Nutrition for Life International, LLC v Merck & Co Inc

[2003] ATMO 55

TRADE MARKS ACT 1995

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

Re:Opposition by NUTRITION FOR LIFE INTERNATIONAL, LLC. to registration of trade mark applications 836152(42), 836153(42) - NUTRITION FOR LIFE, MSD NUTRITION FOR LIFE - filed in the name of MERCK & CO., INC.

Date of Decision:

29 September 2003

Delegate:

Claudia Murray

Representation:

Opponent
Robert Kelson, of Callinan Lawrie, Patent and Trade Mark Attorneys
Applicant
Sean McManis, of Baldwin Shelston Waters, Patent and Trade Mark Attorneys

Decision:

1. Section 52 Opposition: registration allowed - s 55(b)

2. Costs awarded against opponent

Background

1. Merck & Co., Inc (the applicant) filed trade mark applications numbered 836152 and 836153 on 23 May 2000. The subject trade marks are, respectively:

   NUTRITION FOR LIFE

   MSD NUTRITION FOR LIFE

2. The applications were originally filed in classes 9, 16 and 42 of the International (Nice) Classification of Goods and Services. No grounds of rejection under the Trade Marks Act 1995 (the Act) were raised against the applications during examination, and they were advertised accepted for registration in the Australian Official Journal of Trade Marks, on 21 December 2000.

3. On 20 March 2001, Nutrition for Life International, Inc. (the opponent) filed notices of opposition to registration of the trade marks. The opponent, which is based in Texas, USA, has since changed its name to Nutrition for Life International, LLC. Ten grounds of opposition were listed in the notices.

4. The opponent's evidence in support and applicant's evidence in answer was filed and served. At this point, the applicant requested that the goods classes 9 and 16 be deleted from its applications, "without regard to the opposition", in order to "more specifically identify its services of interest". This left both applications covering only services in class 42, which the applicant also requested be amended to:

   Professional advisory and consultancy services for the assistance of patients suffering illnesses such as HIV, including dietetic and medical advisory and consultancy services

5. The opponent then served and filed its evidence in reply. At the end of the process, the matter came to a hearing before me, as a delegate of the Registrar, in Canberra, on 5 June 2003. Mr Sean McManis, Trade Marks Attorney, of Baldwin Shelston Waters, Sydney, represented the applicant by telephone. The opponent was represented via video link by Mr Robert Kelson, assisted by Ms Florence McFarlane, both Trade Marks Attorneys, of Callinan Lawrie, Kew, Victoria.

   Evidence

   Evidence in support

6. The opponent's evidence in support of its opposition comprises a declaration by Catherine Saxelby, dated 14 March 2002. Ms Saxelby is an Accredited Practising Dietitian and member of the Dietitian's Association of Australia, the Australian Nutrition Foundation, the Australian Society for the Study of Obesity, and the Australian Institute of Food Science and Technology. She has held a range of advisory roles, including Honorary Governor of the Sydney University Nutrition Research Foundation, is a speaker on nutrition and health matters on radio and television, and has written columns for magazines such as Family Circle.

7. Ms Saxelby explains in her declaration that she has written seven books on food and health, one of those books being Nutrition For Life. She declares that approximately 250,000 copies of Nutrition For Life, which was issued in three editions, in 1986, 1993 and 1999, have been sold. An estimated 120,000 copies were sold of each of the first two editions, with a further 18,000 copies of the third edition being sold. Ms Saxelby further declares that she has advertised the book on her website, that publicity and media reviews were arranged by her publishers in association with the launch of each edition, and she has publicised her book by appearing on television programs such as Good Morning Australia and This Morning.

8. Exhibits CS-1 to CS-3 accompany Ms Saxelby's declaration, being copies of two editions of Nutrition For Life, and material from her Foodwatch website.

   Evidence in answer

9. The applicant's evidence in answer comprises two declarations. The first is a declaration by Stephen Townsend, dated 17 October 2002. Mr Townsend is HIV National Manager in the marketing department of Merck Sharp & Dohme (Australia) Pty Limited. That company was incorporated in New South Wales in 1956, and is a financially controlled subsidiary of the applicant, which is a US company.

10. Mr Townsend explains that his company has offered a service known as NUTRITION FOR LIFE since August 2000. The service, which has been provided in Victoria, New South Wales and Queensland, involves counselling and advice, including dietetic counselling and advice, for persons suffering from HIV/AIDS. Mr Townsend also explains that the letters MSD are a common and regularly used abbreviation for his company's name, and that such use "probably dates back to 1956". He declares that MSD is constantly and consistently used on the full range of his company's products and services. He also declares that he has not been aware of the occurrence of any confusion or association with any third party's publications or products, during the period that the company has provided services under the names NUTRITION FOR LIFE and MSD NUTRITION FOR LIFE.

11. Exhibits ST-1 and ST-2 accompany Mr Townsend's declaration, being copies of NUTRITION FOR LIFE advertising material, and pages from the applicant's website.

12. The applicant's second declaration in answer is by Sean Francis McManis, Solicitor, dated 18 October 2002. Annexures A and B to Mr McManis' declaration are details of the applicant's Australian and overseas trade mark registrations which include the letters MSD.

    Evidence in reply

13. The opponent's evidence in reply is in the form of a brief declaration by Florence McFarlane, Registered Trade Marks Attorney, dated 1 April 2003. Ms McFarlane's declaration goes to deficiencies of form and content she has perceived in both the declarations comprising the applicant's evidence.

    Grounds of opposition

14. Prior to the hearing, on 3 June 2003, Mr Kelson advised the applicant and this Office that, of the ten grounds listed in its notice, the opponent would be relying on grounds of opposition under sections 58 and 60.

15. Section 58 of the Act provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. In Trade Mark Law in Australia (2000), Elkington, Hall and Kell say of ownership disputes, at page 77:

    The battle therefore is between the party who was first to file and an opponent who claims to have been first to use. In such cases the first user prevails. But this ground of opposition is tightly confined. The use must have been commercial use, as a trade mark, of the very mark applied for or one extremely close to it, and for the goods or services of application or "the same type of thing".

16. To satisfy section 60, an opponent must demonstrate that, at the time of filing of the opposed application, it had a reputation in a substantially identical or deceptively similar trade mark, such that use of the applicant's trade mark would likely cause the public to be deceived or confused. The opponent's trade mark need not be subject of an application or registration, in order to be able to be relied upon under this section.

17. Section 58, which relates to ownership of a trade mark, and section 60, which deals with reputation in a trade mark, share a single, vital thread. In both, an opponent's success in toppling an applicant's claim to a trade mark depends upon its ability to demonstrate the existence of a substantially identical (section 58), and/or deceptively similar (section 60) sign, which has been used as a trade mark, prior to the applicant's filing date. Section 17 of the Act provides:

    What is a trade mark?

    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.

    Note:    For sign see section 6.

18. The basis for the opponent's evidence is a declaration by a third party, Catherine Saxelby, who attests to sales and publicity generated by three editions of a book written by her, entitled Nutrition For Life. Both parties' submissions at the hearing primarily focused upon whether sales and publicity for the book represented use of its title in a trade mark sense, that is, in the course of trade, such as could be relied upon by the opponent in terms of sections 58 and 60. Mr Kelson, for the opponent, cited the following cases in support of his arguments in the affirmative: Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 432-4; Twentieth Century Fox Film Corporation v Die Hard [2001] ATMO 43 (25 May 2001) (the Die Hard case); Musidor BV v Robert William Tansing (1994) 29 IPR 203 (The Rolling Stones case); Polar Music International AB 714 F 2d 1567 (1983) (the ABBA case).

19. Mr Kelson argued that there was a strong parallel between the circumstances of the present opposition, where the book Nutrition For Life was issued in three editions, and those of the Die Hard case, which dealt with a series of three movies. There, Hearing Officer Iain Thompson considered in some detail the precedent ABBA and The Rolling Stones cases. He came to the conclusion that the words DIE HARD, as used by the Twentieth Century Fox Film Corporation in respect of a certain series of its movies, functioned as a trade mark. He said, at page 14:

    I think that motion pictures, if there is a series of them, fall into the same genus of publication as the newspapers, sound recordings, magazines and newspapers referred to above. By analogy, therefore, the titles of motion picture films should also be capable of functioning as trade marks. Whether particular movie titles do function as trade marks, will, naturally, depend on the evidence how such indicia have been used and whether such indicia have, in fact, developed trade mark significance. Here the evidence shows that there is a DIE HARD series of films and that the series is only associated with Fox - it is difficult, for example, to see how the word DRACULA could be a trade mark in respect of motion pictures since the word is associated with the motion pictures of many different people. The evidence shows that the public have come to expect a certain `action movie' content, style and level of production value, violence, graphical stunt and propensity to use swear words within the DIE HARD movies - I refer again to the evidence that movie critics use the words DIE HARD as a touchstone. The public, thus, understands the words as indicating the character, quality and source of the goods. The Gillies declaration refers to a possible future Die Hard motion picture. The name of the series of motion pictures is not descriptive of their content and each motion picture, while incorporating the words in its title, and (the evidence shows) being generally referred to by the public as Die Hard I, Die Hard II and Die Hard III, has its own title.

20. Mr McManis, for the applicant, cited in response: Mother Care UK Limited v Penguin Books Limited (1988) RPC 113; Sports Break Travel Pty Limited v P & O Holidays Limited (2000) FCA 924; Twentieth Century Fox Film Corporation v Michael F Durkan (2000) ATMO 5; Fortuity Pty Limited v Ereneos (Renos) Savvides (2000) ATMO 89 (Trim For Life). Coincidentally, Hearing Officer Thompson also decided this last opposition. He found that the book title Trim For Life did not function as a trade mark. He said, at page 4:

    Fortuity also argued that the applicant's claim to proprietorship of the trade mark was displaced by the title of the book TRIM FOR LIFE. As far as I can see, the title is not being used as a trade mark. A trade mark belonging to Allen & Unwin appears on the cover of the book exhibited to the applicant's evidence. I am not aware of any precedent where the title of a book has been accepted to be trade mark usage in terms of ownership or proprietorship, neither was any precedent for such an unusual approach suggested to me at the hearing by Mr Chrysiliou. However, Mr Chrysiliou did argue that the authorship of the book title should displace the applicant's claims to authorship of the trade mark. I am not clear why this should be so. It seems to me that if I used the trade mark GREAT EXPECTATIONS on perfumery, and I was the first to do so for perfumery, then I should be the author of the trade mark in respect of those goods, irrespective of some book that might carry those words as its title.

21. Under the Trade Marks Act 1955, the applicant for registration bore the onus, both in examination and in opposition proceedings, of demonstrating that its trade mark qualified for registration. That onus has shifted under the Trade Marks Act 1995. Lahore, Patents, Trade Marks and Related Rights (2001), says at paragraph 66,320:

    Under the 1955 Act it was well established that in opposition proceedings the onus of proof lay with the applicant. The opponent needed only to establish that there were matters for the applicant to answer. (Re Appn by Karachi Aerosol Co Ltd(1985) 6 IPR 33 at 34; Camelot Design Industries Group Pty Ltd v Bernard Leser Publications Pty Ltd(1987) 9 IPR 596 at 598.) A “reversed” onus of proof operates under the 1995 Act. The applicant is entitled to acceptance unless grounds for opposition are established — “[t]he onus is on the opponent to convince the registrar of the validity of the grounds of opposition that they have cited." (Trade Marks Office Draft Manual of Practice and Procedure, Part 46.)

22. The question of reversed onus under the new legislation was explored in some detail by the Full Federal Court in Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 (Woolworths). In Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901 (27 August 2003), a very recent case before a single judge of the Federal Court, Bennett J dismissed the appeal, finding that the appellant had not adduced any convincing evidence to support its opposition case. Citing Woolworths, she observed at paragraph 129:

    In oppositions (and appeals from them) the question of onus is particularly important.

23. Given this heavy onus upon it, the evidence provided by the opponent in support of its case has been minimal. At the hearing, Mr Kelson emphasised the significance of the fact that Ms Saxelby's book was issued in three editions. He submitted that this would naturally lead the public to expect a certain content, style and quality when confronted with the words NUTRITION FOR LIFE, applied to nutritional information, parallel to the expectations created in the public mind of a certain style of action movie by the words DIE HARD. This, he said, must lead me to the conclusion that the term NUTRITION FOR LIFE was being used by Ms Saxelby, not merely as the title of one of her books, but as a trade mark for services, similar to the applicant's, of the provision of information on nutritional issues.

24. There is nothing in the opponent's evidence to substantiate this claim. If anything, the evidence detracts from such a suggestion. It shows that Ms Saxelby does indeed make nutritional information available to the public, but that she does this under her own name, as a guest speaker and writer in the media, and on the Internet via her Foodwatch website. Further, the evidence shows that, as was the case in Trim For Life, trade marks owned by the publishers of the editions of the Nutrition For Life book appear on their covers quite independently of the book's name. I agree with Mr McManis that, were I to accept the opponent's claims upon this issue, I would be endorsing a situation not envisaged by current law - that any author whose book is published automatically acquires trade mark rights in its title.

25. I find that Ms Saxelby has not used the title of her book, Nutrition For Life, as a trade mark, and that, accordingly, the opponent is not entitled to rely upon the book's existence in pressing its grounds of opposition under sections 58 and 60 of the Act. These grounds of opposition must therefore fail.

    Decision

26. I have found that the opponent has not succeeded under either of the grounds pursued at the hearing. For completeness, and as I have no basis to be satisfied that any of the other grounds raised in the notices of opposition have been made out, I find each of those grounds also to be unsuccessful. Trade mark applications numbered 836152 and 836153 may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Costs

27. Both sides have claimed their costs in the oppositions. Further, Mr McManis argued that as "the applicant [had] taken all possible steps to seek an amicable resolution in the face of two oppositions lacking foundation", it should be awarded costs as though they were two completely separate matters. In considering this proposal, I note that although at the beginning and end of the process, with the filing of two notices of opposition and the payment of two hearing fees by each party, the oppositions have been treated as having separate identities, the evidence is still common to both. Under these circumstances, and in the absence of compelling arguments that might justify a more punitive approach, I hereby award costs in these matters in accordance with the official scale, against the unsuccessful opponent, Nutrition for Life International, LLC.

    Claudia Murray
    Hearing Officer
    Trade Marks Hearings
    29 September 2003