Merck KGaA v Advanced Intellectual Holdings Pty Ltd

[2011] ATMO 79

TRADE MARKS ACT 1995

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

Re:Opposition by Merck KGaA to registration of trade mark application 1273770(2) - TIRON - filed in the name of Advanced Intellectual Holdings Pty Ltd.

Delegate:	Debrett Lyons
Representation:	Opponent: Trevor Stevens of Davies Collison Cave, Patent & Trade Mark Attorneys Applicant:  Not represented
Decision:	2011 ATMO  79 Sec. 52 opposition: ss. 44 and 59 pressed but neither established. Opposition unsuccessful.

Background

1. Advanced Intellectual Holdings Pty Ltd  (‘the applicant’) applied for registration of a trade mark, current details of which are:

   Application No:     1273770

   Priority Date:         23 November 2008

   Goods:                  Class 2: Paints

   Trade Mark:          TIRON

2. Following examination, the application was accepted for possible registration and advertised as such in the Official Journal of Trade Marks on 11 February 2009.

3. After being allowed an extension of time for doing so, on 25 September 2009 a company by the name of Rona Pearl Incorporated filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), opposing the registration of the trade mark.

4. On 28 June 2010, official records were amended at the request of the attorneys for Rona Pearl Incorporated to reflect Merck KGaA as the opponent in these proceedings (hereinafter, ‘the opponent’).

5. Evidence in support filed on behalf of the opponent comprised a statutory declaration of Dr. Martin Andre dated 16 June 2010.  No evidence in answer was filed or served.  The opponent filed and served further evidence, being a statutory declaration of Trevor Stevens dated 6 December 2010.

6. The opponent asked to be heard and the matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Sydney on 6 June, 2011.  The opponent was represented by Trevor Stevens of Davies Collison Cave, Patent & Trade Mark Attorneys.  The applicant was not present or represented at the hearing.

   Discussion

7. The Notice of Opposition cited most grounds of opposition available to the opponent under the Act, however, in submissions the opponent limited its grounds of opposition to those under sections 44 and 59.  The opponent expressly abandoned the remaining grounds listed in the Notice of Opposition.

8. The opponent bears the onus of establishing one or both of those grounds of opposition on the balance of probabilities (see Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26]).

   Section 59

9. Section 59 states that:

   Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)to use, or authorise the use of, the trade mark in Australia; or

   (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

10. The opponent conceded that the filing of an application for registration gives rise to a prima facie presumption of an applicant's intention to use the trade mark (see Aston v Harlee Manufacturing Co (1960) 103 CLR 391) but underscored that this presumption is rebuttable and that inferential evidence is enough is shift the onus of proof from the opponent to the applicant.

11. In this case the opponent seeks to rebut the presumption of intention to use the trade mark TIRON resting on the act of application by way of the following evidence and submissions.

12. First, the opponent points to the name of the applicant company, Advanced Intellectual Holdings Pty Ltd, and suggests that the applicant is a holding company, not a trading company, and is unlikely to have itself intended to use the trade mark.

13. Secondly, the application broadly covers “paints” and the opponent submits that “an intention to use may be more readily inferred in cases where a precise range of goods rather than a broad range of goods is specified under a trade mark application.”

14. Thirdly, the opponent’s further evidence shows that on 5 July 2010, ASIC records indicate a status of "strike off action in progress" in respect of the applicant company, Advanced Intellectual Holdings Pty Ltd and on 2 December 2010 those same records show the applicant company as deregistered.

15. Fourthly, the opponent points to the facts that (i) the applicant has not responded to the opponent's contention in the Notice of Opposition that the applicant has no intention to use its trade mark; (ii) the applicant has not responded to the statement in the declaration of Dr. Andre that the applicant does not actively trade in or manufacture the goods specified under the application; and (iii) the applicant has not responded to the further evidence just described.

16. In the case of Americana International Limited v Suyen Corporation [2008] ATMO 4, I summarised the points of law relevant to the matter before me now. The issue of whether the intention to use a trade mark under section 59 of the Act should be determined at the filing date of the application has, since then, been the subject of judicial discussion in the Federal Court. In Suyen Corporation v Americana International Limited, [2010] FCA 638 (21 June 2010) Justice Dodds-Streeton stated:

    Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 (“Food Channel”) held that the intention must exist at the date of the application, although the Full Court acknowledged that “use (or non-use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application” (at [74]).

17. Her Honour noted that[1]:

    While the Full Court has now confirmed that the intention under s 59 must exist at the date of the application, the arguments in support of the contrary view were not addressed and a number of potential inconsistencies and uncertainties remain.

    [1] Suyen Corporation v Americana (Supra) [at 177].

18. Despite these final words, the Full Federal Court’s approach in Food Channel was followed and, as a delegate of the Registrar of Trade Marks, I am also bound to follow the Federal Court.  Accordingly, I proceed on the basis that intention to use the trade mark is determined at the date of filing, noting that “use (or non use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application.”[2]

    [2] Food Channel (supra) at [74].

19. The applicant’s failure to provide evidence or submissions does not, by itself, create an inference that the applicant lacks the intention to use the trade mark.  Nor is the applicant’s name sufficient to raise an adverse inference.  Holding company or not, it may have intended to somehow use the trade mark and I remain mindful, too, that section 59 does not strictly require use of the trade mark by the owner of the trade mark.  Nor do I regard the goods specification, “paints”, to be particularly broad.  Finally, deregistration of the company occurred long after the filing date of the application and any shadow cast back upon the applicant’s intentions at the filing date by that later event is so pale as to have virtually no significance.

20. On the above facts, I find that the onus cannot be said to have shifted to the applicant to answer this ground.  I find that the ground of opposition under section 59 has not been made out.

    Section 44

21. Section 44(1) of the Act provides:

    Identical etc. trade marks

    (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.

22. The opponent is the owner of Australian trade mark registration 303633 for TIMIRON.  The priority date of registration 303633 is 10 January 1977, earlier than the priority date of the application.  The goods of registration 303633 are "pearlescent pigments for use as ingredients for cosmetic preparations". 

23. The respective trade marks are not substantially identical and the opponent did not try to press any such argument.  The opponent did argue that the trade marks were “deceptively similar”.  Section 10 of the Act provides that “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”.  As was pointed out by French J in the WOOLWORTHS METRO case[3], the logic of section 44 suggests the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, relevant other goods and services is “logically antecedent to” assessing the deceptive similarity of the trade marks.  In this regard French J explicitly approves the observation in Wilcox J’s first instance decision in the Woolworths matter[4] that “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive”.  French J concludes (at [40]):

    In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.

    [3] Op. cit.

    [4] Woolworths Limited v Registrar of Trade Marks (1998) 42 IPR 615 (at 624)

24. The opponent submitted that “paints” and “pearlescent pigments” are goods of the same description because pearlescent pigments are an essential element in the manufacturing of paints.  That proposition may or may not be correct but it is irrelevant since the goods to be compared are “paints” and “pearlescent pigments for use as ingredients for cosmetic preparations”.  I am not at all sure that those goods are of the same description.  In any event, taking the “practical” approach to section 44 advocated by French J., I can look at the trade marks under comparison – TIRON and TIMIRON – and come to the conclusion that they are not deceptively similar.  The trade marks show some resemblance to one another, but the extent to which they share common syllables does not outweigh the more obvious visual and oral differences between them.  I do not consider that there is a real and tangible likelihood of the trade marks being confused.

25. The opponent has not established the section 44 ground of opposition.

    Decision

26. Section 55(1) provides:

    (1) 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.

27. The opponent has not established a ground of opposition under the Act. As a result, the opposition is unsuccessful and the trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar is served with a notice of appeal against this decision within that time, I direct that registration shall not occur until any appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s direction or order.

Debrett Lyons
Hearing Officer
Trade Marks Hearings
15 August 2011