Opposition by Zinpro Corporation to registration of trade mark application number 2001269 (Class 5) – synpro+ – in the name of Australia Lockey Biotechnology Pty Ltd

[2021] ATMO 99

TRADE MARKS ACT 1995

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

Re:Opposition by Zinpro Corporation to registration of trade mark application number 2001269 (Class 5) – synpro+ – in the name of Australia Lockey Biotechnology Pty Ltd

Delegate:

Debrett Lyons

Representation:

Opponent:  Siobhan Ryan of counsel, instructed by Davies Collison Cave Pty Ltd

Applicant:  no representation

Decision:

2021 ATMO 99

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pursued under sections 42(b), 44, and 60 pressed – section 44 established – registration refused.

Background

1. This is a decision on the opposition by Zinpro Corporation (‘Opponent’) to registration of trade mark number 2005063 for synpro+ (‘Trade Mark’) filed by Australia Lockey Biotechnology Pty Ltd (‘Applicant’).

2. On 16 April 2019 (‘Relevant Date’), the Application was filed for the following goods:

   Class 5: Pharmaceutical products; tablets (pharmaceuticals); pharmaceutical compositions; pharmaceutical preparations; pharmaceutical substances (‘Goods’)

1. The Trade Mark was examined, accepted for registration, and advertised for opposition purposes on 16 September 2019.  The Opponent filed notice of its intention to oppose registration on 14 November 2019, and a statement of grounds and particulars (‘SGP’) on 11 December 2019.  The Applicant filed notice of its intention to defend the Trade Mark from opposition on 3 March 2020.

2. The parties were given an opportunity to request an oral hearing or file written submissions. The Opponent requested a hearing but after preminary consideration by Hearing Officer Richards a letter was sent to the parties indicating that a hearing did not appear to be necessary and that the Office could determine the matter on the written record.  The Opponent consented and the Applicant did not reply.  Hearing Officer Richards then vacated the hearing date and the matter was subsequently allocated to me, another delegate of the Registrar, for decision.  I have made my decision based on a review of the SGP, the evidence, and the submissions of the Opponent made, I note, by Siobhyan Ryan of Counsel.

Evidence

1. As Evidence in Support the Opponent filed declarations of  Robert Sheffer made 1 June 2020 with exhibits RS-1 to RS-31 and Sally Erica Foreman made 3 June 2020 with exhibits SEF-1 to SEF-22 (taken together, ‘the Evidence’).

2. The Applicant did not file any evidence and, for that matter, did not further participate in these proceedings beyond filing notice of its intention to defend.

Grounds and onus

1. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[1]  The rights of the parties are assessed as at the Relevant Date.[2]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663, 22 (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, 133 (Besanko, Jagot and Edelman JJ).

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

2. The SGP nominated grounds of opposition under ss 42(b), 44, 59 and 60 and for the reasons which follow I have found that it established the ground under s 44.        

Discussion

1. The Evidence shows that Opponent is the owner of the following trade mark registrations:

   Trade mark number:      525089

   Trade mark:  ZINPRO

   Priority Date:                    12 December 1989

   Goods:Class 5: Additives to fodder for medicinal purposes

   Trade mark number:      1175338

   Trade mark:  ZINPRO PERFORMANCE MINERALS

   Priority Date:                    10 May 2007

   Goods:Class 5: Veterinary preparations; mineral supplements for animals

2. Section 44 of the Act provides, inter alia:

   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.

1. Clearly, the priority dates of the Opponent’s registrations predate that of the Trade Mark.  Section 10 of the Act states that ‘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.’  The assessment of deceptive similarity (of the marks) requires  determinaton of the likelihood of deception or confusion which initially entails consideration of the goods or services.  Accordingly, the next issue is comparison of the Goods with those of the Opponent’s registrations. 

2. The Opponent submits that the Goods are similar to the goods covered by the Opponent’s registrations.  Section 14 provides that 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.  I note here that just because all of the goods are in class 5 is not of itself determinative of those matters.  Approaching s 14(a) first, the question is whether any of the goods are the same?  To remind ourselves, the Goods are ‘Pharmaceutical products; tablets (pharmaceuticals); pharmaceutical compositions; pharmaceutical preparations; pharmaceutical substances’, whereas the goods of the registrations are either ‘Additives to fodder for medicinal purposes’ or ‘Veterinary preparations; mineral supplements for animals’. 

3. The Evidence includes the following definitions taken from the Australian Macquarie Dictionary:

• pharmaceutical:  an item, especially a medicine, sold at a pharmacy.

• veterinary: of the medical and surgical treatment of animals, especially domesticated ones.

• medicinal: relating to, or having the properties of, a medicine; curative; remedial; medicinal properties; medicinal substances.

1. For my own satisfaction, I add that ‘fodder’ can be described as food for cattle and other livestock.  As such, all of the registered goods relate to animals but as the Opponent rightly observes, the Goods do not distinguish between pharmaceuticals for human use and pharmaceuticals for animal use.  Whilst the definition of pharmaceutical refers to goods sold at a pharmacy, the Evidence shows that the pharmacy businesses; Chemist Warehouse,  Pharmacy Online,  Pharmacy Direct, and Super Pharmacy, sell medicines for animals and pharmaceuticals and medicines for humans.  That said, none of the animal medicines are for cattle or livestock and I can make a preliminary finding that ‘additives to fodder for medicinal purposes’ are not the same as the Goods.  On the other hand, ‘veterinary preparations and mineral supplements for animals’ are not so limited and are pharmaceutical preparations, albeit ones for animals and so the same as some, but not all, of the Goods.

2. At this point I do not need to demarcate where that identity starts and finishes before looking to s 14(b) and the question of whether the Good are of the same description as the registered goods.  In Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd, the High Court cited with approval the Assistant Comptroller for the United Kingdom Trade Marks Office from Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 at 372:

   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 Re 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 Mark Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description.”

3. The Evidence shows that the pharmaceutical companies; Eli Lilly, Pfizer Inc, Merck & Co and Boehringer, all operate in Australia and all manufacture and sell pharmaceuticals and medicines for human health and animal health.  Moreover, as we have seen, the Evidence establishes that pharmacies in Australia sell medicines for (some) animals and pharmaceuticals and medicines for humans, albeit that I very much doubt that there is much risk of confusion, either online or in-store.  Finally, notwithstanding what I have said about the class 5 heading, the Evidence shows that government publications from the Australian Bureau of Statistics treats ‘pharmaceutical and veterinary products’ as one category and the Industries Assistance Commission reported jointly on ‘Pharmaceutical and Veterinary Products’, these being some measure of how the relevant industries categorise the goods.

4. What follows in my assessment is a borderline finding that the Goods in their broad, undistilled formulation are of the same description as either ‘additives to fodder for medicinal purposes’ or ‘veterinary preparations; mineral supplements for animals’, albeit that had the Applicant engaged in these proceedings it might have sought to amend the Goods in a way to avoid that finding.

5. What now follows is my assessment of the substantial identity or deceptive similarity of the marks.  Unlike deceptive similarity which finds its definition in the Act, assessment of substantial identity has been subject to the ebb and flow of judicial consideration, none of which has by general consensus risen higher than the test advanced by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd :

   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.

6. One reason Windeyer J’s words are so perspicacious is that his Honour was faced with a novel infringement action where the relevant infringing use of the plaintiff’s registered trade mark took the form of moving images in two television advertisments made by the defendant.  His Honour said:

   my opinion is that in each film there are one or more moments when the personified figure of the oil-drop appears in a form that is substantially identical with the registered mark. If the films were arrested at these moments and the image displayed in still form, I consider that use of a substantially identical mark would be established. But that is not what happens. The figure does not stand still. It does not hold its pose or expression for long enough, nor is it sufficiently isolated from its surroundings for long enough to establish infringement by the use of a substantially identical mark.[3]

   [3] At p. 415.

7. Accordingly, although the courts have recently fixated on ‘essential features’ in deciding whether, for example, the word ‘radiology’, or the phrase ‘clininal imaging’,  added anything substantial to another word commonly used by two competing medical service providers,[4] Windeyer J did not have that scenario in mind but, yet, produced a formulation for substantial identity – referrable to essential features – in the more problematic context of moving images, one reason the test has stood fast.  My point is that, taken in its factual context, the original ‘essential features’ test was forged having regard to the impression left on the mind by two marks.

   [4]  Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406.

8. The words ‘performance minerals’ are unlikely to be recalled or leave any lasting impression, nor does the symbol ‘+’ carry any distinctiveness, and so the appropriate comparison which presents to me is that of SYNPRO with ZINPRO.

9. Thirty years after Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd came the decision of Gummow J in Carnival Cruise Lines Inc. v Sitmar Cruises Limited[5] where, once more, the Trade Marks Act 1955 was under consideration, this time the focus on s 40(1) of that Act which stated:

   A person who claims to be the proprietor of a trade mark may make application to the Registrar for the registration of that trade mark in Part A or Part B of the Register.

   [5] (1994) 120 ALR 495.

10. There, Gummow J had to consider that:

    … there is a lack of precise identity between the marks for which Sitmar seeks registration and those in respect of which Carnival is the statutory proprietor…[6]

How slowly the law was evolving before the turn of the century is evident from his Honour’s words which went on to ask:

Will substantial identity suffice? Or may questions of deceptive similarity be considered? Or is visual identity essential? This might be a practical criterion with word marks, but even then, is "Fun Ship" to be differently regarded to "Funship"? The position would be even more difficult with device marks.[7] 

In the result, concluding that

In the present case there would, in my view, be no material distinction to be drawn between "Fun Ship" and "Funship" or between the addition of the definite article or the use of the plural. However, "Fun Ship" is for this purpose a substantially different trade mark to "Sitmar's Funship" and "Fairstar The Funship". 

[6] At p. 57.

[7] At p. 59.

1. I note that before Carnival Cruise Lines Inc. v Sitmar Cruises Limited  this Office had  decided in Re Applications by Stratco Metal Pty Ltd[8] that CLICKFAST and KLICK-FAST were substantially identical.  So, then, it was well appreciated long before the present case that two marks might be substantially identical, though they differed from each other by simple division of words, pluralization, hyphenation, or letter substitution producing words of the same sound.  On that basis, there is very little at all to distinguish SYNPRO from ZINPRO.  Stripped of their flourishes, the Opponent states that they are both invented words.  That may be correct, technically, but the Evidence helps me to understand that the registered mark, ZINPRO, is a zinc methionine complex for addition to animal feed.  It can be seen that ‘zin’ alludes to zinc but how many consumers make that unaided association is not in the Evidence.  My own assessment is that consumers in the market for goods of the kind bearing the Opponent’s trade marks would probably understand that.  The letters ‘syn’ might only be understood in the context of the Goods to allude, perhaps, to some synergistic properties of the pharmaceuticals.  The common element, ‘pro’, like ‘+’, is readily understood by consumers.  Whether, then, the side-by-side comparison of SYNPRO and ZINPRO reveals an essential feature I would answer in the negative.  Whether, taken as wholes, comparing their similarities an differences, they manifestly carry different meanings or connotations I would again answer in the negative.

   [8] (1984) 4 IPR 48.

2. In the result, and as with the goods comparison, by a narrow margin, I find that the Opponent has met the evidentiary onus and shown the Trade Mark to be substantially identical to its registered mark, ZINPRO.

3. It follows that the Opponent has established a ground of opposition under s 44.

Decision and costs

1. The Opponent has established the ground of opposition under s 44.  Under s 55 of the Act, I refuse registration of the Trade Mark for all of the Goods.  Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

2. It is usual for costs to follow the event.  As there is no reason to depart from the general rule, I award costs against the Applicant under section 221 in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.  

Debrett Lyons

Hearing Officer

Delegate of the Registrar of Trade Marks

9 September 2021