Multi Access Limited v Guanzhou Pharmaceutical Holdings Limited

[2018] ATMO 41

TRADE MARKS ACT 1995

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

Re:Opposition by Multi Access Limited to extension of protection to Australia of International Registration Designating Australia 1771629 (5, 30, 32) - WONGLO (International Registration No 1297792) in the name of Guanzhou Pharmaceutical Holdings Limited.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: David Larish of Counsel instructed by Christine Ecob and Joel Parsons of Johnson Winter & Slattery.

Holder: John O’Mahoney of Collison & Co.

Decision:

2018 ATMO 41

Opposition under regulation 17A.29 of the Trade Marks Regulations 1995: section 44 of the Trade Marks Act 1995 – ‘similar goods’ consideration of ‘substantial identity’ and ‘deceptive similarity’ – extension of protection to the IRDA to Australia refused.

Background

1. Guanzhou Pharmaceutical Holdings Limited (‘the Holder’) has applied, under the Trade Marks Act 1995 (‘the Act’) and the Trade Marks Regulations 1995 (‘the Regulations’) for extension of protection in Australia for the International Registration Designating Australia (‘IRDA’) details of which appear below:

IRDA No:  1771629

IR No:  1297792

Priority Date:  9 November 2015

Goods/Services:              Class 5: Medicines for human purposes; medicinal drinks; drugs for medical purposes; syrups for pharmaceutical purposes; disinfectants; chemical conductors for electrocardiograph electrodes; cultures of microorganisms for medical and veterinary use; candy, medicated; dietetic foods adapted for medical purposes; candy for medical purposes; food for babies; chewing gum for medical purposes; depuratives; medicines for veterinary purposes; preparations for destroying noxious animals; surgical dressings; teeth filling material; jelly for food made with a variety of Chinese medicinal materials, called Gui Ling Gao in Chinese; pollen cream for health

Class 30: Chicory [coffee substitute]; candy; chewing gum; longan syrup (Gui Yuan Gao) for food; syrup for food made with pears, tuckahoe, and fritillary (Ling Bei Li Gao); loquat leaf syrup (Pi Pa Gao) for food; honey; almond paste; bread; gruel; cereal preparations; starch for food; ice cream; milky tea, non-milk-based

Class 32: Beer; non-alcoholic beverages; soya-based beverages, other than milk substitutes; beverages based on beans; waters [beverages]; soda water; cola; fruit juices; beverages based on plants; syrups for beverages; preparations for making beverages

Trade Mark:  

(‘the Trade Mark’)

Endorsement:                  Mark Description: The mark consists of a stylized wording "WONGLO”.[1]

[1] I note here both that the degree of the stylisation in the Trade Mark is so slight that it is not a factor which contributes to my decision and that the slight clipping of the upper portions of the letters G and O within the Trade Mark appears to be an artefact associated with the representation of the Trade Mark that was filed by the Holder.

1. The Trade Mark was examined as required by regulation 17A.12 and advertised as accepted for possible protection on 7 July 2016 in the Australian Official Journal of Trade Marks.

2. On 6 September 2016 Multi Access Limited (‘the Opponent’) filed a Notice of Intention to Oppose.

3. On 6 October 2016 the Opponent filed its Statement of Grounds and Particulars which includes the ground under section 44 of the Act under which I will decide this matter. The Statement was assessed as adequate and taken as filed on 13 October 2016.

4. On 15 November 2016 the Holder filed a Notice of Intention to Defend.

5. Thereafter, the parties have filed evidence to support their respective positions – I will further discuss this below.

6. Both parties were informed of their right to be heard or to make written submissions: both parties elected to be heard and supplemented their oral submissions with written ones.  At the hearing of the matter in Canberra on 8 March 2018 Opponent was represented by David Larish of Counsel instructed by Christine Ecob and Joel Parsons of Johnson Winter & Slattery who attended by video link.  The Holder was represented by John O’Mahoney, trade mark attorney, of Collison & Co who attended in person.

Evidence

1. The evidence in this matter comprises the following declarations:

   Evidence in Support

   Agnes Wong Kin Yee, a director of Wong Lo Kat (Enterprises) Limited, made on 20 February 2017, with exhibits AW-1 and AW-2;

   Chan Hang To, a director of the Opponent, made on 20 February 2017, with exhibit CH-1;

   Evidence in Answer

   John O’Mahony, trade mark attorney, made on 24 May 2017;

   Evidence in Reply

   Agnes Wong Kin Yee, a director of Wong Lo Kat (Enterprises) Limited, made on 28 July 2017, with exhibits AW-4 to AW-7.[2]

   [2] There is no exhibit AW-3.

2. Insofar as it is relevant to this decision, what I draw from the evidence is that the parties both make various products which incorporate tea, processed tea, and tea extracts; I further infer that this matter is but one of several disputes involving the parties in various jurisdictions and that the Trade Mark has not been used in Australia.

3. The evidence brings to the Registrar’s attention the Opponent’s trade mark registrations in Australia the most relevant of which is that appearing below:

Registration No:              1397869

Date:       3 December 2010

Goods:  Class 5: Chinese medicine and herbs

Class 30: Tea- or herbal tea-based food and beverages, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery; ices; honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice

Class 32: Beverages; preparations for making beverages

Class 33: Alcoholic beverages (except beers)

(‘the Registered Goods’)

Trade Mark:  WONG LO KAT

(‘the Registration’)

Endorsements:                Convention priority claimed: 3 June 2010, European Community, No. 009151408 in respect of ALCOHOLIC BEVERAGES (EXCEPT BEERS) in class 33.

The applicant has advised that a translation of the Mandarin words LO KAT appearing in the trade mark is OLD LUCKY.

Onus and Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[3]

   [3] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]- [133].

2. The relevant date the ground under section 44 must be considered at is the filing date of the opposed application which here is the same as the priority date – 9 November 2015.

Section 44

1. Section 44 of the Act relevantly provides:

   44Identical 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.

   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.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

2. To found its ground under subsection 44(1) an opponent must establish each of the following in relation to a registered or pending trade mark owned by a person other than the applicant[4]:

   1.That it has a priority date earlier than that of the opposed application; and

   2.It is registered in respect of similar goods or closely related services as those of the opposed application; and

3.The trade marks concerned are substantially identical or deceptively similar.

(Respectively, the ‘first’, ‘second’ and ‘third requirements’)

[4] Here the applicant is ‘the Holder’.

1. The Registration is registered in the name of the Opponent and is thus owned by a person other than the Holder.

Priority Date

1. The priority date for the majority of the goods of the Registration is 3 June 2010 – the first requirement is thus met.

Similar Goods

1. My understanding of the submissions of the parties is that the goods under consideration here are conceded to be similar.  Moreover I note that, within their respective specifications, the goods of immediate interest to the parties are in fact identical.  The second requirement is thus satisfied.

Substantially identical or Deceptively Similar Trade Marks

1. Speaking of the expression ‘substantially identical’, in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[5] (‘Shell’) Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …

   [5] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

2. The above test has more recently been the subject of further explanation.  In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[6] after referring to the test in Shell, above, the Court continued:

   Adopting the language in Accor at [206] the word “Insight” (and, to a lesser extent perhaps, the eye device) are the “dominant cognitive cues” and in both marks these are substantially identical. There is no doubt in our view that the Full Court in Accor in using the phrase “dominant cognitive cues” was making analogical reference to the “essential features” of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical.

   We do not accept IR’s submission that ICI was positing a new and unprincipled test for determining substantial identity. The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark

   [6] [2017] FCAFC 83 at [51]

3. The comparison here is between the trade marks WONGLO and WONG LO KAT.

4. There is no evidence before the Registrar that the element KAT in the Registration is in any way descriptive or otherwise lacks inherent adaptation to distinguish the goods either of the Registration or of the Trade Mark.  The element KAT is therefore an essential feature, or a dominant cognitive cue, within the Registration and cannot be to any extent discounted in the comparison.

5. It follows that the trade marks under comparison are not substantially identical.

6. In Shell[7] Windeyer J said of ‘deceptive similarity’:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "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".

   [7] Op cit at [13].

7. Further, the comparison should be made as if the trade marks under consideration were being used, normally and fairly, in relation to all of the goods concerned.  Allowing for the shift in onus onto an opponent to registration, and adapting the following to the circumstances of this matter, in Re Smith Hayden and Co's Application[8] it was stated:

   Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods covered by those registrations, is the Registrar satisfied that there will be a reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of goods covered by the proposed registration.

   [8](1946) 63 RPC 97 at 101.8.

8. And in Registrar of Trade Marks v Woolworths[9] French J observed of the factors moderating the assessment of the likelihood of deception or confusion:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

   [9] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at[50].

9. In Phone Directories Co Australia Pty Ltd v Telstra Corporation Ltd[10] Perram J additionally noted that, ‘In assessing deceptive similarity, questions of aural impression may be important’.

   [10] [2014] FCA 373; (2014) 106 IPR 281 at [323].

10. The Opponent submits:

    There are many cases in which, as here, a later mark containing only part of an earlier mark has been found to be deceptively similar to the earlier mark. For example:

    (a) in Olin Corp v Pacemaker Pool Supplies (1984) 4 IPR 526, PACE was held to be deceptively similar to OLIN PACE;

    (b) in Eau de Cologne & Parfumerie Fabrik Glockengasse Application (1990) 17 IPR 540, MY MELODY was held to be deceptively similar to MY MELODY DREAMS;

    (c) in Le Cordon Bleu BV v Cordon Bleu International Ltee (2000) 50 IPR 1 CORDON BLEU (in script) was held to be deceptively similar to LE CORDON BLEU PARIS (device);

    (d) in South Cone Inc v Casio Keisanki Kabushiki Kaisha (2002) 54 IPR 81, REEF was held to be deceptively similar to REEF BRAZIL;

    (e) in Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd (2006) 69 IPR 243, WHACKOS was held to be deceptively similar to DOGS GO WACKO FOR SCHMACKOS;

    (f) in Nylon Films Pty Ltd v Nylon Studios Pty Ltd (2008) 79 IPR 312, NYLON was held to be deceptively similar to NYLON FILMS;

    (g) in Karen Lee [2016] ATMO 19, HAS was held to be deceptively similar to HAS SOLUTIONS.

11. The Holder submits that:

    Conceptually the Applicant’s trade mark is unusual as it is an invented word derived from WONDER and GLOBAL and therefore brings a high level of inherent acquired distinctiveness as opposed to the Opponent’s trade mark, which has three separate terms each having a meaning in Chinese. This meaning is endorsed on the Registration stating “that a translation of the Mandarin words LO KAT appearing in the trade mark is OLD LUCKY”.

    It may be arguable that LO KAT are not Mandarin words but more appropriately qualified as Cantonese words, but in any event the endorsement reinforces the requirement that the terms LO and KAT appearing in the trade mark are important to the overall representation of the trade mark, suggesting that deliberate corruption or abbreviation of the complete phrase WONG LO KAT is unlikely as it would then remove the main meaning of the trade mark ‘LUCKY’.

1. It is quite unlikely, in my estimation, that any consumer would be aware of the origins of the Trade Mark in the words ‘wonder’ and ‘global’ or that such would be apparent to a casual purchaser of the goods.  The nub of the issue before me is, whatever the origins of the trade marks in question, and their possible meanings in foreign languages, is any similarity between them likely to give rise to confusion or deception?

2. The Holder also submits that the Trade Mark is (in the light of the proposed source of the Trade Mark as a contraction of the words ‘wonder global’) likely to be pronounced ‘wun glo’ and that any phonetic similarity between the trade marks is slight.  However, in my view the Trade Mark is (in the context of goods which are preparations made from Chinese teas) more susceptible to being understood by the public as being formed from the elements WONG and LO and pronounced as such.

3. The terms ‘deception’ and ‘confusion’ refer to two different mental states.  The differences between ‘deception’ and ‘confusion’ were explained by Richardson J in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd:[11]

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

   [11] [1979] RPC 410 at 423.

4. Additionally, as Rich J said in Radio Corporation Pty Ltd v Disney:[12]

   In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney.” The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney.” This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion.[13] It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

   [12] [1937] HCA 38; (1937) 57 CLR 448.

   [13] I note that the onus is now on the Opponent to establish the likelihood of deception or confusion.

5. In my consideration the phonetic similarities between the trade marks are such that it is likely that a person seeking the goods sold under the Registration would, if requesting the goods orally by reference to the trade mark WONG LO KAT, because of the aural similarities of the trade mark, be referred by a sales person to goods bearing the Trade Mark.

6. There are, additionally, visual similarities between the trade marks which are likely to be apparent to purchasers whether or not the relevant consumers include those who are familiar with Mandarin, Cantonese, or both.  In Moroccanoil Israel Ltd v Aldi Foods Pty Ltd,[14] the Court observed:

   The comparison to be made is between the impression based on [the] recollection people of ordinary intelligence and memory would have of the applicant’s (registered) mark and the impression they would have on seeing the mark or marks of the alleged infringer: Shell at 414–415 (Windeyer J); Australian Woollen Mills Ltd v FS Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641 at 658 (Dixon and McTiernan JJ). It follows that the Court must make allowance for the imperfect recollection a person may have of the registered trade mark(s): Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1; 61 IPR 212 at [77]; Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147; Aristoc Ltd v Rysta Ltd [1945] AC 68 at 86 (applied by the High Court in Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1973) 129 CLR 353).

   [14] [2017] FCA 823 at [170].

7. In my consideration, a person of ordinary intelligence and memory, recollecting the Opponent’s trade mark, would (when seeing goods bearing the Trade Mark) be caused to wonder whether the goods have the same origin in trade or are put onto the market under the Opponent’s aegis.  Dodds-Streeton J observed in Tivo Inc v Vivo International Corporation Pty Ltd: [15]

   It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.

   [15] [2012] FCA 252 at [105].

8. The trade marks under consideration are, in my consideration, deceptively similar.

9. The third requirement mentioned above has accordingly been met.

10. The ground under section 44 of the Act is established.

Decision

1. Regulation 17A.34N provides:

   17A.34NDecision 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 the grounds on which the IRDA was opposed have been established.

   (2)The Registrar must notify the International Bureau of the Registrar’s decision.

2. As I have earlier observed, it is apparent that the goods of importance to the parties are identical and there are no submissions before me by the Holder concerning a preservation of any of the goods in respect of which protection of the Trade Mark is sought.

3. It is therefore appropriate that the Registrar decides to refuse protection in respect of all of the goods listed in the IRDA.  As a delegate of the Registrar, I now do so.

4. The International Bureau will be notified of the Registrar’s decision.

Costs

1. Both parties sought their costs in the matter. Having been successful the Opponent is entitled to its costs which I award against the Holder under section 221 of the Act at the official scale set out in Schedule 8 to the Regulations.

Iain Campbell Thompson

Hearing Officer

Trade Marks Hearings

27 March 2018