Novartis AG v Obvieline

[2014] ATMO 79

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 of international registration designating Australia 1522015(5) (International Registration 1132320) – SYNECTHA – filed by Obvieline

Delegate:	Debrett G. Lyons
Representation:	Opponent: Siobhan Ryan of Counsel, instructed by Davies Collison Cave, Patent & Trade Mark Attorneys Holder: unrepresented; written submission only
Decision:	2014 ATMO 79 Regulation 17A.29 opposition: s 44 considered – trade mark deceptively similar to SYNACTHEN trade mark registered for similar goods – extension of protection to Australia refused. Costs awarded against the Holder.

Background

1. Trade mark application number 1522015 is the Australian designation of an application under the Madrid Protocol by Obvieline (“the Holder”) to extend protection of the trade mark subject of international registration 1132320 to Australia (“the IRDA”).

2. After examining the IRDA, IP Australia advertised its intention to extend protection for class 5 goods in the Australian Journal of Trade Marks on 29 November 2012.

3. Relevant details of the IRDA are:

Application No:         1522015
Filing Date:                25 October 2012
Priority Date:             1 June 2012

Goods:Class 5 : Pharmaceutical preparations for the treatment of osteoarthritis; pharmaceutical preparations, namely intra-articular injectable preparations based on hyaluronic acid for the treatment of osteoarthritis.

(“the Goods”)

Trade Mark:               SYNECTHA

(“the Trade Mark”)

1. On 13 February 2013 Novartis AG (“the Opponent”) filed Notice of Opposition (“the Notice”) to the registration of the Trade Mark pursuant to regulation 17A.29 of the Trade Marks Regulations 1995 (“the Regulations”).

2. The parties served and filed evidence as described later after which the matter came for a hearing in Melbourne on 15 July 2014 before me as a delegate of the Registrar of Trade Marks.  Siobhan Ryan of Counsel, instructed by Christine Lowe of Davies Collison Cave, Patent & Trade Mark Attorneys, represented the Opponent.  The Holder was unrepresented.

3. In the days leading up to the hearing and in accordance with the timetable I set, the parties provided me with outline submissions of their arguments. The Holder relied solely on the written submissions prepared and filed by its attorneys, Simpsons, Solicitors. The Opponent rested its submissions on sections 42(b), 44 and 60 of the Trade Marks Act 1995 (“the Act”).[1]

   [1] I treat the remaining grounds listed in the Notice but not pursued at the hearing to have been implicitly abandoned, albeit that the Holder is free to rely on those grounds should it appeal my decision.

4. Just prior to the hearing the Opponent made an application to file Further Evidence.  That application was supported by the statutory declaration of Christine Lowe[2].

   [2] It has not been necessary to rely on that evidence in reaching my decision and so I have not made any decision about that late application to admit it as Further Evidence.  It is therefore not referred to in the description of the evidence which follows and is not part of the evidence of record in these proceedings.

Onus

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 at [6-26]

2. The relevant date at which the grounds under Regulation 17A.29 must be considered is the filing date of the opposed application.[4]

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Evidence

1. The evidence in support of the opposition comprises declarations from:

Evidence in Support

§Christine Lowe made 10 May 2013 and annexures thereto;

§Martine Roth made 4 July 2013 and annexures thereto;

§Christine Lowe made 1 August 2013 and annexure thereto.

Evidence in Answer

§None

Evidence in Reply

§None

Submissions and Reasoning

1. Ms Ryan’s oral submissions made it plain to me that the Opponent felt most confident with its section 44 ground of opposition. For the reasons which follow I have found that ground has been established.

2. Only s 44(1) of the Act is relevant in this case. It is set out below:

Identical 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.

1. The Opponent relies on its Australian trade mark registration 180478 for SYNACTHEN (“the Registration”) which was filed on 21 May 1963. The Registration has a priority date earlier than that of the IRDA. Accordingly, for the section 44 ground to be established, I would need to be satisfied on the balance of probabilities that the IRDA covers “similar goods”[5] to the Goods and the Trade Mark is “substantially identical” with, or “deceptively similar” to, the SYNACTHEN trade mark.

   [5] As defined in s 14(1) of the Act, namely the same goods or goods “of the same description”.

2. The Registration covers class 5 goods, being “Pharmaceutical and veterinary preparations and substances”.  There is no doubt that from a notional perspective it covers all of the Goods listed in the IRDA.  The Holder’s submissions to the contrary are unpersuasive as actual use is irrelevant to this finding.

3. The remaining question is whether the Trade Mark is substantially identical with, or deceptively similar to SYNACTHEN. The Opponent concedes that the trade marks are not “substantially identical” and I agree. The only issue is whether they are “deceptively similar”, an expression which section 10 of the Act defines as follows:

   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.

4. In Registrar of Trade Marks v Woolworths Ltd[6] (“Woolworths”), French J (as he then was) approved the observation in Wilcox J’s first instance decision in the Woolworths matter[7] that, “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive”.

   [6] (1999) 45 IPR 411. His Honour’s comments were made in the context of closely related goods and services, but are relevant also in the context of “similar goods” as defined in s 14(1) of the Act.

   [7] Woolworths Limited v Registrar of Trade Marks (1998) 42 IPR 615 (at 624).

5. In The Coca-Cola Company v All-Fect Distributors Ltd,[8] the distinction between the terms “to deceive” and “to cause confusion” was considered by the Full Federal Court.  In a joint judgment, Black CJ, Sundberg and Finkelstein JJ said the following at [39]:

   Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:

   “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.

   [8] (1999) 96 FCR 107; 47 IPR 481.

6. In Woolworths[9] French J restated the considerations involved in the assessment of deceptive similarity as follows:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (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) 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] Op. cit. at [50].

7. Finally, so far as “confusion” is concerned, Dodds-Streeton J observed in Tivo Inc v Vivo International Corporation Pty Ltd[10] at [105] that:

   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.

   [10] [2012] FCA 252 (19 March 2012).

8. Accordingly, my task is to determine what is memorable about the two trade marks and so decide, having regard to the similarity of impression created by the marks and to the other factors just mentioned, whether there is a real and tangible likelihood of confusion or deception.

9. The Opponent submits that the features that are likely to be taken away by a consumer are:

   ·     the common prefix "SYN";

   ·     the common and unusual element "-CTH-" in the middle of both trade marks; 

   ·     the similar length of the trade marks; and

   ·     the fact that the trade marks have letters in common which are arranged in a similar order. 

10. The Opponent argues that “a consumer with imperfect recollection will not recall with specificity the exact vowels that are used in each mark when the combination of consonants used in the marks are identical.”  Moreover, when an oral comparison of the trade marks is made it is submitted by the Opponent that:

    … both marks contain the same prefix of "SYN-" and end with "-CTHEN" and "-CTHA".  As observed by Sargant LJ in London Lubricants (1920) Ltd's Application (1925) 42 RPC 264 at 279, there is a "tendency of persons using the English language to slur the termination of words [which] has the effect necessarily that the beginning of words is accentuated in comparison, and … the first syllable of a word is, as a rule, far more important for the purpose of distinction". It is submitted that there is a high likelihood that the ending of SYNECTHA and SYNACTHEN will be slurred so that the "A" and "-EN" sounds sound alike. This same argument holds true for the second syllable of the marks, as the "EC" and "AC" sounds are so similar that when the marks are spoken out loud, it is difficult to distinguish between the two.

11. I am not required to make a meticulous comparison of the trade marks as I would if I were deciding if they are “substantially identical”.   Instead, I must pay attention to the fact that the recognition and remembrance of trade marks depends less on an exact reading and enunciation of the words than it does on a more subtle cognitive process involving the seeing and identification of certain features which are then matched to that which is held, perhaps imperfectly, in memory by persons of ordinary intelligence.[11]

    [11] See, for example, Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd, (2004) 61 IPR 212.

12. Here, the trade marks have no shown meaning but they share a common prefix along with other common letters and syllables.  In my opinion the trade marks have significant similarities.   As noted, the likelihood of confusion rises with the increased similarity of the goods.  Notional usage of both marks means that they might in principle be used on the same and similar “pharmaceuticals”.  I consider that the relevant market for the goods is the medical profession, pharmacists and ordinary members of the public who might choose over the counter pharmaceuticals.  I find that, at least in relation to that last class of consumers of the goods, there is a real and tangible likelihood of confusion created by use of the Trade Mark.

13. The Opponent has accordingly established the section 44 ground of opposition since the Holder has not supplied any evidence and so there is no possible application of sections 44(3) or 44(4) of the Act.

Decision

1. Regulation 17A.34 of the Regulations 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 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. I have found the opposition to be successful.  Accordingly, I refuse to extend protection of the IRDA to Australia in respect of all of the Goods.  In accordance with regulation 17A.34(2), the International Bureau will be notified of this decision as soon as practicable.

Costs

1. As the successful party, the Opponent is entitled to its costs which I award against the Holder as per Schedule 8 of the Regulations.

Debrett G. Lyons
Hearing Officer
Trade Marks Hearings
5 September 2014