Opposition by Biofarma to registration of trade mark application 1782506 (5) – NURAMEL - in the name of Ramsay Health Care Investments Pty Limited

[2018] ATMO 191

TRADE MARKS ACT 1995

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

Re:Opposition by Biofarma to registration of trade mark application 1782506 (5) – NURAMEL - in the name of Ramsay Health Care Investments Pty Limited

Delegate:	Nicholas Smith
Representation:	Opponent: FB Rice Pty Ltd Applicant: Spruson & Ferguson
Decision:	2018 ATMO 191 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Biofarma (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Ramsay Health Care Investments Pty Limited (‘Applicant’): 

Application Number:	1782506
Filing Date:	11 July 2016
Goods:	Class 5: Dietetic substances adapted for medical use; food for babies; infants' foods; infant formula; milk foods for infants (‘Applicant’s Goods’)
Trade Mark:	NURAMEL	(‘Trade Mark’)

2. Following the advertisement on 1 December 2016 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 1 February 2017.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 27 February 2017 (later amended on 5 April 2017). The SGP (as amended) raised the ground of opposition under s 44 of the Act. The Applicant filed a Notice of Intention to Defend on 3 May 2017.

Evidence

3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 15 June 2017.  This evidence consists of a declaration by Clotilde Piednoel, Legal Counsel of the Opponent, made on 14 June 2017 together with Annexures CP-1 and CP-2 (‘Piednoel Declaration’).

4. The Applicant filed Evidence in Answer (‘EIA’) on 3 October 2017.  This evidence consists of a declaration made on 3 October 2017 by Daniel James Wilson, trade mark attorney with Spruson & Ferguson, the Applicant’s representative, with Exhibits DJW-1 to DJW-4 (‘Wilson Declaration’).

5. The Opponent filed Evidence in Reply (‘EIR’) on 24 October 2017.  This evidence consists of a declaration made on 24 October 2017 by Lara Townsend Gun, solicitor and trade mark attorney with FB Rice Pty Ltd, the Opponent’s representative, with Annexures LTG-1 to LTG-3 (‘Gun Declaration’). 

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities at that time.  By letter issuing from IP Australia on 30 January 2018 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  On 28 February 2018 the Opponent filed its submissions (‘Opponent’s Submissions’).  The Applicant did not file any submissions.

7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

The Opponent

8. The Opponent is a manufacturer and marketer of pharmaceutical products.  The Opponent was established in 1954 and is based in France.

9. The Opponent is, amongst others, the owner of the trade mark listed below (‘Opponent’s Trade Mark’).  The goods for which the Opponent’s Trade Mark is registered are referred to as the ‘Opponent’s Goods’. 

Number	Trade Mark	Priority Date	Goods
1672839	MUNAREL	11 Aug 2014	Class 5: Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for humans and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides

10.     The Piednoel Declaration contains the following claims/statements:

·    The Opponent’s Trade Mark is registered in relation to the same or similar goods as the Opponent’s Goods.  The Opponent’s Trade Mark was devised in 2014-15 in relation to a product not yet marketed. 

·    Due to the strong aural and visual similarities between MUNAREL and NURAMEL, both of which cover goods that are the same or closely related, consumers are likely to be confused about the trade source of those goods.

11.     The Gun Declaration contains the following claims/statements:

·    The Declarant has conducted a search of the Register of Trade Marks for trade marks in class 5:

o   sharing the prefix ‘MU’ and the suffix ‘REL’.  There are no entries;

o   sharing the prefix ‘NU’ and the suffix ‘REL’. There is one entry;

o   sharing the prefix ‘MU’ and the suffix ‘REL’. There is one entry, being the Opponent’s Trade Mark; and

o   sharing the prefix ‘NU’ and ‘MEL’.  There is one entry, being the Opposed Mark.  

·    The presence of pharmaceutical products with similar names has resulted in errors in dispensing, administering or monitoring such products. [1]

[1] I note that the fact that the relevant goods are pharmaceuticals (and hence there could be negative consequences arising from consumer confusion) does not have any special relevance in this matter, see the discussion in Merck KGaA v Generic Health Pty Ltd [2007] ATMO 1, [27]-[38].

The Applicant

12.     Although no details of the Applicant are provided in its EIA, I am aware that the Applicant is a provider of health care facilities. 

13.     The Wilson Declaration contains a series of extracts from searches of the Register of Trade Marks, concluding that there are 33 pending and registered marks in class 5 sharing the suffix ‘MEL’, 67 sharing the suffix ‘REL’, 39 sharing the element ‘NU’ and 346 sharing the prefix ‘MU’.

Grounds of Opposition, Onus and Standard of Proof

14. As indicated above in the SGP the Opponent nominated the s44 ground of opposition the Act. To successfully oppose the application the Opponent needs to establish this ground.

15.     The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is 11 July 2016 (‘relevant date’), being the priority date of the application in Australia.[4]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Discussion

Section 44

16. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

Section 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)it 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).

(2)…

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

Note:  For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)             the similar goods or closely related services; or

(ii)            the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.

Section 10 - Definition of deceptively similar

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.

1. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

   ·    has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·    is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·    is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

2. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

3. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark.  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  I consider that at least some of the goods for which the Opponent’s Trade Mark is registered are similar to some of the Applicant’s Goods, as both marks are registered for, in essence, dietetic substances adapted for medical use and food for babies.  The first and third requirements are satisfied. 

   Substantially identical and/or deceptively similar

   20.      I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   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.[5]

   [5] (1963) 109 CLR 407, [12].

   21.     The Trade Mark and the Opponent’s Trade Mark are set out below:

   NURAMEL              MUNAREL

   22.     On a side by side comparison there is a clear difference between the respective trade marks, in that they are clearly different words.  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

   23.      The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[6]

   [6] Ibid [13].

   24.      Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[7] at [49]; Australian Woollen Mills[8] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[9] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[10] at 594 – 595.

   Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[11]

   [7] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [8] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [9] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

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

   [11] [2012] FCA 1022, [38]-[46].

   25.      The Opponent’s submissions on the question of similarity (both substantial identity and deceptive similarity) cover the following areas:

   ·The Trade Mark is an exact anagram of the Opponent’s Trade Mark and the decision to adopt an exact anagram is evidence that the Applicant, which is a competitor of the Opponent, made a deliberate decision to copy the Opponent’s Trade Mark;

   ·The respective trade marks contains the same number of letters;

   ·The respective trade marks share the suffix ‘EL’;

   ·The first two letters ‘NU’ are phonetically similar to the first two letters ‘MU’;

   ·The second two letters ‘RA’ are phonetically similar to the second two letters ‘NA’;

   ·The first four letters of each word ‘NURA’ and ‘MUNA’ have a common pattern of similar-sounding consonant/same vowel sound/consonant/same vowel sound and both are of two syllables – i.e. ‘NU-RA’ and ‘MU-NA’;

   ·The suffix of each word is the same, namely ‘EL’ and each suffix is preceded by a hard consonant, namely ‘M-EL’ and ‘R-EL’;

   ·Both words have an identical number of syllables with the emphasis placed upon the same consonants and identical vowels see  NU-RA-MEL and MU-NA-REL; and

   ·As both marks are invented words, there is a much greater possibility of deception and confusion between such words.

   26.      The mere fact that the marks are an exact anagram is not a basis to conclude that the Applicant intended to copy the Opponent’s Trade Mark or otherwise chose to take advantage of the Opponent’s Trade Mark.  There are many anagrams that are very different visually, aurally and conceptually.  The Opponent’s submission that the Applicant intended to copy the Opponent’s Trade Mark is particular unpersuasive given that the Opponent does not presently use the Opponent’s Trade Mark for any actual product.  While the respective trade marks are registered for some similar goods, to suggest the Applicant nefariously chose the Trade Mark in an attempt to take advantage of any confusion with the Opponent’s Trade Mark, despite not knowing what product the Opponent’s Trade Mark will be applied to, is not a submission that I accept.

   27.      As the respective marks are invented words and I have been provided with no evidence of the meaning, if any, of the elements comprising the respective marks, I have no basis to conclude that the marks are conceptually similar.  

   28.      With respect to the question of the aural and visual similarity between the marks that could result in consumer confusion, I understand the Opponent’s submission to be that the respective marks could be read and spoken as three syllables, each of which, depending on the emphasis, contains phonetic similarities.  However, another way of looking at it is this: The respective marks contain three syllables, each of which is visually different (Nu-Ra-Mel and Mu-Na-Rel) and each of which sounds similar but not identical.  In the absence of any common elements and clear visual differences between the marks, the fact that the respective trade marks are both of three syllables and have some phonetic similarities in the manner they are pronounced is not a sufficient basis for me to conclude that the marks are deceptively similar.  

   29.      I find that as a result of the significant visual, aural and conceptual differences between the marks when considered as a whole, even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the Opponent’s Trade Mark. 

   30. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Decision

   31.      The Opponent has failed to establish the ground of opposition it nominated in the SGP.  Trade Mark application no. 1782506 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

   Nicholas Smith
   Hearing Officer
   Oppositions and Hearings
   27 November 2018