Metagenics, Inc v QMM Industries Pty Ltd

[1999] ATMO 92

TRADE MARKS ACT 1995

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

Re:Opposition by METAGENICS, INC. to the registration of trade mark application number 727495 in the name of QMM INDUSTRIES PTY LTD for the word trade mark ENDURADE in Class 32.

Background
Application number 727495 was filed on 10 February 1997, in the name of QMM Industries Pty Ltd (the applicant).  The application was for the registration of the word trade mark ENDURADE and covered the statement of goods, "Mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, non-aerated mineral and flavoured drinks " in Class 32.

Subsequent to examination, the application for the trade mark was accepted and advertised as such in the Australian Official Journal of Trade Marks of 17 July 1997.  A notice of opposition to the trade mark’s registration was filed on 17 October 1997, by Metagenics, Inc. (the opponent).  The notice of opposition listed a number of grounds.  However, the matter which was relied upon by the opponent's attorney at the hearing was the allegation, under s.60, that the use of the trade mark would be likely to lead to deception and confusion because it is deceptively similar to the opponent's trade mark which had acquired a reputation in Australia before the priority date for registration of the present mark.

Accordingly, this ground is the subject of this decision and the reasons for it.

The opponent requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Canberra.  The opponent was represented on the telephone by Mr Wayne Willis of F. B. Rice & Co.  The applicant did not appear at the hearing, nor did it present any submissions for the Registrar's consideration.

The Evidence
The evidence in support comprised a declaration, dated 22 July 1998, by Alan Gee, the General Manager of the Health World Limited, an authorised user of the trade mark ENDURA owned by the opponent.  In his declaration, Mr Gee outlined the history of the adoption and use of the trade mark ENDURA, on behalf of the opponent, in relation to powdered drink products.  He further gave details of the wholesale value of goods sold under that mark, together with details and costs of its promotion.  Annexed to his declaration were exhibited samples of labels used on the opponent's goods, samples of the opponent's promotional materials, promotional leaflets, and samples of promotional booklets, all the foregoing featuring the ENDURA mark.

The applicants did not serve any evidence in answer in the matter.

Submissions
In relation to the opposition ground under s.60, Mr Willis said that the opponent's and applicant's trade marks were, at the least, deceptively similar to each other as they were both based upon the word ENDURANCE.  He said that, given the nature of the goods covered by both marks, then this deceptive similarity was enhanced.  This was because the applicant's ENDURADE mark was suggestive of a liquid version of the opponent's powdered ENDURA product.  Both sets of goods would have common users and these consumers would be caused to wonder whether those goods shared a common origin - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Mr Willis said that the evidence of authorised use and promotional activities related to the opponent's mark from 1992 to 1997 combined to demonstrate the necessary reputation in its mark which would lead to deception and confusion amongst a specialised market.

As I have already said, the applicant failed to make any submissions, in person or in writing, in rebuttal of the opposition.

Analysis
In considering my decision in the opposition matter, I will deal with the only ground - that under s.60 of the Act - which Mr Willis relied upon in the making of his submissions.

Section 60
This section reads:
Trade mark similar to trade mark that has acquired a reputation in Australia

60.  The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)  it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

The respective trade marks are obviously not substantially identical, a point conceded by Mr Willis at the hearing.  However, he did argue strongly that the marks were deceptively similar.  The tests for determining whether the latter is the case are conveniently laid out in such cases as Australian Woollen Mills Ltd v F. S. Walton & Co Ltd, supra.  Additionally, Windeyer J, in Shell Co of Australia v Esso Standard Oil (Australia) Ltd, (1961) 109 CLR 407 said, in relation to deceptive similarity at 414-415:

The marks are not now to be looked at side by side.  The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

The opponent's mark is the word ENDURA, while the applicant's mark is the word ENDURADE.  I think that "persons of ordinary intelligence and memory" would infer that these marks have the same derivation - ENDURANCE.  Additionally, the marks have a common set of letters, the same number of syllables, and an identical beginning - ENDURA.  Of relevance to the latter point are the words of Sargent LJ in the case of London Lubricants (1920) Ltd's Appl'n 42 RPC 264, where he said, "…the first syllable of a word is, as a rule, far the most important for the purpose of distinction." He found this way because of a generally perceived tendency for people using the English language, to slur the ends of words. Accordingly, I am of the opinion that the suffix -(A)DE in the applicant's mark does little to distinguish it from the word ENDURA. Therefore, I conclude that the respective marks are deceptively similar.

Having so found, it now remains to be determined whether the opponent's reputation in its trade marks was sufficient, as at the relevant date, so that deception or confusion would be caused if the presently applied for mark is used on the goods in the present specification.  In assessing that reputation, the relevant date to be considered is that of the filing of the opposed application 592 - here 10 February 1997 - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, supra.  A mere possibility of confusion is not enough.  There must be a real, tangible danger of its occurring.  It is accepted law that the risk of deception and confusion must extend to a substantial number of people likely to be concerned in the purchasing of the particular goods or services - Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300.

The opponent's trade mark is shown by its uncontested evidence to have been used on powdered sports and health drink products since February 1992 - five years before the present trade mark was filed on 10 February 1997.  I am also satisfied by that evidence that sales of products under the mark grew, albeit unevenly, from 1992 to 1997 and that these goods were promoted under the mark during that time, via seminars for healthcare professionals, print and radio advertising, event and personal sponsorships, and on point of sale material.

All of this is sufficient to convince me that the opponent had a significant reputation amongst a relatively small but discrete market.  Against this, there is no evidence before me of use of the latter mark by the applicant before - or after - the date of filing.  Notwithstanding this, and given the goods covered by the present application, I think that it can be inferred that the customers of both the parties here would fall into the same class of persons.

It is quite common, having regard to the Register and to my own experience, for trade marks in Class 32 to include the suffix -ADE.  Such registrations as LUCOZADE, GATORADE, ENERGADE, STAMINADE,  and POWERADE are examples of this.  I think that the relevant public is quite used to seeing such marks and concluding that they relate to some sort of sports or health drink.  Therefore, if a customer knew of the opponent's mark ENDURA, it would be quite reasonable for that person to assume that the word ENDURADE was merely a slight variation of that mark used to denote a liquid version of the opponent's goods.  Consequently, I think that it is highly likely that a person, on encountering the applicant's mark on goods, would be deceived and/or confused as to origin, given the undisputed reputation enjoyed by the opponent for its own deceptively similar trade mark.

I therefore find that the opponent is successful on this ground of its opposition.

Conclusion
Given the foregoing, I find that the opponent has been successful on the s.60 ground, because it had sufficient reputation, as at the date of application, in its own trade mark so that deception or confusion would ensue if the present mark was used by the applicants on the goods included in the specification.

As I have said, the applicants did not serve any evidence in answer, nor did they make any representations rebutting the opposition or the submissions made on behalf of the opponent.  Given this, and the opponent's success under s.60, I can see no reason to exercise the Registrar's discretion in favour of the applicants.  Accordingly, as a delegate of the Registrar, I find that the opponent is successful in its opposition as a whole and, subject to an appeal from this decision, I refuse to register the mark, the subject of this application.

Costs
In respect of costs, I can see no reason why costs should not follow the result.  I therefore award costs in the matter to the opponent, such costs to be, on application, taxed, certified and allowed by a trade marks officer appointed by the Registrar for that purpose.

Ian Forno
Hearing Officer

9 September 1999