Neurim Pharmaceutical (1991) Ltd v Clariant AG
[2021] ATMO 44
•26 May 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Neurim Pharmaceuticals (1991) Ltd to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 1933662 (international registration number 1406500) (class 1) – B-CIRCADIN in the name of Clariant AG
Delegate: | Timothy Brown |
Representation: | Opponent: Jennifer McEwan & Jessica Murphy, Wrays Pty Ltd Holder: Griffith Hack Pty Ltd |
Decision: | 2021 ATMO 44 Trade Marks Regulations 1995 (Cth) – opposition to extension of protection to an international registration designating Australia under regulation 17A.33 – ss 42(b), 44, 58 and 60 – no grounds established – extension of protection allowed. |
Background
This is an opposition brought by Neurim Pharmaceuticals (1991) Ltd (‘Opponent’) to the extension of protection in Australia for the following International Registration Designating Australia:
Trade Mark: B-CIRCADIN (‘IRDA’)
Trade Mark Number: 1933662
IR Number: 1406500
Holder: Clariant AG (‘Holder’)
Filing date: 22 March 2018
Convention Priority Date: 19 January 2018 (‘Priority Date’)
Specification of Goods:
Class 1: Active chemical ingredients and chemical products for use in the cosmetic industry, excluding the pharmaceutical industry; active botanical ingredients and plant extracts for use in the cosmetic industry, excluding the pharmaceutical industry
The decision to accept the IRDA was notified in the Australian Official Journal of Trade Marks on 27 November 2018.
A notice of intention to oppose the extension of protection was filed by the Opponent on 29 January 2019. The statement of grounds and particulars (‘SGP’) was then filed on the 28 February 2019.
The Holder filed a notice of intention to defend on the 11 April 2019. Evidence in Support was filed by the Opponent on 8 July 2019. Evidence in Answer was filed by the Holder on 11 October 2019. Evidence in reply was not filed by the Opponent.
A hearing was scheduled for the 5 February 2021 and the parties were invited to make written submissions. Both parties advised that they would rely on written submissions. Consequently, the matter proceeded to hearing by way of written submission. The Opponent’s submissions were filed on the 25 January 2021. The Holder’s submissions were filed on 3 February 2021.
As the delegate of the Registrar, I will decide this matter with reference to the material filed during these proceedings.
Evidence
The Opponent
The Opponent filed Evidence in Support comprising of a declaration made by Professor Nava Zisapel on 7 July 2019 (‘Zisapel Declaration’) and Annexures 1 to 15.
The Zisapel Declaration explains that the Opponent is a pharmaceutical research and development company based in Switzerland with a focus on the treatment of age-related disorders.
The Opponent is the owner of the following trade mark registration in Australia:
Trade Mark Number: 743539
Trade Mark: CIRCADIN (‘Trade Mark Registration’)
Priority Date: 9 September 1997
Specification: Class 5 - Preparations and drugs for pharmaceutical use
The Opponent is also the owner of a number of foreign registrations for CIRCADIN, including registrations in the United Kingdom, Europe, United States, Israel, South Africa, Thailand, Singapore, Mexico, China, Japan, and South Korea.
Products bearing the Trade Mark Registration were first sold internationally in August 2007. In Australia, the products were first sold in March 2010 by the company Aspen Pharma Pty Ltd (‘Aspen’). Aspen sell and market goods bearing the Trade Mark Registration in Australia as the Opponent’s local representative.
The Opponent outlines the use of the Trade Mark Registration in Australia as follows:
The Trade Mark Registration is used in connection with a melatonin based pharmaceutical product developed for the treatment of insomnia. The good is only available via prescription.
The good is estimated to be available in 5,600 pharmacies throughout Australia and is supplied to pharmacies by pharmaceutical wholesalers, API, Sigma and Symbion.
Aspen lists the Opponent’s goods on their website at < type="1">
In addition to the above use, the Opponent has promoted the Trade Mark Registration via:
· Advertising campaigns in professional medical journals and magazines, including New England Journal of Medicine, Australian Family Physician, Medical Republic, Australian Journal of Pharmacy, Medicine Today, Medical Observer, and Australian Pharmacist;
· Public forums and educational conferences in over 250 meetings in Australia each year;
· Health-ED programme, a program that involves general practitioners providing fact sheets about the Opponent’s product to patients;
· Distributing promotional material to health care professionals directly, such as flyers, advertorials, newsletters, fact sheets and leaflets;
· Other patient support materials, such as sleep hygiene pads and sleep diary pads.
The following Evidence in Answer was filed by the Holder:
A declaration made by Ernesto Horikoshi on 9 October 2019 (‘the Horikoshi Declaration’) and Annexures EH1 to EH3; and
A declaration made by Karen Sinclair on 11 October 2019 (‘the Sinclair Declaration’) and Annexures KJS1 to KJS7.
The Horikoshi Declaration explains that the Holder is a speciality chemicals company focusing on care chemicals, catalysis, natural resources, plastics, and coatings that sells its products as ingredients to, amongst others, manufacturers of consumer products. The company was formed in 1995 after previously being a part of the Swiss company Sandoz. Sandoz previously sold speciality chemicals and pharmaceuticals.
In January 2017, the Holder began developing products in the nature of active ingredients for the cosmetic industry and specifically for skin and hair care products. One of these products was an active ingredient extracted from the medicinal plant lespedeza capitata, which the Holder called B-CIRCADIN.
The name B-CIRCADIN was adopted to reflect the product’s impact on the human body’s circadian rhythm. The prefix ‘B’ was included as a reference to blue light.
The Holder filed a trade mark application with the Swiss Intellectual Property Office on 19 January 2018, which was subsequently registered on 22 March 2018 under trade mark number 714424. This registration formed the basis for a number of applications for the extension of trade mark protection in other jurisdictions, including the United States, United Kingdom, European Union, India, South Korea, Russia and Mexico.
The Holder sells products bearing the IRDA via business-to-business channels rather than directly to consumers. These channels include direct approach from the Holder’s sale representatives, as well as trade shows targeted at cosmetic manufacturers.
The Sinclair Declaration provides information and evidence concerning trade shows referenced in the Horikoshi Declaration.
The nominated grounds of opposition are sections 42(b), 44, 58, and 60 of the Trade Marks Act 1995 (Cth) (‘Act’).
The Opponent bears the onus of establishing one or more of the grounds of opposition.[1] The required standard of proof is on the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
The date at which the rights of the parties will be determined is the priority date of the IRDA,[3] 19 January 2018.
Section 44(1) relevantly provides:
(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
In the SGP, the Opponent identified the Trade Mark Registration as the basis for the section 44 ground of opposition. The relevant trade marks are:
To establish the ground of opposition under section 44(1) of the Act, the Opponent must establish that the Trade Mark Registration:
· Is registered in the name of a person other than the Holder;
· Has a priority date that is earlier than the IRDA;
· Is registered in respect of similar goods to the IRDA; and
· Is substantially identical with, or deceptively similar to, the IRDA.
It is apparent from the information in paragraph [9] that the Holder is not the owner of the Trade Mark Registration and that the priority date of the Trade Mark Registration, 9 September 1997, is earlier than that of the IRDA.
The test for substantial identity was expressed by Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd:
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.[4]
[4] (1963) 109 CLR 407, 414.
More recently the essential features of a trade mark have been referred to by the Full Bench of the Federal Court as ‘dominant cognitive cues’[5]. In effect, the test requires a side-by-side comparison with consideration of the essential features or dominant cognitive cues of the trade marks. Should a total impression of resemblance emerge from the comparison then the trade marks will be considered substantially identical.[6]
[5] See: Accord Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [206]; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [51].
[6] Carnival Cruise Lines Inc v Stimar Cruises Limited (1994) 120 ALR 495, [62]; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50].
The Opponent asserted that the word ‘CIRCADIN’ is the essential feature of both trade marks, and the single letter ‘B’ in the IRDA does not render the trade marks sufficiently different. Conversely, the Holder submitted that the prefix ‘B-’ creates enough visual and aural differences that on a side-by-side comparison there would not be a total impression of resemblance.
CIRCADIN is an essential feature of both trade marks. It is the sole element of the Trade Mark Registration and the dominant feature of the IRDA. The other element of the IRDA is the prefix ‘B-’. This forms the sole difference between otherwise identical trade marks.
The basis of Opponent’s argument is that the letter ‘B’ itself is not capable of distinguishing and should be regarded in a similar manner to a descriptive term. In most cases descriptive elements are unlikely to form an essential feature of a trade mark.[7] In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd the Full Court explained:
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.[8]
[7] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [52].
[8] Ibid.
However, in this instance diminishing the prefix to a descriptive element would be understating its relative importance in the context of the side-by-side comparison. The Opponent has introduced no evidence that would indicate the letter B is descriptive. While I note that single letters often lack capacity distinguish on their own,[9] and that letters have meaning in the context of chemicals, such as symbols for chemical elements, I do not consider the prefix an element that can be discounted. Doing so would ignore the visual and aural effect of the prefix in the IRDA. The ‘B’ element is placed before the word CIRCADIN, and its presence is further accentuated by the hyphen between the letter B and CIRCADIN. The placement and the presence of the hyphen make the element more noticeable than it otherwise may have been if represented differently within the IRDA. In my view these factors are enough for the element to be considered an essential feature that strikes the eye of a consumer.
[9] See: Re W & G Du Cros Ltd (1913) 30 RPC 660; Effem Foods Pty Ltd v Marks & Spencer plc (1999) 47 IPR 213.
The side-side-side comparison is to be carried out cognisant of the essential features of the trade marks.[10] As the prefix is entirely absent from the Trade Mark Registration, there is a noticeable and impactful difference between the trade marks. Although the trade marks have a high degree of similarity, in a side-by-side comparison having regard to the essential features of the trade marks, I am satisfied that the visual difference created by the prefix in the IRDA is enough for there not to be a total impression of resemblance.
[10] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [52].
Section 10 of the Act defines deceptively similar as:
For the purposes of this Act, 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.
Unlike substantial identity, the test for deceptive similarity is not a side-by-side comparison, but rather a question of impression based on an imperfect recollection of the trade marks.[11] For trade marks to be considered deceptively similar there must be a real or tangible danger of deception or confusion occurring.[12] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods come from the same trade source.[13]
[11] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 415.
[12] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595; Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50].
[13] Ibid.
For the purposes of this comparison, the trade marks are compared in their entirety,[14] judging the effect and impression of the respective trade marks as a whole,[15] having regard to the look and sound of the trade marks,[16] as well as the ideas they convey.[17]
[14] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [92].
[15] Clark v Sharp (1898) 15 RPC 141, 146.
[16] Australian Woollen Mills Ltd v F.S Walton & Co Ltd (1937) 58 CLR 641, 658.
[17] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 539; Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited (2003) 59 IPR 318, 331.
The Opponent submitted that the IRDA is deceptively similar to the Trade Mark Registration because both trade marks share the element CIRCADIN, giving the trade marks enough visual and aural similarity to create a real tangible danger of confusion despite the presence of the letter ‘B’. On the other hand, the Holder contended that the combination of ‘B-’ and CIRCADIN is memorable and distinctive, and the lack of any evidence of confusion despite substantial sales and marketing of the Opponent’s products, suggests that there is no real tangible danger of confusion.
In my view, the similarities between the trade marks are sufficient for there to be a real tangible danger of confusion. Generally, where two trade marks share a common element, it increases the likelihood of the trade marks being considered deceptively similar,[18] particularly where the shared element is an essential feature of the trade marks.[19] In this instance, CIRCADIN is the sole element of the Trade Mark Registration and it is contained completely within the IRDA. Despite similarity to the word ‘circadian’, CIRCADIN is an invented and distinct term that would leave a considerable impression on the mind of an ordinary consumer. Although the Holder has explained that the prefix is intended to be an allusion to blue light, I do not consider the presence of the prefix in the IRDA sufficient to create a different idea or concept in the mind of the consumer or to otherwise distinguish the trade marks. The visual and aural differences introduced by the prefix, while noticeable, are, in my view, considerably outweighed by the impression conveyed by the CIRCADIN element. I consider the overall impressions similar enough for there to be a real and tangible risk that consumers would be caused to wonder whether goods bearing the respective trade marks derive from the same trade source.
[18] Crazy Ron’s Communication Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79]-[90].
[19] Ibid.
Regarding the absence of any evidenced confusion between the trade marks, I do not consider the lack of established instances of confusion as a basis for concluding that the trade marks are not deceptively similar, particularly noting a lack of use of the IRDA in Australia before its priority date.
For these reasons I am satisfied that the trade marks are deceptively similar. The final issue to be determined under section 44 is whether the goods of the trade marks are similar.
Section 14 of the Act provides:
(1) 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.
For reference, the goods being compared in this matter are as follows:
The Opponent makes two contentions regarding the similarity of the trade marks’ goods: first, that the scope of the Trade Mark Registration would encompass the IRDA’s goods because the Trade Mark Registration broadly covers both ‘preparations’ and ‘drugs for pharmaceuticals use’. Second, that despite the exclusion, ‘excluding pharmaceutical industry’, the goods are similar because of the nexus between cosmetic and pharmaceutical products and the shared anti-fatigue qualities of the respective goods.[20]
[20] Ibid [44]-[45].
I do not accept the first submission. The Opponent’s submission is based on a construction that separates ‘preparations’ from ‘drugs for pharmaceutical use’. The description of the Opponent’s goods reads ‘[p]reparations and drugs for pharmaceutical use’. Limiting the qualification, ‘for pharmaceutical use’ to apply only to ‘drugs’ and not ‘preparations’ departs from an ordinary reading of the statement, ignores a clear qualification, and would afford the Trade Mark Registration scope covering any and all forms of preparations. In my view, the specification should be construed with the qualification, ‘for pharmaceutical use’, applied to both preparations and drugs. Nevertheless, the goods covered by the Trade Mark Registration are broad. Drugs and preparations for pharmaceutical use would notionally include a range of different preparations for pharmaceutical purposes, including chemical, herbal, and botanical preparations.
The Holder
Grounds of Opposition
Discussion and Reasons
[3] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
Section 44
(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.
| IRDA | Trade Mark Registration |
| B-CIRCADIN | CIRCADIN |
| Class 1: Active chemical ingredients and chemical products for use in the cosmetic industry, excluding the pharmaceutical industry; active botanical ingredients and plant extracts for use in the cosmetic industry, excluding the pharmaceutical industry | Cass 5: Preparations and drugs for pharmaceutical use |
Substantial Identity
Deceptively Similar
Comparison of Goods
| IRDA | Trade Mark Registration |
| Class 1: active chemical ingredients and chemical products for use in the cosmetic industry, excluding the pharmaceutical industry; active botanical ingredients and plant extracts for use in the cosmetic industry, excluding the pharmaceutical industry | Class 5: preparations and drugs for pharmaceutical use |
The Holder contends that the limitation ‘excluding the pharmaceutical industry’ in the claim of the IRDA removes any overlap between the goods. While I accept that the limitation means that the goods are not the same, the question of whether the goods are of the same description is more complicated. In Reckitt & Colan Ltd v Boden, Dixon J stated:
What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business.[21]
[21] (1945) 70 CLR 84, 94.
Similarly, in Re an Application by Ladislas Jellinek for the Registration of a Trade Mark (‘Jellinek’), Romer J stated that the answer to whether goods are of same description depends on ‘whether the goods belong to the same or different trades’[22]. In determining this question consideration should be given to the nature of the goods,[23] the purpose for which the goods will be used,[24] and the trade channels through which the goods are bought and sold.[25] These factors were adopted by the High Court of Australia in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd.[26]
[22] (1946) 63 RPC 59, 64.
[23] Ibid.
[24] Ibid.
[25] Ibid.
[26] [1954] HCA 82, [5].
The Holder submitted that the nature and purpose of active ingredients for cosmetics and preparations for pharmaceutical use are inherently different. In particular, the Holder emphasised specific differences between the Opponent’s CIRCADIN product, which is used as a prescription drug to treat insomnia, and their own B-CIRCADIN active ingredient supplied to cosmetic manufacturers to produce cosmetics. While I accept, as a general proposition, that there is a distinction to be made between an ingredient or material used for manufacturing and a finished product, such as pharmaceuticals, the scope of both trade marks includes a much broader range of goods. Section 44 of the Act assumes a notional use of both trade marks,[27] with regard to the normal and fair use of all the goods covered by the trade marks.[28] The IRDA’s goods would include not only active ingredients used to manufacture cosmetics, but also any ‘active plant extracts’ and ‘active chemical products for use in the cosmetic industry’. Similarly, the Trade Mark Registration may be used on any ‘preparations and drugs for pharmaceutical use’; it is not limited to use in relation to sleeping medication.
[27] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353, 362.
[28] Ibid.
The Opponent made the contention that it is becoming more common for chemical products and pharmaceuticals to be manufactured by the same producers, noting that the emergence of cosmeceuticals, and the fact that the Holder’s parent company at one point developed both chemicals and pharmaceuticals, indicated that the goods should be considered similar.[29]
[29] Ibid.
The contention that there is a nexus between cosmetics and pharmaceutical products is not controversial. In Re Vono Limited’s Application the Assistant Comptroller found unmedicated toilet preparations to be goods of the same description to medicated toilet preparations.[30] Similarly, in Chanel Ltd v Produits Ella Bache Laboratoire Suzy, the delegate of the Registrar concluded that there was very little difference in the nature, use and trade channels of medicated cosmetics and non-medicated cosmetics.[31] In Brock Beauty Inc pharmaceutical preparations for skin care were found to be similar to beauty care products.[32] However, I would distinguish the present matter from these earlier decisions. The goods of the IRDA are not cosmetics, but rather a range of active chemical products and plants extracts that are to be used in the cosmetic industry. Although there is a degree of similarity between cosmetic products and pharmaceutical products, it does not follow that a similar nexus exists between pharmaceuticals and chemicals, or pharmaceuticals and plant extracts.
[30] (1949) 66 RPC 305, 308.
[31] (1993) 27 IPR 245, 250.
[32] [2016] ATMO 57, [17]-[18].
The similarity of active ingredients and Class 5 goods has been considered before. In 3M Company v Tish and Sash Cacoroski the delegate of the Register determined that active ingredients for skin care preparations, amongst other goods, were similar to herbicides, fungicides, and insecticides. This conclusion was reached noting an ingredient for skin preparations would ‘include fungicidal ingredients intended for skin care’[33] and, in particular, that the nature and purpose of fungicide both as an ingredient and as a finished product was to treat fungal infection.[34] The Opponent placed a similar emphasis on the purported effects of the goods, noting that there is a similarity in the anti-fatigue effects of the IRDA’s active ingredients and Trade Mark Registration’s sleeping medication. In general, it is likely that certain active ingredients and plant extracts would have some of beneficial effect on the human body in a manner similar to many pharmaceutical preparations. While the effect of the products is a factor to be considered, in my view, it is outweighed by the difference in the nature, purpose and use of the goods. A drug or pharmaceutical preparation is defined as a medicinal drug,[35] or a product used in the practice of pharmacy or treatment.[36] The IRDA’s goods are products used as an ingredient or substance in other cosmetic products. They may have beneficial or even therapeutic effects, but the nature and purpose of the product is distinct from finished products utilised for pharmaceutical purposes or cosmetics.
[33] [2018] ATMO 97, [27].
[34] Ibid.
[35] Macquarie Dictionary (online at 30/03/21) ‘pharmaceutical’ (def 1-2); OED: Oxford English Dictionary (online at 30/03/21) ‘pharmaceutical, adj. and n.’ (def B).
[36] Ibid.
Regarding the trade channels of the goods, there is little evidence before me to support the Opponent’s contention that chemical products and pharmaceuticals are manufactured by the same producers. On this point, the Opponent relies on Annexure 15 of the Zisapel Declaration, and information from the Horikoshi Declaration that explains the background of the Holder’s parent company. In my view, the Holder’s business circumstances are not evidence of industry standards or common practice amongst producers of the respective goods. Furthermore, Annexure 15 of the Zisapel Declaration merely provides information about the intended benefits of the B-CIRCADIN active ingredient. While I accept that cosmeceuticals, cosmetics and pharmaceuticals are all available via pharmacies, health stores and supermarkets, I am not convinced the same could be said for active chemical products and plant extracts utilised for the purposes proposed in the IRDA.
In the absence of any evidence that demonstrates either common trade origins or distribution and supply channels for the IRDA’s goods and pharmaceuticals, as well as noting the differences between the purposes and nature of the goods, I am not persuaded that the goods are the same or of the same description. Despite the strong similarity between the trade marks, given the differences between the goods I am satisfied that use of the IRDA would not likely deceive or cause confusion.
The section 44 ground of opposition has not been established.
Section 60
Section 60 provides:
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.
To establish this ground of opposition the Opponent must demonstrate that, as of the Priority Date, a trade mark had acquired a reputation in Australia such that use of the IRDA would be likely to deceive or cause confusion. The likelihood of deception or confusion must be real and tangible.[37] Confusion will arise if people would have cause to wonder whether the goods offered in relation to the IRDA were being provided by the Opponent.[38]
[37] See: Southern Cross Refrigeration Co v Toowomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
[38] Coca Cola Company v All-Fect Distributors Limited [1999] FCA 1721, [39].
Reputation
In McCormick & Co Inc v McCormick, Kenny J considered the meaning of ‘reputation in Australia’, referring to reputation as ‘the recognition of the [trade mark] by the public generally’.[39]
[39] [2000] FCA 1335, [81].
Reputation may be established in a variety of ways,[40] including volume of sales, advertising expenditure and evidence of promotions.[41] The reputation must be one of which a significant or substantial number of people would be aware.[42] In Le Cordon Vleu BV v Cordon Bleu International Ltee the primary judge observed that what amounts to a significant or substantial amount of people will depend on the nature of the goods and services in question.[43]
[40] Ibid [60].
[41] Ibid.
[42] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].
[43] (2000) 50 IPR 1, 19-20.
The Opponent submitted that CIRCADIN has acquired a ‘very extensive and valuable reputation both internationally and in Australia’. In support of this submission the Opponent relied on the following evidence:
Continuous commercial use of the Trade Mark Registration in Australia since 2010.
International use of the CIRCADIN trade mark since August 2007.
The supply of products bearing the Trade Mark Registration to Australian pharmacy wholesalers, API, Sigma and Symbion.
Revenue for the sale of the Trade Mark Registration’s goods in Australia from 2010 to 2018. This information is confidential, as such, I will state that these figures demonstrate a significant amount of sales and continuous growth in the amount of products sold since 2010.
Substantial expenditure in marketing, and promotion of the Trade Mark Registration by Aspen via a variety of mediums, including print, online, and industry specific resources, such as patient information pamphlets, and health education seminars and forums.
The Holder has pointed to the fact that the Trade Mark Registration has only been used in relation to prescription sleep medication. It is apparent from the material provided in the Zisapel Declaration, that the Trade Mark Registration has been used solely in relation to the Opponent’s medicine that is designed for short term treatment of insomnia. Although the Trade Mark Registration has been promoted extensively, all marketing and promotional material, as well as sales made under the trade mark relate to the Opponent’s prescription sleep medicine.
Considering the evidence provided by the Opponent, I am satisfied that at the priority date the Trade Mark Registration would be recognised by a substantial number of ordinary consumers as denoting the Opponent’s prescription sleeping medication. In arriving at this conclusion, I have particular regard to the substantial sales of the Trade Mark Registration’s goods in Australia, the expenditure on various forms marketing, and the consistent use in Australia of the Trade Mark Registration since 2010 on sleep medication.
Deception or Confusion
The next issue to consider is whether because of the reputation of the Trade Mark Registration, notional use of the IRDA would be likely to cause deception or confusion.
As with deceptive similarity, a trade mark will be likely to cause deception or confusion if use of the trade mark would result in people being caused to wonder whether its goods or services derive from the same trade source as another trade mark.[44]
[44] Register of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50].
An assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the opponent’s trade mark, the degree of similarity between the trade marks,[45] and the connection between the goods and/or services of the trade marks.[46] Although the trade marks are not required to be deceptively similar, nor are the goods or services required to be of the same description, the respective similarity of the trade marks and the goods or services remain relevant factors.[47]
[45] Qantas Airways Limited v Edwards [2016] FCA 729, [142].
[46] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40].
[47] See: Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [2010] ATMO 5, [39].
In the present matter, there is a strong degree of similarity between the IRDA and the Trade Mark Registration. Balanced against both the reputation of the Trade Mark Registration and its similarity to the IRDA are the differences between the IRDA’s goods and the goods for which the Trade Mark Registration has acquired a reputation.
In respect to the goods, the Opponent argues that the common anti fatigue qualities of the products sold under the respective trade marks, and common trade origins of pharmaceuticals and goods in the cosmetic industry would lead to confusion between the trade marks. In contrast, the Holder argues that considering the differences between the goods, and the lack of actual confusion evidenced by the Opponent, that there was no causal link between the reputation of the Trade Mark Registration and the likelihood that use of the IRDA would cause deception or confusion. The Holder also added that the customers of the Trade Mark Registration’s product are pharmacists and end consumers, and that the goods are only purchased with intervention of a healthcare professional.[48]
[48] Ibid [56].
Deception or confusion need not last up until purchase,[49] and even with the reputation of the Trade Mark Registration I do not believe that people would necessarily be aware that goods bearing the Trade Mark Registration are available only via prescription. Nevertheless, I am satisfied that in this instance there would not be a real or tangible danger of deception or confusion. Although the Trade Mark Registration in Australia has accrued a reputation, this reputation is intrinsically tied to a narrow field of products, namely sleep medication. I have canvassed the differences between the IRDA’s goods and those of the Trade Mark Registration at length in my discussion of the section 44 ground of opposition. The differences are more pronounced when considering the particular pharmaceuticals connected to Trade Mark Registration’s reputation. There appears to be little to no connection between sleep medication and the IRDA’s goods, nor does the Opponent’s evidence substantiate the existence of any such connection. I do not consider the claimed anti fatigue effects of the active ingredients associated with the IRDA, or any goods that would notionally fall within the scope of the IRDA, to be of similar purpose or use to sleep medication.
[49] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
Despite the similarity of the trade marks and the strength of the Trade Mark Registration’s reputation, the differences between the IRDA’s goods and sleep medication are significant enough that I am satisfied that deception or confusion is not likely to occur.
The ground of opposition under section 60 has not been established.
Section 42(b)
Section 42(b) of the Act provides:
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
The Opponent relied on sections 18(1) and 29(g) of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for the ground of opposition under section 42(b) of the Act.
In order to succeed in an opposition under section 42(b) of the Act, the Opponent must demonstrate on the balance of probabilities that use of the IRDA would contravene the ACL or continue passing off. [50]
[50] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28].
Australian Consumer Law
Section 18 of the ACL provides:
A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 29(1) of the ACL relevantly provides:
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
(g) make a false or misleading representation that goods or services have sponsorship approval, performance characteristics, accessories, uses or benefits
The Opponent submitted that due to the reputation of the Trade Mark Registration, the strong similarities between the two trade marks, the anti-fatigue qualities of the IRDA and Trade Mark Registration’s products, and common trade origins of pharmaceuticals and goods in the cosmetic industry, that use of the IRDA would mislead or deceive consumers into believing that the Holder’s goods are provided by, with consent or authorisation of the Opponent.
Sections 18 and 29(1)(g) of the ACL require there to be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Holder’s goods due to the conduct of the Holder. The requirement that the relevant consumer be misled or deceived is a higher threshold than the requirement for confusion under section 60 of the Act.[51]
[51] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8]; Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33].
In addressing the section 60 ground of opposition, I explained that despite the reputation of the Trade Mark Registration, use of the IRDA would not be likely to cause confusion or deceive an ordinary consumer of the relevant goods into believing that the IRDA and the Trade Mark Registration are related. For the same reasons, I cannot be satisfied that the Holder’s conduct would contravene section 18 or 29 of the ACL.
Passing Off
Generally, where a trade mark does not contravene sections 18 or 29 of the ACL, it is unlikely to amount to passing off.[52] This is because the operation of those provisions is broader than scope of passing off.[53]
[52] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58].
[53] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 771, [40].
In the absence of any evidence of damage to the Trade Mark Registration’s reputation and given my findings in relation to section 18 and 29 of the ACL, it follows that use of the IRDA would not constitute passing off.
The ground of opposition under section 42(b) has not been established.
Section 58
Section 58 of the Act provides:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
In order to establish a ground of opposition under section 58, the Opponent must establish:
The IRDA is identical or substantially identical to an earlier trade mark;[54]
The earlier trade mark has been used in respect of good or services as ‘the same kind of thing’ as the IRDA;[55] and
Another person has an earlier claim of ownership based on use of the earlier trade mark before the filing date of the IRDA.[56]
[54] Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) ALR 495; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50].
[55] Re Hick’s Trade Mark (1897) 22 VLR 636, 640.
[56] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402, 413.
The Opponent asserts ownership of the IRDA on the basis that the Trade Mark Registration has been used continuously in Australia since March 2010.
In my discussion on the section 44 ground of opposition at [30] to [34], I indicated that I do not consider the IRDA substantially identical to the Trade Mark Registration. I would also add that the IRDA has not been used for goods of the ‘same kind of thing’ as the Trade Mark Registration. The expression ‘same kind of thing’ is narrower than goods ‘of the same description’,[57] and generally confined to essentially the same goods as those of the other trade mark.[58] As discussed at [44] to [53], there are sufficient differences between the purposes of the respective goods and insufficient evidence of commonality in trade channels or trade origin for me to conclude that the goods are of the ‘same description’. As such, I do not consider the Trade Mark Registration to have been used in relation to goods of the same kind of thing as those of the IRDA.
[57] Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184, [14]-[16]; See also: Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14] and [16].
[58] Ibid.
For these reasons I am satisfied that the ground of opposition under section 58 has not been established.
Decision
Regulation 17A.34N(1) provides:
(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.
The Opponent has failed to establish any of the nominated grounds of opposition. Accordingly, extension of protection to trade mark number 1933662 (IR Number 1406500) may proceed one month from the date of this decision.
Should the Register be served with notice of an appeal before the extension of protection to the IRDA, I direct that extension of protection will not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s order or direction.
Costs
Both parties have sought an award of costs. As the Opponent has not been successful in their opposition to the extension of protection of the IRDA, I award costs against the Opponent in accordance with Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
26 May 2021
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