high quality, durable instruments for use in medical, surgical, dental and veterinary settings and for related uses. Such instruments are often used daily, so they need to be able to withstand the demands of constant use and cleaning/sterilisation at 134 degrees Celsius. [The Opponent’s] surgical instruments have this desirable durability and are able to be used for many years and thousands of times. The present ten-year year warranty that [the Opponent] offers for its products supports this claim. These matters are well-known in the Australian professional healthcare market and are some of the key reasons why [my company’s] customers choose to purchase MEDICON-branded instruments.
Mr Church also provides estimated gross turnover figures for goods sold by his company under the Opponent’s trade mark during the period 2006 to 2014. Again I would characterise these figures as being relatively modest in the context of the marketplace for medical and surgical instruments in Australia.
Mr Church further explains:
[The Opponent’s] share of the surgical instrument market in Australia, being the market proportion of products sold by NSC in Australia, is approximately 10%.
There are at least 35 companies selling surgical instruments into the Australian market. The market is very fragmented and has strong pressure on pricing due to the intense level of competition. As Medicon is a premium brand, NSC’s pricing reflects this. Other brands offer instruments of a lower quality and at lower cost.
Mr Church also supplies his company’s advertising figures for goods sold under the Opponent’s trade mark. These figures are again quite modest.
The evidence in answer is a declaration by Guillaume Laverdure who is Chief Operating Officer of A.R. Medicom Inc. Mr Laverdure explains:
Medicom comprises a number of subsidiaries around the globe including in Australia. In Australia, Medicom’s controlled subsidiary is A.R Medicom (Australia) Pty Ltd, which is the applicant for Trade Mark No. 1592326 (the opposed mark). In this declaration, I will refer to all entities organised as controlled subsidiaries under Medicom as the Medicom Group’
The exact relationship between A.R. Medicom Inc and the Applicant is not explained by Mr Laverdure who goes on to state:
Medicom was founded in 1988 by Ronald Reuben with a focus on disposable gloves and has expanded over the years to include other infection control products and to include numerous markets around the globe.
Today, the Medicom Group spans the globe as a prime player in the health care business. Mr Reuben remains the Chief Executive Officer of the Medicom Group.
The Medicom Group specialises in the design and manufacture of medical consumables comprising gloves, masks, non-woven and cotton products such as gauzes, sterilisation reels, disinfectants, preventives (including topical anaesthetic gels and fluorides), medical products made of paper and plastic (including dental bibs, tray covers, head rest covers, paper cups, examination table paper and medical evacuation products) and medical apparel (including gowns and shoe covers). Attached at Annexure GL-1 is a selection of print-outs from the Medicom Group’s website at detailing the range of goods offered by the Medicom Group. In this declaration, I will refer to all those goods collectively as the MEDICOM Products.
Concerning the background of the Trade Mark, Mr Laverdure states:
The MEDICOM mark was applied to MEDICOM Products since at least 1990. Since then, various Medicom subsidiaries have been established around the globe, and MEDICOM Products and the MEDICOM mark was deployed to various markets at varying times in the company’s history.
The trade mark MEDICOM with or without the logo depicted in this application is either applied to the products or to the packaging of Medicom Products. There have been a number of variations in the representation of the MEDICOM mark over the years. Examples of these are depicted below.
However, Mr Laverdure states that “the primary identifier is the mark shown in [the Trade Mark]”. By this I gather he means that the Trade Mark is the Applicant’s primary trade mark.
Concerning the use of the Trade Mark in Australia, Mr Laverdure says:
The MEDICOM Products were first offered to customers in Australia in around 2001 (Market Entry). A variety of products were sold to customers in Australia around 2001, including procedural face mask, surgical mask, dental fluoride compound, dental bib sterilization pouches, gauze/non-woven sponges. The product range offered to Australian customers increased over the years.
Mr Laverdure states that since 2001 the use of the Trade Mark has spread to all States and Territories of Australia. Mr Laverdure also supplies confidential details of sales under the Trade Mark in Australia since 2004.
Mr Laverdure states that his company was not aware of the Opponent’s trade mark until 1999 “when one of Medicom Group’s subsidiaries was involved in a trademark dispute initiated by the opponent in its home country, Germany.”
Concerning the concurrent use of the trade marks under consideration, Mr Laverdure says:
I am not aware of any consumer confusion in any country in which the Medicom Group has operated since its establishment in 1988 resulting from the use of the MEDICOM Mark and the use (if any) of the opponent’s mark.
I have reviewed the declarations of Joachim Schmid and Jeffrey Scott Church filed in this proceeding. In my view, the MEDICOM Products are significantly different in nature to the products the opponent offers. Medicom Group’s focus is on dental and medical consumables with a particular emphasis on infection control products.
If IP Australia refuses registration of Trade Mark No. 1592326, the Medicom Group will experience considerable inconvenience. In my view, the Medicom Group has developed a strong reputation for the MEDICOM Mark used in relation to the MEDICOM Products, including in Australia. Refusal to register Trade Mark No. 1592326 would result in the loss of an important registration protection for that reputation.
In evidence in reply Thomas Mitterműller is Financial Director of the Opponent. He states:
I refer […]the declaration of Guillaume Laverdure made 17 February 2015 filed in this matter in which he declared that he first became aware of Medicon in 1999 when it filed proceedings in Germany against Medicom Healthcare B.V. for infringement of Medicon’s trade mark MEDICON through use of the mark MEDICOM.
I am aware that on or about 20 June 2000, the Mannheim Regional Court issued a judgment by consent following the issue of proceedings referred to in paragraph 2 above for trade mark infringement. As part of the orders made, Medicom Healthcare B.V. was prohibited from using the Medicom name in commerce and from supplying, marketing, or importing surgical and/or dental instruments and/or their accessories, especially saliva ejectors, high volume evacuators, sterilised blades and scalpels, sterilisation pouches, dental bibs, tray covers, or gauze nonwoven spongers, under the name of Medicom, and/or participating in such activities.
I am aware that one of the reasons for Medicon bringing the action referred to in paragraph 3 above was because of perceived consumer confusion in Germany.
Annexure JS1 is a true copy of the consent orders made by the Manheim Regional Court, the reasons for the decision and a certified translation of those documents.
The Section 44 Ground
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.
[…](3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
The Opponent argues that the Trade Mark is substantially identical or deceptively similar to its registered trade marks 129584 and 812382 which largely consist of the trade mark MEDICON and that the goods under consideration are similar goods. The Opponent further argues that the provisions of paragraph 44(3)(a) do not apply as the Opponent’s evidence does not establish the honest concurrent use of the parties’ trade marks.
In Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 (‘Woolworths’) at [39] French J observed:
The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second:
Accordingly I initially observe that it appears to be in common between the parties that their specifications of goods include those which are the same goods and goods which are similar.
Substantial identity is discussed in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 (‘Shell’) where Windeyer J said at [12]:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig [1944] NSWStRp 28; (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.
On this basis the trade marks are not substantially identical: the words MEDICOM and MEDICON are dissimilar with different suffixes (‘-con’ and ‘-com’) that have divergent denotations. Alternatively viewed, the element ‘icon’ which is present in the Opponent’s trade marks is absent from the Trade Mark. Additionally, the device component of the Trade Mark is relatively prominent and stands on its own in the Trade Mark as a distinctive feature with no immediately apparent significance in relation to either the goods[3] in respect of which registration is sought or to the word MEDICOM[4] within the Trade Mark such that it should be discounted when assessing the trade marks for substantial identity.
[3] PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; [1999] AIPC 40,117; (1999) 47 IPR 47
[4] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381
Deceptive similarity is defined by section 10 of the Act:
10Definition 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.
The assessment of the likelihood of deception or confusion was discussed by French J in Woolworths at [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.”
As for the assessment of trade marks for deceptive similarity, in Shell at [13] Windeyer J said:
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. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “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” (1937) 58 CLR, at p 658.
[…]
The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances
The Opponent submits that:
As explained above the central element of the MEDICOM trade mark is the prominent word MEDICOM. This word is almost both visually and aurally identical to MEDICON. The difference of substituting “N” with “M” is so minor and would have no effect on a consumer who was viewing the MEDICOM trade mark with an imperfect recollection of the MEDICON trade marks. Such a consumer is highly likely to be confused by the similarity.
However, I consider that the consumer here is less likely to be a person casually buying in a supermarket or pharmacy and more likely to be a person buying from a dental, medical or surgical supplies company – both parties have provided evidence that, in Australia, their goods are distributed by such companies to dentists, surgeries, hospitals and so forth. Accordingly, the consumer here is not the ordinary person out doing personal shopping but is likely to be a person with some training and discrimination who is used to buying from surgical/dental/medical supplies companies and buying after some consideration and deliberation, probably after consulting several catalogues or searching online and/or after meeting with sales personnel.
The Opponent has submitted that the Applicant’s evidence shows that the word MEDICOM is occasionally used as a trade mark without the figurative device which appears in the Trade Mark and looks to this as strengthening the argument for the similarity of the trade marks. However, I consider that, in assessing the similarities under section 44, I am bound to assess the similarities of the trade marks as applied for and registered.
On the one hand the prefix ‘Med-’ or ‘Medi-’ is a widely recognized abbreviation for the word ‘medical’ and should be to an extent discounted (but not overlooked) in the comparison and, further, the suffixes ‘-con’ and ‘-com’ signify quite different things albeit they might sound similar. On the other hand there are obvious visual and aural similarities between the trade marks but doubt because of the specialty of the marketplace for the goods, the mode of sale, and the training of the purchasers in that market whether the similarities would actually lead to confusion.
I note also that the parties’ trade marks co-existed in the marketplace for over 12 years at the priority date apparently without any instances of confusion (otherwise I believe the Opponent would have included such reports in its evidence).
I consider that the above discussion leaves the question of whether the visual similarity of the trade marks amounts to a deceptive similarity as being a moot question.
However, counterbalancing the above factors are the issues of both notional use and the aural similarity of the trade marks: I am to consider the notional use of the trade marks of the parties to the full extent of the goods listed in their respective specifications. In Woolworths French J said at [88]:
The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. 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 services covered by the proposed registration.
Thus, when considering the scope of the Goods, lack of confusion in the marketplace may be unsurprising as the Trade Mark has not been used by the Applicant to the extent of the Goods – in particular in relation to its claims as to all of the articles within the subset of the Goods, below:
Apparatus for dental purposes; Apparatus for dental use; Dental apparatus and instruments; Apparatus for medical purposes; Apparatus for medical use; Medical apparatus for sterilisation; Medical apparatus for use in sterilization processes; Suction apparatus for medical use;
The problem lies with the meaning of the word ‘apparatus’ within the above-mentioned general claims. According to the Macquarie Dictionary, the word ‘apparatus’ means:
apparatus Pronunciation of apparatus /æpəˈratəs/ (say apuh'rahtuhs), Pronunciation of apparatus /-ˈreɪtəs/ (say -'raytuhs)
noun (plural apparatus or apparatuses)
1. an assemblage of instruments, machinery, appliances, materials, etc., for a particular use.
2. any complex appliance for a particular purpose.
3. Physiology a collection of organs, differing in structure, which all minister to the same function.
4. an organisation or subdivision of an organisation, especially that part concerned with general administration: the apparatus of a political party.
[Latin: preparation]
In the context of the Goods as claimed, the word ‘apparatus’ refers to either an assemblage of instruments, machinery, appliances or, alternatively, to a complex appliance for a particular purpose. The goods on which the Trade Mark has been used, however, are not instruments, machinery or appliances but are medical, surgical and dental disposables of the types specified within the balance of the Goods which are not qualified by the word ‘apparatus’.
In Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 Dodds-Streeton J made the following remarks about aural similarity:
[117] In Pfizer Products, Gyles J stated that but for the considerable existing reputation of the mark VIAGRA, the mark HERBAGRA would not be deceptively similar, as although both marks had a common suffix with no relevant meaning or connotation, there was evidence that such marks were not uncommon for goods sold in chemist shops, and although some would wonder whether the goods had the same source, others would wonder if they had the same characteristics or a common ingredient (at [51]).
[118] His Honour nevertheless noted (albeit in the context of s 60), that although the marks did not look alike, one could not underestimate “the impact of the aural similarity between the words by virtue of the suffix “-AGRA””, which formed “a clear link between the marks which is not explained in any way as “AGRA” has no relevant meaning. To see invented words such as this is to invite attention to the sound as well as the sight... In any event, the sound is used in discussion about the product for sale, ordering the product for sale, and so on” (at [42]).
[…]
[120] In Wingate Marketing Pty Ltd and Another v Levi Strauss & Co and Another [1994] FCA 1001; (1994) 28 IPR 193, the Full Court held that the mark “Revise” closely resembled “LEVI’S” both visually and aurally, as the evidence suggested that many consumers and persons pronounced “Revise” to rhyme with “LEVI’S” (at 232). Further, “Revise” was chosen as a rather clever play on “LEVI’S”, with the possibility that consumers might associate it with “LEVI’S”.
[…]
[171] While the identical letters “-ivo” in each mark creates some visual similarity, I do not think the marks deceptively similar on a visual comparison, as they include a visually different initial letter and, as Vivo is a device mark, are differently represented. Nevertheless, in the context and circumstances of sale, the difference in appearance would not preclude the likelihood of confusion, as in my view, in a substantial proportion of cases, the aural effect and impression of the mark are likely to be of greater significance that the visual effect and impression.
As regards the aural similarity of the trade marks, I am satisfied that the trade marks MEDICON and MEDICOM are deceptively similar. Here the circumstance referred to above by Gyles J in Pfizer Products is entirely apposite:
To see invented words such as this is to invite attention to the sound as well as the sight... In any event, the sound is used in discussion about the product for sale, ordering the product for sale, and so on.
The differences between the pronunciation of the words ‘medicom’ and ‘medicon’ are so slight as to be almost indistinguishable and that the device element of the Trade Mark does not, of course, assist in distinguishing it here. I thus find that the Trade Mark is deceptively similar to the Opponent’s trade mark and, as the other legs of the subsection 44(1) ground have been founded, the ground under subsection 44(1) has been established.
Honest Concurrent use
As the Applicant submits that, should the ground under subsection 44(1) be established, it seeks the application of paragraph 44(3)(a), I now turn to question of whether the evidence establishes that there has been honest concurrent use of the trade marks.
In Phone Directories Co Australia Pty Ltd v Telstra Corporation Ltd [2014] FCA 373; (2014) 106 IPR 281 at [416] and [417], Murphy J stated:
In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102 (“McCormick”) at [30] Kenny J set out the factors that may be taken into account in exercising the discretion to allow a deceptively similar mark to be registered because of honest concurrent use as including:
(1) the honesty of the concurrent use;
(2) the extent of the use in terms of time, geographic area and volume of sales;
(3) the degree of confusion likely to ensue between the marks in question;
(4) whether any instances of confusion have been proved; and
(5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.
In Tivo at [246] Dodds-Streeton J noted that honesty in this context means “commercial honesty”, and said that the relevant factors include:
(a) whether the words which make up the trade mark are common, everyday words;
(b) the applicant’s subsequent conduct;
(c) the likelihood of confusion;
(d) the applicant’s knowledge of the opponent’s mark; and
(e) whether the adoption of the mark, and the continued use of it, was surreptitious.
The onus of establishing that its use of a deceptively similar mark was honest concurrent use is [the Applicant’s]: Tivo at [249].
The words making up the Trade Mark are common everyday words or parts of such which in the case of the element ‘medi-’ has reference to the nature of the services. There is nothing about the Opponent’s trade mark which suggests that the Trade Mark is deliberately imitative. The Applicant’s subsequent conduct has not been such that it calls the honesty of the use of the Trade Mark into question. There appears to be a very low likelihood of confusion which is born out by the lack of report of confusion by the Opponent after use of the Trade Mark within Australia for over 12 years at the filing date. While the Applicant had knowledge of the Opponent’s trade mark in use in Germany in 1999, there is no evidence that the Applicant had knowledge of the Opponent’s trade mark in Australia when it commenced use of the Trade Mark here in 2001. It does not appear that the adoption or continued use of the Trade Mark in Australia by the Applicant was surreptitious.
The adoption of the word ‘medicom’ as a part of the Trade mark appears, by Mr Laverdure’s account, to have been honest and in ignorance of the Opponent’s use of its trade mark in another country. There is no evidence that the Applicant was aware, or should have been aware, of the Opponent’s use of its trade mark in Australia when it started use of the Trade Mark.
As at its filing date, Trade Mark had been in concurrent use throughout Australia for some twelve years. However, as noted under my discussion of the section 44 ground, this was not in relation to all of the Goods nor has this use (in my assessment of the Applicant’s evidence) extended to all of the Goods. The emphasis within the goods in relation to which the concurrent use has occurred are surgical and medical disposables – thus concurrent use has not, in my view, occurred in relation to the goods below:
Apparatus for dental purposes; Apparatus for dental use; Dental apparatus and instruments; Apparatus for medical purposes; Apparatus for medical use; Medical apparatus for sterilisation; Medical apparatus for use in sterilization processes; Suction apparatus for medical use;
Obviously, the balance of convenience tends towards permitting registration of the Trade Mark for the goods in relation to which the Applicant has shown that it has used the Trade Mark.
Thus in my consideration of the honest concurrent use of the Trade Mark with that of the Opponent, it would be therefore appropriate to excise the goods listed at [55], above.
I add that it appears to follow that the lack of confusion between the trade marks of the parties stems from the differences in the goods in respect of which the trade marks are used, not in the differences of the Applicant’s Goods as claimed.
The Applicant has established the honest concurrent use of the Trade Mark except in relation to the goods listed at [55].
Section 58
Section 58 of the Act provides:
58Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.
In Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049 Gummow J discussed the decision of the Court in The Shell Company of Australia Limited v Rohm and Haas Company [1948] HCA 27; (1949) 78 CLR 601 and said:
When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase “substantially identical” as it appears in s. 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.
As I have found that the trade marks of the parties are not substantially identical, the Opponent cannot establish this ground.
Section 60
Section 60 of the Act provides:
60Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note:For priority date see section 12.
To found this ground the Opponent must establish that the trade mark on which it relies had, at the filing date of the Trade Mark, a reputation such that its use by the Applicant (or under the Applicant’s aegis) would confuse or deceive.
In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) Kenny J said of the word ‘reputation’ at [81]:
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
And in McCormick at [86] Kenny J said:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[5] said (albeit in relation to subparagraph 28(a) of the Trade Marks Act 1955) that the reputation required to be demonstrated was:
one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.
[5] [2000] FCA 1587; (2000) 50 IPR1.
Further, in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 at [40] I observed that:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.
While there are claims in the evidence that the Opponent is the second largest maker of surgical goods in the world, it is by no means clear that this claim similarly applies within the Australian marketplace. The quantum of the sales and advertising figures stated by Mr Church in relation to his company’s merchandising of goods under the Opponent’s trade mark in Australia is dissonant, in my consideration, with any claim that the Opponent’s share of the Australian market is commensurate with its world-wide status.
The Opponent has not stated the size of the Australian marketplace for its goods or what its share of that marketplace is. Accordingly, it is difficult to assess the reputation of the Opponent’s trade mark but in my consideration the turnover and advertising figures before me must be representative of a low to middling sort of reputation of the MEDICON trade mark in Australia. The size of the marketplace is very large[6] and the figures supplied by the Opponent represent a very small part of it.
[6] Medical and Surgical Equipment Manufacturing in Australia: Market Research Report Medical Technology: Key facts and figures 2013 >
While it is possible that the Opponent’s goods might occupy a proportionately larger specialist niche within the medical/surgical/dental marketplace, this possibility is not stated by Mr Church who has stressed in his declaration that:
Medicon has over 17,000 surgical instruments in its range which are or can be distributed by NSC. The particular MEDICON-branded products that are available from NSC include all of those set out in the catalogues described in paragraph 18 above. These include instruments for general surgery, plastic surgery, ear nose and throat surgery, dental surgery, urology, gynaecology and obstetrics, devices for central sterile services departments and wards, as well as medical probes.
The market for Medicon’s products is broad and varied and includes surgeons, nurses, central sterile services department personnel, hospital wards, emergency departments, dental surgeons, specialty surgeons (particularly plastic, ENT, neurosurgery, urology), outpatient clinics, day surgeries, endoscopic clinics and private and public hospitals.
Looking to the assessment of the likelihood of deception or confusion, the factors at work in my discussion of the likelihood of deception or confusion in terms of section 44 of the Act are also at work in relation to the section 60 ground. These factors include the previously discussed differences in the trade marks as well as the similarities; the fact that those in the marketplace who are purchasing the goods are trained professionals who are exercising discrimination; and the lack of any reports of confusion after over twelve years of concurrent use of the trade marks under consideration.
Obviously, here there is the strong aural similarity between the trade marks MEDICON and MEDICOM which I have previously noted.
Additionally, a part of my consideration is the reputation of the Opponent’s trade mark in relation to the goods to which it has been used. However, I am considering the whole of the Goods which the Applicant claims – not solely the goods for which it has shown use.
Considering all of these factors, I am satisfied that if the Applicant used the Trade Mark to the extent of the Goods, deception or confusion is likely in relation to the goods below:
Apparatus for dental purposes; Apparatus for dental use; Dental apparatus and instruments; Apparatus for medical purposes; Apparatus for medical use; Medical apparatus for sterilisation; Medical apparatus for use in sterilization processes; Suction apparatus for medical use;
However, in my assessment, the reputation of the Opponent’s trade mark is not such that confusion or deception would arise if the use of the Trade Mark is restricted to the Applicant’s goods of interest: surgical and medical disposables as listed in the Goods which are not qualified by the word ‘apparatus’.
I am satisfied that the Opponent has established its ground under section 60 of the Act in relation to the above goods.
Subparagraph 42(b)
Subparagraph 42(b) of the Act provides:
42Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a)the trade mark contains or consists of scandalous matter; or
(b)its use would be contrary to law.
Here the Opponent alleges that the use of the Trade Mark by the Applicant would be contrary to the Australian Consumer Law (‘the ACL’), which is contained in Schedule 2 to the Competition and Consumer Act 2010, relying upon subsection 18(1) and subsections (g) and (h) of s 29, which subsections correspond to section 52 and subparagraphs 53(c) and (d) of the now repealed Trade Practices Act 1974 (‘the TPA’). Schedule 2 relevantly provides:
Section 18: Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 29: False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
…
(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or
(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation;
…
However, these provisions are to be considered at a higher standard (mislead or deceive) than similar considerations under section 60 of the Act which are at the lower standard of ‘confuse or deceive’. It thus usually follows that if an opponent has not established its opposition under section 60 of the Act then neither will it establish its opposition under paragraph 42(b) when arguing that use of the Trade Mark is contrary to the ACL. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 1A IPR 684 at 688, Gibbs CJ said with respect to s 52 of the TPA:
In McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.
I am not satisfied that the Opponent has demonstrated that the Opposition is established at this higher standard that that under section 60.
The Opponent has not established this ground of opposition.
Section 62A
Section 62A of the Act provides:
62AApplication made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The principles involved in this ground were discussed in DC Comics v Cheqout Pty Ltd [2013] FCA 478; (2013) 212 FCR 194; (2013) 299 ALR 110; (2013) 101 IPR 334 at [61] where Bennett J discussed the reasoning of Dodds-Streeton J in Fry Consulting v Sports Warehouse Inc (No 2) [2012] FCA 81; (2012) 201 FCR 565:
Justice Dodds-Streeton observed (at [163]) that the examples of bad faith given in the Explanatory Memorandum are predominantly, but not exclusively, manifestations of blocking or holding to ransom a party which is, at least in conscience, entitled to a mark. However, her Honour noted that the illustrations are merely inclusive and do not limit the breadth of the concept of bad faith. Her Honour observed (at [145]) that the bad faith must be at the time of the application, that the onus is on the opponent seeking to establish bad faith and that the standard of proof is on the balance of probabilities.
Given limited Australian authority, her Honour (at [145]–[166]) also considered relevant authorities from the United Kingdom. These cases stated, relevantly:◦Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.
◦Bad faith does not require dishonesty.
◦Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.
◦The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.
◦It is difficult to see how a person who applies to register, in his own name, a mark he has previously recognised as the property of a potential overseas principal can be said to be acting in accordance with acceptable standards of commercial behaviour. Combining the mark with the applicant’s own name is no answer to that criticism.
◦The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.
◦All the circumstances surrounding the application to register the mark are relevant.
◦An act of bad faith cannot be cured by an action after the date of application.
Justice Dodds-Streeton concluded (at [164]) that bad faith in the context of s 62A does not require (although it includes) dishonesty or fraud and that it is a wider notion, potentially applicable to diverse species of conduct. Her Honour rejected the proposition that mere awareness that an overseas company owning the mark operated or intended to operate in Australia would amount to bad faith, concluding that this would be unduly absolute. Justice Dodds-Streeton instead adopted as a touchstone the United Kingdom formulation of conduct falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons (at [165]). Her Honour observed that the applicant’s mental state is also relevant, and stated (at [166]) that:
... mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.
The Opponent argues this ground in the following way:
As noted above, prior to first using or applying to register the trade mark in Australia the Applicant was well aware of the Opponent’s reputation in MEDICON. Furthermore a subsidiary of the MEDICOM group had already been prohibited from using MEDICOM in another jurisdiction due to alleged trade mark infringement.
As pointed out in Marvel Characters Inc. v. Gary Charles [2011] ATMO 92 (‘Marvel’) a history of alleged infringement may lead to an inference the application was not made in good faith. Whether or not this history occurred outside the jurisdiction is not relevant to the drawing of this inference.
However, I consider that the Opponent overstates the effect of the decision in Germany and also mischaracterises the Applicant’s behavior as a ‘history’ in the sense that an ongoing pattern of behavior has been revealed: in Marvel the Hearing Officer stated of the applicant’s behavior:
“[G]iven the Applicant’s history of applying for trade marks which he arguably does not own nor apparently have permission to use (as well as his practice of selling goods in his shops bearing same) the only available inference is that the application was not made in good faith. The evidence which the Opponent has provided in respect of the Applicant’s other trade mark applications and registrations, in conjunction with the evidence of the clothing brands available for sale in the Applicant’s shop, is sufficient for me to be satisfied that this application is an example of the Applicant’s standard pattern of behaviour, a pattern which leaves much to be desired as far as commercial fair dealing is concerned.
Thus the Applicant’s history with the Trade Mark is not a part of an ongoing pattern of behavior in relation to its trade marks in general. Although the Applicant was aware of the Opponent’s trade mark in Germany, it does not necessarily follow that it was aware of the Opponent’s trade mark in use in Australia when it commenced use of the Trade Mark in Australia in 2001. Neither does it necessarily follow that the Opponent thought that the trade marks of the parties are deceptively similar, or that the goods involved in Australia are the same as those in Germany, nor is it immediately apparent what the legal basis for the consent order was (for example the scope of the Opponent’s German trade mark registration which was allegedly infringed) and whether that legal basis directly that then prevailed corresponds to the Australian facts and law.
The Opponent has not established the ground under section 62A.
Decision
Subsection 55(1) of the Act provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, 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.
The opposition has been established in relation to the following goods under sections 44 and 60:
Apparatus for dental purposes; Apparatus for dental use; Dental apparatus and instruments; Apparatus for medical purposes; Apparatus for medical use; Medical apparatus for sterilisation; Medical apparatus for use in sterilization processes; Suction apparatus for medical use;
I therefore refuse to register the Trade Mark.
However, if the Applicant deletes the goods listed at [89] within two weeks of this decision, I will allow the Trade Mark to proceed to registration subject to [92], below.
The trade mark application may then (subject to the preceding paragraph) 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 and that the disposition of the application should be in accordance with the Court’s order or direction.
Costs
As the Opponent has to all intents been successful it is entitled to its costs which I award against the Opponent at the scale set out in Schedule 8 to the Trade Mark Regulations 1995.
Iain Thompson
Hearing Officer
Trade Marks Hearings
28 October 2015
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