Nurofen Limited v Use Techno Corporation

[2005] ATMO 68

TRADE MARKS ACT 1995

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

Re:Opposition by Nurofen Limited to registration of trade mark application 978635(3) GLUSULIN proceeding in the name of Techno Corporation.

Delegate:	Ian Thompson
Representation:	Opponent Trevor Stevens of Davies Collison Cave. Applicant Written submissions by Helen Peachey of Hodgkinson McInnes Pappas.
Decision:	1. section 44 – goods not shown to be similar, trade marks not substantially identical or deceptively similar – opposition not established.

Background

1.   Techno Corporation ('the applicant') of Kyoto, Japan, has filed application to register a trade mark, current details of which are:

App No:  978635

Filing Date: 17 November 2003 (Convention claim: 11 June 2003 US 78/260981)

Acceptance Date:                   29 January 2004

Goods:Class: 3  Food additives

Trade Mark:  GLUSULIN

2. On 29 July 2004, after seeking and receiving extension of time in which to do so, Nurofen Limited of Nottingham, England ('the opponent'), filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice includes grounds under section 44 of the Trade Marks Act 1995 (‘the Act’) which were pursued at the hearing of the matter.

3.   Evidence in support was served and filed – as was evidence in answer and evidence in reply. 

4.   A hearing was held before me, as a delegate of the Registrar of Trade Marks, in Sydney on 19 July 2005.  Trevor Stevens of Davies Collision Cave represented the opponent.  The applicant relied on written submissions by its attorney, Helen Peachey of Hodgkinson McInnes Pappas.

Evidence

5.   There are three declarations which are by Sonia Fennel, Company secretary of opponent, in support and by Kenneth John McInnes, attorney for the applicant, in answer.  There is another declaration by Sonia Fennel, in reply.

6.   The first Fennel declaration brings into evidence the opponent’s trade mark registration number 74436 which was relied on at the hearing.  Details of this registration are:

Reg Number  74436
Priority date:  1 April 1939
Goods/Services:  Class: 3 A preparation of glucose for use as food
Trade Mark:  GLUCODIN

7. Relevant to section 44, the evidence from both parties involves a detailed comparison of trade mark registrations in Australia which are said to be more or less similar or dissimilar to the trade marks of the parties. While this material is helpful, it is not, of course, binding and so while it is of interest I will not further refer to it. The evidence is lacking where it would have been most helpful to me and that is the question of whether the goods of the parties are similar goods.

Section 44 – Discussion

8. Section 44 of the Act relevantly provides:

44  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.

9.   The date of registration of the opponent’s trade mark registration is earlier than the priority date of the application.  Accordingly, the factors which I must consider are whether the goods nominated on the application and those registered ones on which the opponent relies are similar goods and whether the trade marks of the parties are deceptively similar as substantial identity was not argued at the hearing.

10.  What constitutes similar goods is defined by section 14 which states, inter alia:

14  Definition of similar goods and similar services

(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.

11.  The question of what constitutes goods of the same description has received extensive judicial consideration.  In the Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 1A IPR 465 at 467, Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ said:

The fact that examination of the nature of the applicant's goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant's goods are not specified by the regulations as being within the same class of goods: see Re Australian Wine Importers Ltd (1889) 41 Ch D 278 at 291; Reckitt & Colman (Aust) Ltd v Boden (1945) 70 CLR 84 per Latham CJ at 90. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in Re Jellinek's Application (1946) 63 RPC 59; 1A IPR 393. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's case the assistant comptroller elaborated on the observations of Romer J in the following manner.

In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application Romer J classified these various factors under three heads, viz the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are "of the same description".

Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 at 372.

Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Aust) Ltd v Boden, supra, at 94 when he said:

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. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments.

12.  The opponent’s goods are, ‘A preparation of glucose for use as food’; the applicant’s goods are, ‘Food additives’.  Glucose does not appear on a list of food additives, in the opponent’s evidence, although glucose oxidase does (as an anti-oxidising agent).

13.  Foods are made up out of many thousands of different chemicals which occur naturally therein – an additive may or may not be such a naturally occurring chemical, but the evidence does not mention any additives which are specifically a food in themselves.  Some foods which a lay-person might think of as a food additive (such as sugar) do not appear on the list of food additives as either sugar or sucrose.

14.  The question, then, of whether the term ‘food additives’ might embrace goods included in the opponent specification, ‘A preparation of glucose for use as food’ is one which is highly fraught.  However, I have the solace that it is for an opponent to establish its opposition to my satisfaction, and – rather than make any decision on the matter – I will find that if these goods are of the same description, the opponent has not in its evidence established this fact to my satisfaction.  However, my natural and uninformed reaction is that the goods are not of the same description – one is a chemical additive apparently for use in domestic or industrial food preparation and the other is a final product ready to ingest.

15.  At this juncture I will note that the opponent has not established its opposition – however, for completeness, I will also consider whether the trade marks are deceptively similar.

16.  Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, (1937) 58 CLR 641 at page 658 say:

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. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

17.  Mr Stevens invited me to the comparison of trade marks by splitting them into their syllables GLU CO DIN as opposed to GLU SU LIN.  However, I think that this approach is somewhat artificial and that the opponent’s trade mark more naturally splits itself into the components GLUCO DIN – the prefix ‘gluco’ suggesting something about the character or quality of the goods and thus being how it should be remembered and recalled and being how the trade mark naturally divides itself.  The component GLUCO is not present in the applied-for trade mark.  The prefix in the applied for trade mark might be perceived by some as being an oblique reference to ‘glucose’ or the ‘gluco-’ prefix but this approach might be beginning to draw a long bow.

18.  Additionally, if the approach suggested by Mr Stevens has any validity, it might be more sensible to split the applicant’s trade mark into the components GLU SULIN.

19.  I do not think that the question of whether or not the prefix ‘glu’ is common to the trade is relevant.  The more pertinent observation is that the prefix ‘gluco’ obviously has some form of reference to the character or quality of the opponent’s goods and that oppositions which are founded on the perceived similarity of this prefix to the occurrence of a similar prefix in another trade mark will obviously encounter similar difficulties to those in Coca Cola Co of Canada v Pepsi Cola Co of Canada (1940) 59 RPC 127 where the word COLA was discounted for the purposes of comparison.

20.  Taking the above factors into account, the combined differences between the suffixes and prefixes of the trade marks militate against the likelihood of deception or confusion arising from the concurrent use of the trade marks.

21.  The trade marks are not deceptively similar.

Decision

22. Section 55 of the Act provides:

55. 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.

1. The trade mark application may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

   Costs

   24.  I order costs against the opponent as per the schedule to the trade mark regulations.

   Ian Thompson
   Hearing Officer
   Trade Marks Hearings

   21 November 2005