Merck KGaA v Sicor Inc

[2006] ATMO 26

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 916123(5),(40) SICOR, proceeding in the name of Sicor, Inc.

Delegate:

Ian Thompson

Representation:

Opponent
Kim Edwards of Davies Collison Cave.
Applicant
Written submissions from Deborah Jackson of Spruson & Ferguson.

Decision:

1. section 44 opposition not established

2.  costs ordered against opponent

Background

1. Sicor, Inc ('the applicant') of Irvine, California, has filed an application to register a trade mark, current details of which are:

App No:  916123
Filing Date:  12 June 2002
Acceptance Advert:               17 July 2003

Goods/Services:  Class: 5   Pharmaceutical preparations and substances for the diagnosis and treatment of cardiovascular diseases, cerebrovascular diseases, seizure disorders, neurological diseases and disorders, diabetes and other metabolic disorders, inflammatory diseases, autoimmune diseases, viral diseases, cancer, shock and central nervous system trauma and peripheral vascular diseases

Class: 40Custom manufacture of pharmaceuticals for others

Trade mark:  SICOR

1. On 14 October 2003 Merck KGaA ('the opponent'), filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.  The Notice cites several grounds under the Trade Marks Act 1995 (‘the Act’) and that listed in the information panel, at the head of this decision, was pursued at the hearing.  For the sake of completeness, I now find that the opponent has not established those remaining grounds listed in the Notice.

2. Evidence in support, evidence in answer and evidence in reply were duly served and filed according the Act and regulations thereto.

3. The hearing was held before me, as a delegate of the Registrar of Trade Marks, in Sydney, on 19 October 2006.  Deborah Jackson of Spruson & Ferguson filed written submissions on behalf of the applicant and Ms Kim Edwards of Davies Collision Cave represented the opponent.

Evidence

1. I will not detail the evidence in this matter as the grounds pursued at the hearing are under section 44 and it is not alleged that the opponent’s trade mark is notorious[1].

   [1] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539

2. Relevantly, the opponent is the registered owner of an Australian trade mark registration, details of which appear below:

Reg Number  842916
Priority date:  18 July 2000

Goods/Services:  Class: 5  Pharmaceuticals for human use

Trade Mark:  BICOR

Reasons

Section 44

1. I agree with the parties that the scope and priority dates of the opponent’s registrations effectively limits considerations here to issues concerning the deceptive similarity of the trade marks.

2. Section 10 defines deceptive similarity in the following terms:

10  Definition 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.

1. The assessment of trade marks for deceptive similarity explained by the Courts in the following way in Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd [2004] FCAFC 201 at paragraph 16:

   The principles to be applied in a trade mark case in a determination of deceptive similarity are not in dispute in this appeal and were not in dispute before the primary judge. The marks are not to be compared side by side, as the question is one of impression based on recollection of the mark (Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 (‘Shell’) at 415). The method of comparison was set out by Parker J in Re Application by Pianotist Co Ltd (1906) 23 RPC 774 (‘Pianotist’) at 777:

   ‘You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.’

   Dixon and McTiernan JJ also discussed this comparative method in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 (‘Woollen Mills’) at 658:

   ‘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. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.’

   Further, the marks must be considered in their entirety:

   ‘One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes’ (Clark v Sharp (1898) 15 RPC 141 at 146).

   A judgment about deceptive similarity is generally a matter of first impression, rather than meticulous comparison. Allowance must be made for imperfect recollection (Aristoc Ltd v Rysta Ltd (1944) 1B IPR 467 at 472). This applies as much to a visual comparison as it does when the sounds of two words are being compared. While it is not necessary to prove actual deception, a mere possibility of confusion is not sufficient (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (‘Southern Cross’)); there must be a real, tangible danger of confusion occurring (Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365).

   It follows that, when comparing the two marks for the purpose of considering whether they are deceptively similar, the relevant consideration is the likely effect or impression produced on and retained by customers and potential customers.

1. I do not need here to discuss the nature of pharmaceuticals and the fact that a great many of them are available only on prescription.  The fact is that there are included in the specifications of goods pharmaceuticals for which no prescription is necessary, for example aspirin, (which is used as an anticoagulant in cardiovascular disorders and is thus included in both specifications of goods) and I must consider all of the uses that the parties might make of their trade marks: Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8.

2. It is a fact that the public, medical practitioners and dispensers are cautious when prescribing and dispensing pharmaceuticals and prescriptions are now very often either printed by computer or filed directly onto the dispensing chemist’s computer by the doctor using Blackberry technology.

3. I consider, on balance, that my impression of the trade marks in question is that they are not deceptively similar. 

4. On the one hand the two words have no shared denotation or connotation – both are, to all intents, ‘invented’ words and are thus abstract constructs – no meaning can attach to them until they are used in relation to the particular goods of either party and it is then only as signifying those particular goods of their respective owners.  This is, of course, no aid in distinguishing between the trade marks considered in relation to the goods as registered or applied for.

5. However, on the other hand, the words start with different alphabetical letters – and are likely thus not only to be stressed differently, but also remembered and recalled in different ways:  London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264.

6. Further, if a person were to attempt to ascribe meaning to the trade marks, the ‘prefix’ in the opponent’s trade mark may be ascribed meaning whereas that in the applicant’s cannot.  The prefix ‘bi’ is a combining form that indicates the numeral two.

7. The issue is one that is finely balanced but weighs slightly in the applicant’s favour.

8. The opponent has not established its opposition in terms of section 44.

Decision

1. Section 55 of the Act provides:

   55. 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.

2. Subject to the opponent notifying the Registrar of an appeal against my decision within one month of the date of this decision, the application may proceed to registration.  If such appeal is notified and not withdrawn, the application should be dealt with as the Court directs.

Costs

1. Having been successful, the applicant is entitled to its costs, at the official scale, which I order against the opponent.

Ian Thompson
Hearing Officer
Trade Marks Hearings
28 March 2006