Merial v Virbac

[2012] ATMO 83

TRADE MARKS ACT 1995

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

Re:Opposition by MERIAL to extension of protection of International Registration Designating Australia 1373284 (IR No. 1032318) (5) - FIPROLINE - filed in the name of VIRBAC.

Delegate:	Heath Wilson
Representation:	Opponent: Peter Hallett of Watermark, Patent & Trade Marks Attorneys Holder: Ken Hamilton of Spruson & Ferguson, Patent & Trade Marks Attorneys
Decision:	2012 ATMO 83 Reg 17A.34 opposition – grounds pursued under sections 44, 60, 43 and 42(b) of the Trade Marks Act 1995 – none established – IRDA protection extended to Australia – costs awarded against opponent.

Background

1. This an opposition under regulation 17A.34 of the Trade Marks Regulations 1995 (‘the Regulations’) to an application for the extension of protection of the following International Registration Designating Australia (‘IRDA’):

   IRDA No:               1373284 (International Registration No. 1032318)

   Filing Date:             15 April 2010

   Specification:          Class 5: Veterinary preparations, particularly an antiparasitic preparation for external use.

   Holder:                    Virbac

   Trade Mark:           FIPROLINE (‘the Trade Mark’)

2. The above IRDA was examined, and the acceptance was advertised in the Australian Official Journal of Trade Marks on 19 August 2010. On 18 November 2010, the Trade Mark was opposed by Merial (‘the Opponent’) under Regulation 17A.29, nominating all possible grounds of opposition.

3. Regulation 17A.31 sets out the grounds for opposing an IRDA. These grounds include sections 39 to 44 inclusive of the Trade Marks Act 1995 (‘the Act’), (by virtue of regulations 17A.31 (1) and 17A.28 (1)), and sections 58 to 62A of the Act (by virtue of regulation 17A.31 (2)).

   Evidence

4. The following evidence was filed and served by the parties:

   Evidence in Support

   ·    Statutory declaration of Anne-Sophie Chacornac (Legal Counsel of the Opponent) dated 7 February 2011 with annexures A to F.

   ·    Statutory declaration of Michael Fisher (Associate Director of Merial Australia Pty Ltd) dated 15 February 2011 with exhibits MF-1 to MF-7.

   Evidence in Answer

   ·    Statutory declaration of Catherine Marie Sedgley (employee of Spruson & Ferguson) dated 13 May 2011 with exhibits CS-1 to CS-5.

   Evidence in Reply

   ·    Statutory declaration of Anne-Sophie Chacornac dated September 2011.

   Grounds and Onus

5. The Opponent indicated via written submissions filed prior to the hearing that it was only pursuing the grounds of opposition under sections 42(b), 43, 44 and 60 of the Act. The Opponent bears the onus of establishing one or more of those grounds on the balance of probabilities.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26] and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10].

6. I heard the opposition to the IRDA on 13 July 2012 in Canberra as a delegate of the Registrar of Trade Marks. The Opponent was represented via teleconference by Peter Hallett of Watermark Patent & Trade Mark Attorneys. Ken Hamilton of Spruson & Ferguson, Patent and Trade Marks Attorneys appeared in person on behalf of the Holder.

7. I will primarily discuss the sections 44 and 60 being the grounds that were addressed in the most detail at the hearing. For the sake of completeness, I find that the remaining grounds in the notice of opposition have not been established on the evidence or submissions before me.

   Reasons

   Section 44

8. Subsection 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.

9. In support of the section 44 ground of opposition, Mr Hallett cited the following trade marks (owned by the Opponent) which he argued were deceptively similar to the Trade Mark:

TM No.	Trade Mark	Filing Date	Class / Statement of Goods
622226	FRONTLINE	9.2.94	Class 5: Insecticides, antiparasitic agents, anthelmintics all for veterinary purposes
909161	FRONTLINE PLUS	11.4.02	Class 5: Veterinary preparations, including insecticides and antiparasitic preparations
1354158	FRONTLINE ORIGINAL	1.4.10	Class 5: Veterinary preparations, including insecticides and antiparasitic preparations
1354159	FRONTLINE REGULAR	1.4.10	Class 5: Veterinary preparations, including insecticides and antiparasitic preparations

1. The Opponent’s trade marks all have earlier priority dates than the Trade Mark, and the goods of the Trade Mark and of the Opponent’s trade marks are the same or of the same description. The Opponent conceded in the course of its submissions that the respective trade marks were not substantially identical on a side-by-side comparison. I agree. Consequently, in order for the ground of opposition under section 44 to be successful, the Opponent must establish that its trade marks comprising or consisting of the element FRONTLINE are deceptively similar to FIPROLINE.

2. Section 10 of the Act defines a deceptively similar trade mark as one that so nearly resembles the other trade mark that it is likely to deceive or cause confusion. In Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[2] Dixon and McTiernan JJ explained how deceptive similarity is determined:

   [T]he marks ought not … 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 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.

   [2] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658).

3. The trade marks FIPROLINE and FRONTLINE both begin with the letter ‘F’ and end with the suffix ‘-line’. That is where the similarities end and I find that the trade marks are visually different overall. An aural comparison further differentiates the trade marks, as they sound completely different and the additional syllable present in the FIPROLINE trade mark is readily apparent. Moreover, as was said by Sargant LJ of the UK Court of Appeal in London Lubricants (1920) Ltd’s Appn[3]:

   [the] tendency of persons using the English language to slur the termination of words…has the effect necessarily that the beginning of words is accentuated in comparison, and… the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

   [3] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 at 279 (CA UK).

4. Even if the trade marks were visually or phonetically similar, I also note that FIPROLINE is an invented word with no obvious meaning, as opposed to the Opponent’s trade mark which is an established word in the English language with a commonly understood meaning. In addition, the Holder’s evidence suggests that the suffix ‘-line’ is commonly used in the veterinary industry.[4]  I find it unlikely that consumers of these goods would be deceived or confused as to any relevant connection between the Holder’s goods and those sold under any of the trade marks owned by the Opponent. In particular, I do not agree with Mr Hallett’s submissions that Australian consumers would view the Holder’s FIPROLINE branded products as originating from the Opponent or as being an extension of the FRONTLINE brand with a higher concentration of one of the active ingredients, namely fipronil. Deception or confusion of this sort would be unlikely to occur in the Australian marketplace.   

   [4] Declaration of Catherine Sedgley (exhibits CS - 3 & 5).

5. In summary, I find that FIPROLINE and FRONTLINE (with or without the additional words PLUS, ORIGINAL or REGULAR) are not deceptively similar trade marks. The likelihood of deception or confusion between the Trade Mark and the Opponent’s trade marks is not (in the words of Kitto J[5]) ‘real and tangible’ and I find that the ground of opposition under section 44 is not established.

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 per Kitto J at 595.

   Section 60

6. Section 60 of the Act provides:

   Trade 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.

7. To establish the section 60 ground of opposition, an opponent must firstly demonstrate that an earlier trade mark had a reputation at the priority date (in this case, 15 April 2010) amongst a significant number of persons[6] within Australia. The second requirement is whether use of the opposed trade mark would be likely to deceive or cause confusion as a result of that reputation. In the present opposition the Opponent claims its trade mark FRONTLINE has the requisite reputation as at the priority date, whether through use alone or in combination with the (relatively non-distinctive) suffix ‘PLUS’.

   [6] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302; 106 ALR 465; (1992) 23 IPR 193.

8. The evidence indicates that the trade mark FRONTLINE has been used in Australia since 1996 in relation to veterinary preparations, specifically anti-parasitic treatments for pets. Apart from global sales figures and international trade mark registrations, the most relevant evidence of the reputation of the FRONTLINE trade mark is contained in the declaration of Michael Fisher. That declaration provides evidence of marketing campaigns, partnership programs and exhibits samples of advertising and invoices relating to various promotions of the trade mark FRONTLINE before the priority date. The sales and expenditure figures from 2005 onwards in relation to the FRONTLINE trade marks are impressive. Mr Hamilton pointed out that the evidentiary material predominantly demonstrates use of ‘FRONTLINE PLUS’ in the advertisements. However, as the word ‘PLUS’ is a term with a low level of inherent adaptation to distinguish these goods, I accept that any reputation enjoyed by the FRONTLINE PLUS trade mark would effectively accrue to the trade mark FRONTLINE solus.

9. The Opponent’s FRONTLINE PLUS branded product contains two active ingredients being fipronil and (s)-methoprene. However, the names of these ingredients are not actively marketed by the Opponent and are unlikely to be known by consumers other than veterinarians. While the Opponent’s and the Holder’s products are both anti-parasitic preparations for pets, the dissimilarity between the trade marks would be especially evident to those who specialise in the medical treatment of animals.

10. In relation to the first Chacornac declaration, registration of the trade mark FRONTLINE in other countries does not go any way to establishing the reputation of that trade mark in Australia. Neither does the mere existence of Australian trade mark registrations. Annexures D to F of the Chacornac declaration are copies of a decision of the Court of Appeal in Argentina, a decision of the Trademark Office in Costa Rica and a judgement of the United States Patent and Trade Mark Office (‘USPTO’). The first two decisions are in Spanish and no translation of the decisions has been provided. While Ms Charcornac states that the trade mark FIPROLINE filed in Argentina was ‘cancelled’[7] because of the Opponent’s FRONTLINE trade mark, and that the Opponent successfully opposed the Costa Rican application, I am unable to test the veracity of those statements or the particular reasoning for the decisions. The USPTO decision was a judgment entered against the applicant because the trade mark applications were abandoned. In any event, these judgments from foreign jurisdictions are irrelevant to the assessment of the Australian reputation in the Opponent’s trade mark. There is little guidance here.      

    [7] Ms Chacornac does not explain what ‘cancelled’ means under the Trade Mark legislation of Argentina.  

11. However, I am satisfied based on the evidence of actual use in Australia that the Opponent has established a reputation in this country in relation to FRONTLINE PLUS for veterinary preparations. The further question is whether that reputation is such that the Holder’s use of FIPROLINE would be likely to deceive or cause confusion in the Australian marketplace.

    ‘Likely to deceive or cause confusion’

12. As addressed earlier, the reputation of the FRONTLINE trade marks resides in veterinary preparations, these also being the specific goods covered by the Trade Mark. While it is true that the parties are operating in a relatively specialized field, the nature of the reputation of the FRONTLINE trade mark(s) is paramount and it is worth reiterating my finding that the trade marks FRONTLINE and FIPROLINE are not deceptively similar.

13. While the respective trade marks are not required to be deceptively similar for the ground of opposition under section 60 to be established, it remains an important consideration and in Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd[8] Hearing Officer Lyons addressed this issue stating:

    Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller…

    [8] Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [2010] ATMO 5; (2010) 85 IPR 647 (at 39).

14. Mr Hallett argued that FIPROLINE was a portmanteau word being the combination of the prefix ‘FIPRO’ (a reference to the active ingredient fipronil) and the suffix ‘-line’ (as in FRONTLINE). He placed particular emphasis on the reasoning of Hearing Officer Thompson in Guccio Gucci SpA v Qui Chen[9].  The Hearing Officer found (emphasis added):

    In the context of the confusing similarity of the opponent’s GG trade mark to the applicant’s GC trade mark I am inclined to accept Mr Allen’s submissions (that the opposed trade mark GUSSACI is a portmanteau formed with reference to the well known trade marks GUCCI and VERSACE) as having both substance and force. It would appear, prima facie, that the each of the opposed trade marks is an ‘homage’ to the well known trade marks of other fashion designers, sufficient to raise the ‘rule’ referred to by Dixon and McTiernan JJ in Woolen Mills (sic), above.

    There is no evidence or submission filed by the applicant which goes to counter such a conclusion.

    [9] Guccio Gucci SpA v Qui Chen [2011] ATMO 126 (at paragraphs 40 – 41).

15. The wording of section 60 makes it clear that the likelihood of deception or confusion must arise because of the reputation of another trade mark (or trade marks). While it is true that the delegate in the above decision found GUSSACI to be a portmanteau word made up of the trade marks GUCCI and VERSACE, he only did so on the basis that the opponent had provided material to establish that both were well-known trade marks with a significant reputation. In the present opposition, however, the position is quite different.

16. Here the Trade Mark is not made up of two well-known trade marks. While no explanation has been provided regarding the origin of the Trade Mark, I am satisfied that it is based on an allusion to the active ingredient fipronil and the suffix ‘-line’. I am not, however, satisfied that the inclusion of the suffix ‘-line’ is likely to be viewed by the average consumer as a reference to the Opponent’s FRONTLINE trade marks. Further, I am not on balance satisfied that there is a likelihood of deception of confusion as a result of a reputation in the trade mark(s) identified by the Opponent. Section 60 of the Act has not been established.

    Section 43

17. Section 43 of the Act provides:

    Trade mark likely to deceive or cause confusion

    An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

18. For section 43, the likelihood of deception or confusion must be as a result of some connotation inherent in the opposed trade mark and not dependent on external considerations such as its similarity to another trade mark.[10] The scope of section 43 was further clarified by Justice Spender in Winton Shire Council v Lomas[11]:

    Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s60.

    [10] Big Country Developments Pty Ltd v TGI Friday’s Inc [2000] FCA 720; 48 IPR 513 (at [43]).

    [11] Winton Shire Council and Anor v Lomas (2002) 56 IPR 72 (at 19).

19. As previously outlined, I accept Mr Hallett’s submission that the Trade Mark is derived from the active ingredient fipronil present in both the Holder’s and the Opponent’s products. However, I have only formed this view by comparing the Trade Mark with the name of the active ingredient and noting the similarities between them. Mr Hallett argued that the use of the Trade Mark would be likely to deceive or cause confusion if it was used on goods that did not contain fipronil. He submitted that the following condition of registration should therefore be required:

    It is a condition of registration that the trade mark will be used only on goods containing the insecticide fipronil.

20. The facts before me are different from those present in decisions by the Registrar where a similar endorsement has been added as the result of an obvious derivation of an International Non-Proprietary Name (INN).[12] There is no suggestion or evidence in the current matter that the name fipronil is an INN or is comprised of an INN stem.

    [12] For example, Aventis Pharma SA v Alphapharm Pty Ltd [2005] ATMO 15 (ROXIMYCIN and ROXITHROMYCIN); Eremad Pty Ltd v Sanofi-Aventis [2009] ATMO 97 (2009) 84 IPR 647; [2010] AIPC 92-367 (OXALATIN and OXALIPLATIN).

21. A finding under section 43 requires an assessment of the nature of the connotation and of the likelihood of deception of confusion resulting from that connotation. It is incumbent on the Opponent to establish that the Trade mark contains a connotation that the relevantly branded goods include fipronil as an ingredient and that the average consumer of the product would recognise this and thus be deceived or confused as a result of the use of the Trade Mark for veterinary preparations. There must be a connection in the minds of the buying public with the ingredient and the average consumer would have to expect a veterinary product bearing the FIPROLINE trade mark to contain fipronil. If that knowledge is absent or has not been established by the Opponent, then I cannot be satisfied that deception or confusion would occur.

1. Neither the Chacornac nor the Fisher declaration contains evidence of which consumers (if any) would be aware what fipronil was, or that veterinary preparations may contain it. It has not been established on the balance of probabilities that a consumer who did have that knowledge would be deceived or confused if the Holder’s FIPROLINE branded product did not in fact contain that ingredient.

2. While there may arguably be a connotation within the Trade Mark amongst a small number of appropriately educated people, I find that it is not a connotation that is likely to deceive or cause confusion amongst a significant number of relevant consumers. As a side note, the Holder confirms that its goods of interest do in fact contain fipronil as an active ingredient[13] and the Opponent’s suggested endorsement would therefore have little practical value. Regardless of that fact, I am not satisfied that a connotation likely to deceive or cause confusion has been established and the section 43 ground of opposition is accordingly not established.

   [13] Declaration of Catherine Sedgley (paragraph 8).

   Section 42(b)

3. Section 42(b) of the Act provides:

   Trade mark use contrary to law

   An application for the registration of a trade mark must be rejected if:

       (b)  its use would be contrary to law.

4. Under section 42(b) the Registrar must be satisfied that the use of the opposed trade mark “would”, not “could” be contrary to law[14]. Mr Hallett argued that if the Trade Mark were used in relation to veterinary products that do not contain fipronil, such use would constitute misleading and deceptive conduct, or conduct that is likely to mislead or deceive and therefore be contrary to the Australian Consumer Law[15]. However, the Competition and Consumer Act 2010 did not come into force until 1 January 2011, which is some time after the priority date of the Trade Mark. I will nevertheless consider Mr Hallett’s submissions with reference to the equivalent section of the now repealed Trade Practices Act 1974 (‘the TPA’), which provides:

   Section 52. (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive.

   [14]  Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 at 32 [28].

   [15] Competition and Consumer Act 2010 (Cth), Schedule 2: The Australian Consumer Law Chapter 2, Section 18.

5. Establishing that use of a trade mark is likely to “mislead or deceive” pursuant to section 52 of the TPA is generally more onerous than establishing the likelihood of mere “confusion” as required by section 43 of the Act. With reference to the section 43 opposition ground, I have already found that deception or confusion because of a connotation within the Trade mark is unlikely. It follows that I am not satisfied that there is a “real or not remote chance or possibility”[16] of the Holder’s use of the Trade Mark being misleading or deceptive in terms of section 52 of the TPA.

   [16] Equity Access Pty Limited v Westpac Banking Corporation [1989] FCA 506; (1989) 16 IPR 431.

6. The ground of opposition under section 42(b) of the Act is not established.

   Decision

7. Regulation 17A.34 states that: 

   Decision on opposition

   (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

   (2)The Registrar must tell the International Bureau of his or her decision.

8. The Opponent has not established a ground of opposition under the Act. I therefore direct that under the provisions of regulation 17A.34 (1)(b) protection of IRDA no. 1373284 (IR No. 1032318) be extended to Australia with respect to all the goods listed in the IRDA one month from the date of this decision.

9. If the Registrar is served with a notice of appeal before protection is extended, I direct that protection shall not occur until the appeal is withdrawn or discontinued. Otherwise I direct that extension of protection of the IRDA be subject to any orders of the court.

   Costs

10. The Holder has been successful in this opposition matter. I award costs against the Opponent to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995.

    Heath Wilson
    Hearing Officer
    Trade Marks Hearings
    25 September 2012