Merck KGaA v U.S. Neutraceuticals LLC

[2005] ATMO 6

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 938554(5) - ZANTHIN - filed in the name of U.S. Nutraceuticals, LLC.

Delegate:	Jock McDonagh
Representation:	Opponent: Trevor Stevens of Davies Collison Cave, Patent and Trade Mark Attorneys Applicant: Peter Hallett of Griffith Hack, Patent and Trade Mark Attorneys
Decision:	S52 opposition - grounds under section 44 not established -trade mark may proceed to registration. Costs awarded against the opponent.

Background

1. The applicant, U.S. Nutraceuticals, LLC, filed trade mark application for the following trade mark:

Application Number:	938554
Priority date:	19 December 2002
Goods:	Class 5: Nutritional supplements, excluding anti-ulcer and gastrointestinal products
Trade Mark:	ZANTHIN
Advertised:	29 May 2003

1. The opponent, Merck KGaA, filed notice of opposition to the trade mark's registration on 28 July 2003.  That notice listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act"). However, prior to the hearing, the attorneys for the opponent advised that the opponent would rely solely on section 44 of the Act at the hearing.

2. The opponent duly served and filed evidence in support. The applicant served and filed evidence in answer, and the opponent responded with evidence in reply.

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Canberra on 25 November 2004. Mr Peter Hallett of Griffiths Hack, Patent and Trade Mark Attorneys of Melbourne, represented the opponent via video link. Mr Trevor Stevens of Davies Collison Cave, Patent and Trade Mark Attorneys of Sydney, represented the applicant.

   Evidence

4. The evidence consists of the following declarations:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Robert Richardson	11.02.2004	A & B	Richardson 1
Evidence in Answer
David A. Evans	14.07.2004	Evans
Evidence in Reply
Robert Richardson	27.09.2004	RR-1 & RR-2	Richardson 2

1. The Richardson 1 declaration is made by the business development director of the Australian subsidiary of the opponent.  He states that the opponent is the owner of the trade mark zactin, which is used in relation to applications in the treatment of depressive disorders and obsessive compulsive disorders. zactin is registered in Australia under registration number 659362.

2. Exhibit A to Richardson 1 is a copy of an article entitled The Effectiveness of Fluotoxetine  Therapy in Bulimia Nervosa Regardless of Comorbid Depression by a Dr D Goldstein.  Mr Richardson states that Depression is often treated these days with fluotoxetine hydrochloride although there are some preference for use of so-called natural remedies, which includes herbs and nutritional supplements.

3. Attached as Exhibit B to Richardson 1 are examples of recent reports and published articles relating to the risk of error in relation to similar sounding trade names and pharmaceutical preparations.

4. The Evans declaration is made by the president of the applicant.  He states that the applicant uses its mark in connection with nutritional supplements, and in particular nutritional supplements having antioxidant properties.  The applicant has not sold its goods under the zanthin mark in Australia.  He further offers the opinion that the opponent's zactin product is only available in Australia by prescription; whereas nutritional supplements are typically sold through health food stores and supermarkets.  Mr Evans was of the opinion that the prospect of confusion between the marks was remote given the obvious differences between the marks and the quite different nature of the respective products. 

5. In reply, Mr Richardson made comments in rebuttal on the basis of his own personal knowledge.  These included a statement that in Australia, nutritional supplements and vitamins are routinely sold alongside, or in close proximity to, prescription medications in pharmacies; and increasing numbers of supermarkets selling nutritional supplements also incorporate pharmacies.  He reiterated the potential confusion between the names, and gave a number of specific examples where it could arise.

   The ground of Opposition: Section 44 – Deceptive Similarity

6. The only ground actively pursued by the opponent at the hearing was that under section 44 of the Act. The relevant parts of section 44 read:

   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.

7. Therefore, the issues that I need to consider are:

   (a) the priority dates of the competing marks, and whether

   (b) the goods are similar goods, and

   (c) the trade marks are substantially identical or deceptively similar.

8. The trade mark cited by the opponent is 659362 zactin in class 5 for pharmaceutical preparations for the treatment of major depressive disorders, with a priority date of 26 April 1995.  The priority date is earlier than that of the applicant.

9. There is no real dispute between the parties as to the tests to be applied to determine if the goods are similar goods and whether the trade marks are substantially identical or deceptively similar.  There was considerable dispute in respect of applying the facts to those tests.

10. Mr Stevens, for the opponent, submitted that the High Court has cited with approval the decision of the British Assistant Comptroller in John Crowther & Sons (Milnsbridge) Ltd's Appn (1948) 65 RPC 369 at 372, which adopts the factors to be taken into account as classified in Jellinek's Appn (1946) 63 RPC 59. These are classified under three heads: the nature of the goods, the uses thereof, and the trade channels through which they bought and sold.

11. Mr Stevens also drew my attention to the decision in Sanofi-Synthelabo v Lohmann Animal Health GmbH [ATMO] 68/2003, 3 November 2003, at paragraph 21, where Hearing Officer Skivington provided the following definitions:

    The 13^th Edition of Hawley's Condensed Chemical Dictionary defines the word pharmaceutical as follows:

    Pharmaceutical. A broad term that includes not only all types of drugs and medicinal and curative products but also ancillary products such as tonics, dietary supplements, vitamins, deodorants, and the like.

    As noted above, The Random House Dictionary of the English Language, defines a drug as, 'A chemical substance administered to a person or animal to prevent or cure disease or otherwise enhance physical or mental welfare'.  This definition accords with the definition in the Macquarie Dictionary which reads, 'A chemical substance given with the intention of preventing or curing disease or otherwise enhancing the physical or mental welfare of humans or animals. 

12. Mr Hallett, for the applicant, sought to narrow the definition for pharmaceutical preparations to many drugs and medicines which have therapeutic effect and to exclude nutritional supplements, which he likened to being more akin to food than to drugs.

13. Section 14 of the Act provides a definition for similar goods and similar services and, so far as it is relevant to this decision, it reads:

    For the purposes of this Act, goods are similar to other goods:

    (a) if they are the same as the other goods; or

    (b) if they are of the same description as that of the other goods

14. Taking into account the opponent's evidence and the above definitions, clearly nutritional supplements are a subset of the broader term pharmaceuticals and thus the applicant's goods are the same kind of goods as the opponent's.

15. Mr Stevens submitted that the opponent concedes that the respective trade marks are not substantially identical.  In relation to deceptive similarity he referred to the familiar passage in  Australian Woollen Mills Ltd. v. F.S. Walton & Co. Ltd (1937) 58 C.L.R. 641 at 658, which sets out the basic criteria to be assessed in deciding whether trade marks are deceptively similar.

16. Mr Stevens pointed to the similarity in structure of the competing marks and to the phonetic similarities, and submitted that the overall similarities between the words are striking.

17. Not surprisingly, Mr Hallett pointed to the phonetic and visual differences between the marks.

18. I preferred Mr Hallett’s characterization of the aural and visual differences.  In particular the ‘t’ in the one being softened to a ‘th’ in the other, the opening syllable being a different sound: London Lubricants (1920) Ltd's Application, (1925) 42 RPC 264 (CASTROL/TRIPCASTROID), hence are likely to be remembered and recalled in different ways and thus no prospect of imperfect recollection: Aristoc Ltd v Rysta Ltd [1945] AC 68. The opposed trade mark is also an obvious phonetic equivalent of the known word XANTHIN (that part of the yellow colouring matter in yellow flowers which is insoluble). Thus, although the trade marks each have two syllables, both start with the letter ‘Z’ and end with the letters ‘IN’, the differences are such that, on the balance of probabilities I am not satisfied that there would be a real tangible danger of deception or confusion. In my opinion, the phonetic and visual differences between the marks are sufficient such that the ordinary customer is likely to distinguish between them and would not be likely to wonder whether goods came from the same source.

19. Therefore, I dismiss this ground opposition.

    Decision

20. The opponent has not established its grounds of opposition. Therefore, the applicant's trade mark may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Costs

21. The applicant sought its costs.  The general rule in awarding costs is that costs are usually awarded against the unsuccessful party, unless there is some conduct on the part of the successful party that would justify a departure from the general rule.

22. I see no reason why costs should not follow the general rule. I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995)

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    25 February 2005