Nature Vet Pty Limited v Mark Robinson [Sec=Unclassified]
[2009] ATMO 83
•27 October 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Nature Vet Pty Limited to registration of trade mark application 1165496(5) - JOINT GUARD - filed in the name of Mark Robinson.
Delegate: Claudia Murray Representation: Opponent: Lorne Wood-Roe, partner, of Adams Pluck Patent and Trade Mark Attorneys, Sydney.
Applicant: Self-represented, written submissions only.Decision: 2009 ATMO 83
Section 52 opposition – opposition successful under section 44 – registration refused – costs awarded against applicant.Background
Mr Mark Robinson (‘the applicant’), filed trade mark application number 1165496 on 12 March 2007, for the trade mark:
JOINT GUARD
The application was filed in class 5 of the International (Nice) Classification of Goods and Services in respect of goods which now appear as:
Pharmaceutical preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; none of the aforementioned being veterinary preparations and animal health care products including those for the treatment of arthritic conditions
A ground of rejection under section 44 was raised against the application during examination, based upon earlier registration number 840908 for the identical trade mark JOINT GUARD, also in class 5. That registration, owned by Nature Vet Pty Limited, covers ‘Veterinary preparations and animal health care products including those for the treatment of arthritic conditions’. The applicant advised the examiner that his products were only for human use, and proposed a restriction of his goods. The statement of goods, previously having been the full class heading for class 5, was amended to exclude the goods covered by the cited registration, as shown above. The trade mark was then advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 12 July 2007.
On 12 October 2007, Nature Vet Pty Limited of Glenorie, NSW (‘the opponent’) filed notice of opposition to registration of the trade mark. Nine grounds of opposition were specified in the notice. Later, on 11 April 2008, the opponent successfully applied under section 66 (‘Amendment of other documents’) to amend the notice. The amendment affected the wording of the existing section 60 ground of opposition, and added a new ground under section 62A (‘Application made in bad faith’).
Evidence in support, answer and reply was duly served and filed by the parties. The opponent then requested a hearing, and the matter was set down to be heard by me, as a delegate of the Registrar of Trade Marks, on 15 July 2009. Mr Lorne Wood-Roe, partner, of Adams Pluck Patent and Trade Mark Attorneys, Sydney, represented the opponent by telephone. The applicant did not appear, but made written submissions (dated 10 April and 14 July 2009) for consideration at the hearing.
Evidence
The evidence in relation to this opposition comprises:
Evidence in Support
ØStatutory declaration of Llewellyn Casbolt, with Annexures A to Q, dated 2 July 2008.
ØStatutory declaration of Finola McConaghy, with Annexure FMC-1, dated 10 June 2008.
ØStatutory declaration of Louise Nutman dated 10 June 2008.
Evidence in Answer
ØStatutory declaration of Mark Robinson dated 7 October 2008.
Evidence in Reply
ØStatutory declaration of Finola McConaghy, with Annexures A to J, dated 24 February 2009.
ØStatutory declaration of John Gerard Andersen dated 10 February 2009.
ØStatutory declaration of Suzanne Duggan dated 3 March 2009.
Mr Casbolt’s declaration and exhibits in support of the opposition provide some information about his company’s coining of the trade mark JOINT GUARD in 2001, ‘for use as a brand for a range of pharmaceutical products planned for sale in Australia and for export from Australia to other countries’. Mr Casbolt explains that the trade mark is used in connection with a range of pharmaceuticals containing glucosamine, for the treatment of arthritis in horses, dogs and cats. He attests that the trade mark was first used by the opponent in relation to pharmaceuticals exported to New Zealand and Singapore in 2002, and since that time has been exported continuously to those countries, as well as twelve others. The trade mark was first used in relation to pharmaceutical preparations sold by the opponent in Australia in about 2005, and has been used continuously in New South Wales, Victoria, Queensland, Western Australia and the Australian Capital Territory from that date.
Mr Robinson’s declaration in answer does not dispute the opponent’s claims about its use of the JOINT GUARD trade mark, or provide any evidence of his own use of the mark. His declaration is, in essence, a submission dealing solely with the issue of whether the opponent’s JOINT GUARD goods and the goods covered by his application could ever be confused, given that, as he says:
Customers are not the same. Nature Vet as specified is for animals only. My trade mark is specified for humans only.
Grounds of opposition
At the hearing, Mr Wood Roe indicated that, of the grounds raised in the notice of opposition, the opponent wished to pursue those under sections 44, 58, 59, 60 and 62A. For completeness, I find that none of the other grounds listed in the notice of opposition has been established. For reasons that will soon become clear, it will not be necessary for me to deal with all the grounds that have been pressed by the opponent, but I will begin with its primary ground.
Section 44 – Identical etc. trade marks
Subsection 44(1), applied to the present circumstances, provides that an application for registration must be rejected if it is substantially identical, or deceptively similar, to another person’s trade mark application or registration that has an earlier priority date, and covers goods that are similar to the applicant’s goods. The definition of "deceptively similar" in section 10 is that "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". Section 14 defines “similar goods” as goods which are “the same”, or “of the same description”.
Mr Wood-Roe began his submissions by focusing upon the opponent’s registration for the trade mark JOINT GUARD. As I have already noted above, that registration, which has a priority date of 29 June 2000, covers ‘Veterinary preparations and animal health care products including those for the treatment of arthritic conditions’ in class 5. Originally cited by the examiner as a barrier to acceptance for registration under section 44, the citation was withdrawn after the applicant’s goods were amended.
12. The applicant has not disputed either the earlier priority date of the opponent’s registration, or whether the trade marks in question are substantially identical or deceptively similar. In fact, of course, the trade marks are the same.
The critical issue now for my decision is whether the goods covered by the applicant’s and opponent’s trade marks are similar. Mr Wood-Roe has argued convincingly that they are, in accordance with the tests laid out by Romer J in Jellinek's Application[1]. These tests compare the nature and uses of the respective goods, and the trade channels through which they are bought and sold, ranging from manufacturer to retailer. It is not necessary for all three criteria to be met in every case. Mr Wood-Roe submitted that for many of the goods in question, the nature and uses were the same. Then, comparing trade channels, he pointed to the opponent’s evidence, which contains declarations from a pharmacist, a pharmacy assistant and a veterinarian, all of whom attest to their experience of the routine side-by-side marketing of products for humans and animals in actual and virtual chemist shops. This is supported by exhibits showing online pharmacy advertising featuring, for example, human and animal product ‘specials’ on the same internet page. The declarants also express their professional concern about the potential for deception and confusion of the public inherent in the use of identical trade marks by different traders in relation to products specifically intended for humans, and those specifically intended for veterinary purposes.
[1] (1946) 63 RPC 59.
Mr Wood-Roe continued:
In the present case, the goods of “plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides; herbicides” are the same regardless of whether they are intended for animal or human use. The disclaimer made by Mr Robinson is not effective in respect of these goods…
It is submitted that animal related pharmaceuticals are at least goods of the same description as human related pharmaceuticals.
Relevant caselaw:
UNIVER trade mark (Appeal to High Court of Justice) 1993 (RPC) 239
An application to register UNIVER for “Pharmaceutical preparations” was refused in light of existing registration of UNIVET for “Veterinary preparations”. A subsequent appeal to High Court was refused.
It was found on the evidence that veterinary and human preparations passed through the same trade channels at both wholesale and retail levels. Thus, there was a potential health risk to humans mistakenly taking the animal preparations. The following passage is of particular note:
“Where there is thought to be a risk to health arising from confusion, it has been longstanding practice for the Registrar to exercise discretion with particular caution, especially if class 5 goods are involved. As Lloyd-Jacob J. commented in the case of Harker Stagg Ltd.’s Trade Mark (1953) 70 RPC 50 et seq:-
“… if there were, or is, any reasonable ground for supposing that by reason of their similarity confusion or deception is likely to arise, the fact that they are used in relation to a pharmaceutical preparation is, perhaps, all the more reason for seeing that the public are protected from the consequences of deception and confusion.”
I accept these submissions and the opponent’s evidence on this point. Mr Robinson has argued in rebuttal that the parties’ respective goods, being animal products for therapeutic use and human products for therapeutic use, can be easily differentiated because the animal health product market is governed by the strict standards of registration applied by the Australian Pesticides and Veterinary Medicines Authority, and the human product market is governed by the equally strict, but quite separate, standards of the Therapeutic Goods Administration. However, these arguments address only a small aspect of the total comparison between the various class 5 goods at issue here. I must assume use of the opponent’s trade mark in a “normal and fair manner” on any of the goods covered by its registration.[2] The statutory rights granted to the opponent’s registration must be compared with the prospective rights to be afforded to the applicant. The extent of actual use made by either party of its trade mark upon specific goods is not relevant to the test applied under section 44.
[2] Smith Hayden & Co. Ltd’s Application (1946) 63 RPC 97 (Ch D); Registrar Of Trade Marks v Woolworths [1999] FCA 1020, para 88
In applying the appropriate test, I must take into account that the opponent’s goods represent an obvious subset, intended for animal treatment only, of the applicant’s wide range of class 5 goods.[3] It follows, therefore, that the goods covered by the applicant’s trade mark and those covered by the opponent’s trade mark remain, if not the same, still indisputably of the same description, notwithstanding the restriction intended to excise the opponent’s goods from the applicant’s specification.
[3] See also Sanofi-Synthelabo v Lohmann Animal Health, GmbH Co. KB [2003] ATMO 68 (3 November 2003).
Given that the trade marks are identical, and the close similarity between the goods covered by the subject application and those covered by the opponent’s registration, I consider the likelihood of the public mistaking one for the other in use to be considerable. Accordingly, in the absence of any evidence from the applicant of prior use (subsection 44(4)), or honest concurrent use (subsection 44(3)), which might have supported a finding that both trade marks were entitled to coexist on the Register, I find the section 44 ground of opposition established.
Other grounds of opposition
Mr Wood-Roe also pressed grounds of opposition under sections 58, 59, 60 and 62A. However, as my finding for the opponent in terms of section 44 necessarily subsumes any other finding I may have made under any other grounds, I decline to pursue those grounds further. They would, of course, be again available to the opponent in the event of an appeal from this decision.
Decision
Subsection 55(1) of the Act provides:
(1) 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.
The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the appropriate standard of proof required in terms of a ‘balance of probabilities’.[4] His findings upon that issue, arrived at after an exhaustive consideration of the relevant authorities, have recently been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks.[5]
[4] Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006); (2006) 70 IPR 599.
[5] [2009] FCA 891 (18 August 2009), paragraphs 22-27.
I find here that the opponent has met the onus upon it, in terms of the ground of opposition argued under section 44. I therefore refuse to register trade mark application number 1165496.
Costs
The opponent has requested its costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant, Mr Mark Robinson.
Claudia Murray
Hearing Officer
Trade Marks Hearings
27 October 2009
0
5
0