Novartis AG v Alpha Helix Inc

[2014] ATMO 45

TRADE MARKS ACT 1995

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

Re:Opposition by Novartis AG to extension of protection to international registration designating Australia 1509839 (International Registration No. 1124156) – VOLTAGEN – held by Alpha Helix Inc.

Delegate:	Bianca Irgang
Representation:	Opponent: Christine Lowe of Davies Collison Cave Holder: Not represented
Decision:	2014 ATMO 45 r.17A.29 and 17A.31 opposition - section 60 established– trade mark likely to cause deception and confusion - protection refused.

Background

1. Alpha Helix Inc (‘the holder’) has applied for extension of protection of International Registration Designating Australia (‘IRDA’) 1509839 in class 5 of the International Classification of Goods and Services. Relevant details of the IRDA are set out below.

Trade mark:  Voltagen

IRDA:  1509839

International Registration:             1124156

Filing Date:  30 May 2012

Specification:  Class 5: Dietary supplements for boosting pre-workout energy; nutritional supplements for boosting pre-workout energy

1. The IRDA was advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 13 September 2012. Novartis AG (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to protection on 3 December 2012. Thereafter the opponent filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’). The holder failed to nominate an address for service in Australia despite being advised to do so. Material was filed by the holder but not in the form required for evidence.

2. I heard the matter in Melbourne on 19 March 2014 as a delegate of the Registrar of Trade Marks. Ms Christine Lowe of Davies Collison Cave appeared for the opponent.

Grounds of Opposition

1. In terms of Regulations 17A.29 and 17A.31 the Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

2. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on the grounds under sections 42(b), 44, 60 and 62A of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that those grounds have not been established.

3. Therefore, the grounds remaining for my consideration are those under sections 42(b), 44, 60 and 62A of the Act. Should the opponent establish one ground of opposition in relation to all of the goods specified in the IRDA, it has succeeded in its opposition and there is therefore no requirement for me to consider the other grounds of opposition.

Evidence

1. The evidence consists of the following statutory declaration:

Declarant	Position	Date Made	Exhibits
Martine Roth	Senior Trade Mark Attorney with the opponent	24 May 2013	1 to 10

Section 60 Ground - Reputation in Australia

1. Section 60 of the Act provides:

2. Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

1. To establish the ground of opposition under section 60, the opponent must demonstrate:

ØThat, at the priority date of the opposed IRDA, another trade mark had acquired a reputation in Australia; and

ØThat because of the reputation of that trade mark, use of the IRDA would be likely to deceive or cause confusion.

10. Unlike section 44 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be similar to the goods of interest to the holder, nor is there a requirement that the trade marks be substantially identical or deceptively similar. It is now for me to determine whether the opponent has acquired a reputation in Australia for its VOLTAREN trade mark which is such that use of the opposed VOLTAGEN trade mark would be likely to deceive or cause confusion. This is more than merely indicating prior use, the opponent’s trade mark needs to be “associated in the minds of the Australian public”[3].

[3] Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

11. The opponent relies upon its use of the word VOLTAREN to establish the ground under section 60. I note from the evidence that VOLTAREN is used by the opponent in a number of different ways. Below are copies from the evidence of the various forms in which the opponent has used its VOLTAREN trade mark:

12.  The Roth declaration states that the opponent first used its VOLTAREN trade mark in Australia on 1 March 1981. The opponent owns a number of trade mark registrations in class 5 which begin with the letters “VOLTA-”. These trade marks include VOLTAREN, VOLTAFLEX and VOLTADINE. As mentioned above, the onus is on the opponent to demonstrate that a reputation in its VOLTAREN trade mark or any of its VOLTA- trade marks existed in Australia before the priority date of the IRDA.

13.  Trade mark reputation was considered by Kenny J in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128 who noted the following statement by Lockhart J:

In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

Kenny J also notes [at 129] that:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product:…

14.  Paragraphs 9 and 10 of the statutory declaration of Martine Roth (‘the Roth declaration’) contain the opponent’s sales figures and advertising expenditure for goods branded with its VOLTAREN trade mark sold within Australia since 2008. These sales figures are in the tens of millions and have been considerably increasing each year since 2008. The advertising figures for the opponent’s VOLTAREN goods are also considerable and remain steady. These advertising figures are backed up by exhibit 5 accompanying the Roth declaration which contains a broad selection of the opponent’s advertisements ranging from TV advertisements, grocery shelf communications, window displays, outdoor advertising, websites and online banners to print media from 2006 until 2012.

15.  The Roth declaration states that its VOLTAREN branded topical rub is the number one brand in Australia for over-the-counter topical rub and the opponent has more than a 30% national market share. It is clear from the evidence that very considerable numbers of the opponent’s VOLTAREN branded goods are sold across Australia by prominent retailers.  Exhibit 4 contains a number of invoices to the opponent’s grocery wholesalers and pharmacy wholesalers which include some major Australian retailers including Woolworths Limited, Big W, Franklins Pty Ltd, Symbion Health Limited and Grocery Holdings Pty Ltd.

16.  In exhibit 6 the opponent has provided copies of articles which independent third parties (such as NPS Medicinewise) have written and which made mention of the opponent’s VOLTAREN branded goods. These publications promote the use of the opponent’s VOLTAREN branded goods by name and generally use the opponent’s VOLTAREN goods as the primary example of a diclofenac pain reliever to educate the reader.

17.  It is clear from the evidence that the opponent has engaged in a considerable level of advertising which has resulted in growing sales as the years have progressed. It is also clear that the opponent has been using its VOLATREN trade mark for a period of time which predates the opposed trade mark’s priority date. I am satisfied that within the Australian marketplace the opponent does have a very considerable reputation in its VOLTAREN trade mark for topical pain relievers. However it needs to be determined if, given this reputation in Australia, use of the IRDA would be likely to deceive or cause confusion.

18.  This comes down to my being satisfied that there is a “finite and non-trivial” risk of deception or confusion[4]. The Registrar’s delegate in Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd[5] observed that:

[4] Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson)

[5] (2010) 85 IPR 647

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

19.  Ms Lowe, representative for the opponent, directed my attention to Australian Woollen Mills Limited v F S Walton & Company Limited (1937) 58 CLR 641 at 658, where Dickson and McTiernan JJ stated the following:

"An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same… the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any higher perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard".

20.  Ms Lowe then went on to comment:

Potential buyers of the class 5 products covered by the Opposed Application are likely to be any consumer who are interested in physical exercise activities. It is submitted that this necessarily includes both athletes as well as the ordinary person who exercises. It is submitted that this class of consumers would ordinarily purchase these types of products in a fairly swift and low involved manner looking for brand cues such as the trade mark paying little attention to the detail of the word itself. As VOLTAREN and Voltagen only differ by one letter and are of identical length, consumers acting in a swift manner are likely to be confused into thinking that goods bearing the Voltagen mark originated from the Opponent. This confusion is exacerbated due to the substantial reputation that the Opponent has acquired in its VOLTAREN mark as at the priority date of the Application in relation to a variety of over-the-counter pharmaceutical preparations. As a result of its reputation, there is a strong likelihood that consumers will be confused into thinking that the Opponent has extended its product offering to a drinkable format.

Furthermore, research has shown that athlete running marathons consumer analgesics (ie. Pain killers) before a marathon to prevent pain inhibiting their performance: Roth declaration exhibit 7. The types of pain killers used by athletes for this purpose include pain killers and over-the-counter drugs that contain diclofenac as one of the active ingredients: Roth declaration exhibit 8. The active ingredient of the VOLTAREN goods is diclofenac potassium. Based on the foregoing, it is submitted that there is a reasonable likelihood that athletes or any persons enagaging in physical activity have taken VOLTAREN for the purpose of boosting performance and are likely to continue to do so. Therefore, if a similar mark is used in connection with goods used for boosting or improving performance in exercise, confusion is likely to occur. Due to the similarities between the marks VOLTAGEN and VOLTAREN, the use to which people have put the VOLTAREN products to, and because the VOLTAGEN goods are intended to be used for boosting pre-workout energy, it is submitted that confusion is likely to occur.

21.  When considering the similarities between the trade marks I note that the opponent’s VOLTAREN trade mark comprises of eight letters. The holder’s trade mark comprises of eight letters. The trade marks contain a number of visual and aural similarities which only serve to emphasise that, phonetically, it is probable that the trade marks would be pronounced similarly by the general monolingual Australian consumer who also have a propensity to slurring the end of words. Both trade marks also contain a number of visually and aurally similar elements and only differ in a single letter which is buried towards the end of the word.

22. Given the significant reputation of the VOLTAREN trade mark and the degree of similarity between the respective trade marks I am satisfied use of the IRDA would be likely to cause confusion, as consumers are likely, as the opponent submitted, to believe this is a related product from the maker of the VAOLTAREN topical rub. Therefore, the opponent has established its ground of opposition under section 60. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the notice although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

23.  Subregulation 17A.34(1) provides:

17A.34(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

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

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

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

24. As the opponent has established a ground of opposition under section 60 in relation to all the goods listed in the IRDA, I refuse to extend protection.

Costs

25. 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 holder.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
28 May 2014