Merck KGaA v Fournier Industrie Et Sante

[2004] ATMO 52

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 969567(5) - TRICOR - filed in the name of Fournier Industrie Et Sante.

Delegate:	Deirdre O'Brien
Representation:	Opponent Trevor Stevens of Davies Collison Cave Applicant Written submissions by Andrew Lockhart of Shelston IP
Decision:	s44 ground made out – registration refused

Background

1. Trade mark application no 969567 is an International Registration Designating Australia.  It has been accepted for registration in Australia but registration is opposed by Merck KGaA (‘the opponent’).  When the applicant, Fournier Industrie Et Sante, was advised of the opposition, it was also advised of the need pursuant to reg 17A.33(3) to provide an Australian address for service of any evidence. 

2. The opponent filed evidence[1] in support of its opposition. As the applicant had not provided an Australian address for service, the opponent was not required to serve its evidence on the applicant.

   [1] Statutory declaration by Robert Richardson, an authorized officer of Alphapharm Pty Ltd which is an Australian company associated with the opponent.  The declaration is dated 10 February 2004 and has two annexures identified as Exhibits A and B.

3. The applicant was given an opportunity to prepare and serve evidence in answer but it did not do so.  The matter was set down for hearing by me in Sydney on 22 July 2004.  Mr Trevor Stevens of Davies Collison Cave represented the opponent.  A few days before the hearing Mr Andrew Lockhart of Shelston IP advised me that he had just received instructions from the applicant to make representations on its behalf at the hearing.  In the end Mr Lockhart made those representations in the form of written submissions.

   Ground of opposition

4. The opponent is relying on the ground contained in section 44.  In support of that ground it cites registration no 842916.  Relevant details of that registration and of this application are shown below:

This application	Cited registration
Trade Mark	tricor	bicor
Priority date	3 February 2003	18 July 2000
Class 5 goods	Preparations for cardiovascular applications containing a lipid-lowering agent	Pharmaceuticals for human use

Mr Stevens submits the two trade marks are deceptively similar and are for the same goods.  As the cited trade mark has an earlier priority date, he says I must be satisfied the section 44 ground has been made out and that registration should be refused.

1. I agree with Mr Stevens with respect to the goods being the same.  The applicant’s goods are a sub-set of the cited goods and even though the applicant is, according to Mr Lockhart, prepared to limit its goods to those obtainable only on prescription, that does not change matters. 

2. The issue of deceptive similarity is not so clear-cut.  Both Mr Stevens and Mr Lockhart have cited various authorities in support of their case.  Mr Lockhart has also drawn my attention to the state of the register which, he says, shows trade marks for pharmaceuticals, particularly those used in connection with the heart[2] or the cardiovascular system, commonly end with the suffix cor.  Mr Lockhart argues that, when assessing deceptive similarity, the presence of cor in both trade marks should to some extent be discounted as cor has a ‘descriptive tinge[3] and is common to the trade. He also points out that the cited trade mark bicor was registered in the face of an earlier registration[4] for the word trade mark cor in respect of the same class 5 goods.

   [2] The Collins Dictionary of Medicine gives the meaning of ‘cor’ as ‘the heart’.

   [3] Magdalena Security Ltd’s Appn (1931) 48 RPC 477 at 487

   [4] Registration no 723623

3. It is well established that in assessing deceptive similarity, the respective trade marks are to be compared as wholes[5].  The impression created by each trade mark is to be considered[6], as is the likelihood of the ordinary person, having an imperfect recollection of one trade mark and encountering the other, being confused or deceived[7].  Mr Lockhart says the doctrine of imperfect recollection is ‘not of particular relevance here’ because ‘there is not sufficient commonality of meaning’[8].  He argues imperfect recollection should be given weight when the trade marks have a common meaning and he considers this is not the case with the two trade marks under consideration.

   [5] Clarke v Sharpe (1898) 15 RPC 141 at 146

   [6] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658

   [7] Re Application by Rysta Ltd (1943) 60 RPC 87 at 108

   [8] as per Estee Lauder Cosmetics Ltd v Warnaco Inc 50 IPR 143

4. bicor and tricor are invented words of two syllables, pronounced bi-cor and tri-cor respectively.  The first syllable in each indicates a number or quantity[9].  Mr Lockhart submits that, to members of the general public, bicor and tricor as wholes are meaningless.  It is true neither word is found in any standard English dictionary.  However they are not entirely meaningless with respect to pharmaceuticals.  Mr Stevens argues that a name for pharmaceuticals commencing with bi could be taken to mean double strength.  In the same way a name commencing with tri could mean triple strength.  Accordingly, Mr Stevens says, the trade marks create similar impressions, being a combination of a prefix indicating quantity or strength with the suffix cor.  Moreover the prefixes form a sequence and both end with the letter i which gives them a similar sound.  On these bases Mr Stevens believes the trade marks are deceptively similar.  He says consumers are likely to form the impression they indicate the same pharmaceutical, albeit at differing strengths, from the same trade source.

   [9] The Macquarie Dictionary gives the meaning of the prefix bi as ‘twice, doubly, two’ and the meaning of the prefix tri as ‘a word element meaning ‘three’.

5. The sort of confusion described by Mr Stevens is contextual confusion[10] and arises from 'traders adopting a certain word as a trade mark and constructing other trade marks for distinguishing characteristics of their goods by using such word as a basis and adding thereto prefixes of a qualifying nature'[11]. Here the trade marks do not have a word in common but rather the word element cor.  Mr Lockhart argues that contextual confusion will only occur when the material in common is a strong trade mark so that it retains its identity when combined with words of a qualifying nature[12].  He says cor is not a ‘strong’ element in either trade mark.  It is a commonly used suffix and its presence should be discounted.

   [10] John Fitton & Co Ltd's Appn (1949) 66 RPC 110 at 113

   [11] Kodak (A/asia) Pty Ltd's Appn (1936) 6 AOJP 1724

   [12] See Bose Corporation v QSC Audio Products Inc 57 IPR 577

6. At the date of application seventy trade marks ending in cor had been registered for class 5 goods.   As Mr Lockhart says, cor generally presents in those trade marks as an ordinary word suffix.  For informed consumers such as health care professionals, it possesses a descriptive tinge with respect to some pharmaceuticals[13].  But with bicor and tricor the comparison is between trade marks of two syllables where the first word element performs the role of the ‘qualifying prefix’[14].  bi- and tri- denote a number or quantity.  There are no intervening letters or syllables between cor and the qualifying prefix which would result in cor being perceived as an ordinary suffix.  On the contrary, it is the word element which is being qualified.  I am satisfied consumers will not only note the presence of cor, they will form an impression of each trade mark based upon it.  Furthermore, given the similarities in sound and meaning of bi and tri, it is likely that the recollection of one trade mark will bring to mind the other.   On that basis, I find there is real danger of confusion, that is, of consumers regarding each trade mark as indicating goods from the same trade source. 

   [13] Although, as noted earlier, cor is a registered trade mark for such goods.

   [14] supra

7. At present the applicant’s goods include pharmaceuticals which can be self-selected by consumers and those which are only available on prescription.  The applicant is prepared to limit its goods to those available on prescription but only if that will assist its case.  I find that it will not.  Even though the opponent has tendered evidence to show health care professionals can make prescribing/dispensing errors[15], I think it can be safely said that they are less likely to make errors than members of the general public.  However the basis for my finding that deception and/or confusion are likely in this case is not that bicor will be mistaken for tricor or vice versa.  It is that I consider there is real danger they will be taken to indicate goods from the same trade source.  It is an association that even health care professionals are likely to make if the pharmaceuticals being prescribed/dispensed are exactly the same.  That is not to say that such professionals will prescribe/dispense the wrong goods.  They will refer to the relevant pharmaceutical information resources to confirm the details of what is being prescribed/dispensed and thereby be disabused of any misapprehension.  Nevertheless, the threshold test to be applied in relation to section 44 is not whether deception and/or confusion do occur, but whether a reasonable number of persons will have sufficient cause to wonder[16] whether the goods in question come from the same source.  I am satisfied that, knowing of one product and hearing of the other, even health care professionals are likely to be confused initially as to the origin of the goods. 

   [15] Exhibit B to the Richardson declaration contains examples of confusion caused by similar pharmaceutical names as well as the Second National Report on Patient Safety: Safety and Quality Council, July 2002, published by the Australian Council for Safety and Quality in Health Care, which deals with medication errors in Australia.

   [16] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1965) 91 CLR 592 at 594

   Decision

8. I find that the section 44 ground of opposition has been made out and I therefore refuse to register trade mark application no 969567 subject to any appeal from my decision. 

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