Pfizer, Inc v Paul Roberts

[2001] ATMO 3

TRADE MARKS ACT 1995

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

Re:Opposition by Pfizer Inc to registration of trade mark 774842(32) – NIAGRA – in the name of Paul Roberts.

Background

This issue arises out of the filing, on 2 October 1998, by Paul Roberts, (‘the applicant’) of Potts Point, New South Wales, of application 774842 in Class 32 of the International (Nice) Classification of Goods and Services to register the word NIAGRA in plain script in respect of the goods, “soft drinks”.

Following examination of the application, it was accepted for registration and advertised as such in the Australian Official Journal of Trade Marks on 4 February 1999.

On 4 May 1999, within the time allowed to do so, Pfizer Inc (‘Pfizer’) of New York, United States of America, filed Notice of Opposition to the registration of the trade mark.  The Notice of Opposition states several grounds of opposition and, for reasons that will become obvious, it is convenient to state those now.

(a)     Section 41: the Opposed Trade Mark is not capable of distinguishing the Applicant’s goods specified in the Application from the goods or services of other persons;

(b)     Section 42(b): the use of the Opposed Trade Mark would be contrary to law;

(c)     Section 43: the use of the Opposed Trade Mark in relation to the goods specified in the Application would be likely to deceive or cause confusion because of one or more connotations that the Opposed Trade Mark or a sign contained in the Opposed Trade Mark has;

(d)     Section 44(1): the Opposed Trade Mark is substantially identical or deceptively similar to a trade mark which is registered, or whose registration is being sought, in respect of similar services or closely related goods and the priority date of the Application is not earlier than the priority date of the other trade mark;

(e) Section 44(3) and (4): the Opposed Trade Mark has not been used by the Applicant so as to satisfy the requirements of subsections 44(3) and (4) of the Trade Marks Act 1995 and there are no other circumstances which make it proper for the Registrar to accept the application no.774842;

(f)     Section 58: the Applicant is not the owner of the Opposed Trade Mark;

(g)     Section 59: the Applicant does not intend:

(1)       to use, or authorise the use of the Opposed Trade Mark in Australia; or

(2)       to assign either of the Opposed Trade Marks [sic] to a body corporate for use by the body corporate in Australia,

in relation to the goods specified in the Application;

(h)     Section 60: the use of the Opposed Trade Mark in relation to the goods specified in the Application would be likely to deceive or cause confusion because another trade mark that is substantially identical or deceptively similar to the Opposed Trade Mark has acquired a reputation in Australia before the priority date for registration of the Opposed Trade Mark;

(i)      Section 61: the trade mark contains or consists of a sign that is a geographical indication for goods originating in:

(1)       a country, region or locality in a country, other than the country in which the goods originated; or

(2)       a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated;

(j) Section 62(a): the Application was amended contrary to the Trade Marks Act 1995;

(k)     Section 62(b): the Registrar accepted the Application for registration of the Opposed Trade Mark on the basis of evidence or representations that were false in material particulars.

Pfizer served and filed its evidence in support of its opposition in accordance with the Act and regulations in due course.  The evidence comprises a statutory declaration by Alan John Brindell, Associate Director, Corporate Affairs of Pfizer Pty Limited, a wholly owned subsidiary of Pfizer and a statutory declaration by Arthur A Silversein, Senior Corporate Trade Mark Cousel for Pfizer.  Mr Silverstein's declaration attests to the international reputation of the trade mark.   Mr Brindell’s declaration relates more specifically to Australia and to the origins, ownership, registration, use and reputation of the trade mark VIAGRA which is the proprietary name of a pharmaceutical used in the treatment of a sexual dysfunction in men.

The trade mark registration/application details are:

Reg No:  680407
Priority date:                11 December 1995
Owner:  Pfizer Products Inc
Goods/Services:          Pharmaceuticals including compounds for treating erectile dysfunction
Trade Mark:                VIAGRA (plain script)

Appn No:  769222
Type:  Defensive
Priority date:                3 August1998
Owner:  Pfizer Products Inc
Goods/Services:          Class: 1  

Chemicals in this class used in industry and science; chemical preparations for scientific purposes (other than for medical or veterinary use); adhesive preparations for surgical bandages; alginates (gelling and inflating preparations); diagnostic preparations in this class; growth regulating preparations (plant); saccharin; artificial sweeteners; protein raw material; preservatives for pharmaceutical preparations, silicon

Class: 3  

Toilet and cosmetic preparations for personal use; skin care products, hair care products, cleaning preparations for personal use; fragrances; essential oils

Class: 9  

Apparatus and instruments for scientific research in laboratories; chemical apparatus and instruments; pre-recorded video tapes, audio tapes, compact discs, video discs, CD ROM, computer software all relating to health care or personal care; apparatus for recording or reproduction of the foregoing

Class: 10 

Surgical, medical, dental and veterinary apparatus and instruments

Class: 16 

Publications and printed matter relating to health care or personal care; instructional and teaching material (except apparatus) relating to health care or personal care

Class: 25 

Clothing, footwear, headgear

Class: 28 

Sporting articles and equipment in this class, excluding fishing tackle, fishing reels and all other goods in this class relating to fishing and fishing tackle

Class: 29 

Meat, fish, poultry and game; meat extracts; preserved; dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats (including margarine)

Class: 30 

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice

Class: 31 

Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malts
Class: 32 
Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

Class: 33 

Alcoholic beverages (except beers)

Class: 35 

Professional business consultancy for health professionals; retailing of pharmaceutical, medical and surgical goods; statistical information services (medical); marketing research for medical industry; distribution of samples (medical); advertising agency services relating to health

Class: 41 

Health education services; arranging and conducting of medical conferences and seminars; health club services; physical education; providing sports facilities; rental of sports equipment; medical teaching services; publication, including on-line publication, of material relating to health and personal care; production of radio, television, film and videos relating to health and personal care

Class: 42 

Medical, hygienic and beauty care services; scientific research; chemical research and analysis; medical clinics; professional medical consultancy (non-business); cosmetic research; health care services; pharmacies; plastic surgery; leasing medical instruments

Trade Mark:                VIAGRA

I note that it is not necessary for an opposition to be filed in the name of the person who owns the registration or registrations, or unregistered trade marks, on which an opponent may rely: section 52 provides, in part:

52  Opposition

(1) If the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition. [stress added]

The declaration also brings into evidence much material about the medical condition that the pharmaceutical treats.  Pfizer was the first company to produce such a pharmaceutical and indirectly promoted its product amongst the public by increasing awareness of the condition that it treats.  It has also promoted the pharmaceutical directly to the medical profession.  There was extensive media comment concerning the pharmaceutical by reference to its trade mark when it was placed onto the market – a representative sample of this comment is in evidence.

The evidence shows that the Pfizer trade mark was coined by reference to the word NIAGARA.  A letter from the person who devised the word VIAGRA shows that the initial step was to look for a word with connotations of strength, with images of water – the word selected was NIAGARA.  The next step was to drop “the silent middle letter ‘a’” from the word NIAGARA to form the word NIAGRA.  The word ‘vigorous’ was then selected to fuse with the word NIAGRA because of its denotations and similarity of arrangement of consonants.  Thus, the word VIAGRA was formed as a portmanteau from these components.

The product received approval from the Australian Therapeutic Goods Administration on 4 September 1998 and went on sale in Australia on 14 September 1998.  However, media comment in Australia concerning the product appears to have dated from well before this.  A survey conducted for the opponent shows that one month before the launch of the product, one in three Australian males had heard of the product and its intended function.  As well as many hundreds of documented instances of broadcast media ‘spots’ in the four months before the release of the product onto the Australian market, Pfizer includes in its evidence extensive print media publicity about the trade mark for the whole of 1998.

Sales figures, which are in a confidential attachment to Mr Brindell's declaration, are strong - dating from the launch of the product.

I will note at this point that the examiner’s research on this file shows that NIAGARA is a part of the geographical name NIAGARA FALLS, which is the name of a number of major geographical features.  Firstly, it is a large waterfall on the border between the United States and Canada.  Secondly, it is the name of the river from which these falls take their name.  Lastly, there are also two cities which bear the name ‘Niagara Falls’, one on the Canadian side of the Niagara River has a population of 75,399; the other on the United States side has a population of 61,840 – this latter city is in Niagara County.  I will further note now that it appears to be a very common mistake to drop the central letter ‘A’ from the word NIAGARA – a search of the Internet reveals some 16,000 sites where this misspelling has occurred, many of these appear to be local tourist venues which promote the attractions of the Niagara Falls.  However, the spelling does not appear to be a recognised variant of the word NIAGARA in any gazetteer although the word NIAGRA is the name of a number of minor geographical features elsewhere. 

The applicant has not filed any evidence in answer and neither party has requested to be heard in this matter.  Accordingly, the issue has, under section 55, come to me as a delegate of the Registrar of Trade Marks to decide.  As there has been no hearing, I cannot be certain which of the grounds Pfizer would have argued at a hearing and so I will address each of the grounds stated in the Notice of Opposition.

Section 41: the Opposed Trade mark is not capable of distinguishing the Applicant’s goods specified in the Application from the goods or services of other persons

Section 41 provides:

Trade mark not distinguishing applicant's goods or services

41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:  For applicant and predecessor in title see section 6.

Note 2:  If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:  For goods of a person and services of a person see section 6.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a) the Registrar is to consider whether, because of the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

Note 1:  For goods of a person and services of a person see section 6.

Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

(6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1:  Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)  the time of production of goods or of the rendering of services.

Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

The tests for determining whether a trade mark is inherently adapted to distinguish the applicant's goods from those of other persons' are set out by Branson J in Blount Inc v The Registrar of Trade Marks (1998) 40 IPR 498 at 504-505.

In terms of section 41, it is most likely that this ground of opposition arises because of a perception that the word NIAGRA is an obvious misspelling of the word NIAGARA and because that word might have geographical significance.  However, I think that the opposition has a number of difficulties if it relies on this analysis of the word.  While it may be that it is an obvious misspelling, it is not the whole of the geographical name which is only complete when the word FALLS is added to it.  Inherent distinctiveness is to be assessed by reference of the need of other traders to use the sign without improper motive and in the normal course of trade: Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511. For the reasons below, it does not, on the evidence before me, appear that other traders will need to use the word.

While it is most unlikely that any trader would need the name NIAGARA FALLS as it relates to the waterfall, there are some 140,000 people living in the two cities of this name on either side of the river below the falls.  From the descriptions of these cities in the gazetteers, it would appear that they are manufacturing cities and it is not unlikely that soft drinks may be made there.  But, I think that where the people living in these cities do refer to the geographic origin of the goods they produce it is probably with reference to the whole of the city name – whether they misspell it or not.  However, it is also unlikely that such a spelling mistake would carry into a trade mark – unless it were to be an accepted local coinage often used as a short-form of the name in trade marks: Re Application by Cedarapids Inc 13 IPR 297 [Cedarapids]. It is not shown in the evidence that this is so.

I therefore conclude that the trade mark NIAGRA is inherently adapted to distinguish the goods of the applicant from those of other traders; accordingly, this ground of opposition has not been established in terms of section 55 of the Act.

Section 42(b): the use of the Opposed Trade Mark would be contrary to law

Section 42(b) of the Act states:

42  Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

[…]

(b)its use would be contrary to law.

Pfizer has not shown or suggested any law to which the use of this trade mark would be contrary.  Thus, this ground of opposition has not been established in terms of section 55 of the Act.

Section 43. the use of the Opposed Trade Mark in relation to the goods specified in the Application would be likely to deceive or cause confusion because of one or more connotations that the Opposed Trade Mark or a sign contained in the Opposed Trade Mark has

Section 43 of the Act provides:

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

I am not certain how Pfizer might have conducted its opposition under this heading.  The most likely course appears to be an argument that, because of its similarity to the word NIAGARA, within the geographical term, ‘Niagara Falls’, use of the trade mark NIAGRA, because of this, would deceive or cause confusion.  It is also possible that Pfizer might have argued that the word VIAGRA is so well known to Australians that the word NIAGRA might be seen as connoting the goods of Pfizer.  Or, that the word NIAGRA connotes the word VIAGRA by reason of its similarity to that word.  Regarding the latter argument, however, the Full Court in T.G.I. Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCA 720, observed:

The case on deception and confusion sought to be made by Big Country and Friday’s Australia in the present proceedings is one that falls outside the reasons specified in those sections.  It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others.  So the alleged deception or confusion is not for a reason covered by section 43.

In the CONFEST decision, Down to Earth (Victoria) Co-Operative Society Ltd v Schmidt, (1998) 41 IPR 632 Hearing Officer Forno observed, at 643:

"Connotation" is a new term in trade mark legislation and as such has not yet been interpreted by the courts.  The following are two dictionary definitions which define the ordinary meaning:

Macquarie Dictionary:

1. the act or fact of connoting.  2. that which is connoted; secondary implied or associated meanings(as distinguished from denotation): for example the word "bum" has connotations of vulgarity.

Oxford English Dictionary

1. The signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication.

Therefore it can be said that the word connotation refers to that which is implied in a trade mark - in addition to its essential or primary meaning.  A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark.  The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.  Considerations under s.43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public.  For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation.

Hearing Officer Zars, in her decision on the HERO trade mark, N. V. Sumatra Tobacco Trading Co v Philip Morris Products Inc. [1998] ATMO 69 (30 December 1998), also comments concerning s.43:

With reference to the first point argued by Mr Burley, I will not be able to place much weight on it, as it is the Registrar's understanding that the provisions of section 43 were intended to allow a ground of rejection concerning possible deception or confusion arising from the nature of the mark itself when applied to the goods or services. The provisions exclude deception or confusion likely to be caused by a conflict between the marks. This was set out in an appendix to a recent, as yet unpublished, Trade Marks Office decision Down to Earth (Victoria) Co-operative Society Limited v George Schmidt, issued 9 April 1998, where the hearing officer stated the following:

The provisions of this section as explained in:

* The Working Party's Recommended Changes to the Australian Trade Marks Legislation - a report to the Hon. Ross Free MP, Minister for Science and Technology, July 1992,

* The Explanatory Memorandum, circulated by the authority of the Minister for Small Business, Customs and Construction, Senator the Hon. Chris Schacht, and

* The Trade Marks Office Draft Manual of Practice and Procedure,

provide that an application for registration must be rejected if the trade mark, because of some signification inherent to it, would be likely to deceive or cause confusion because of its use on the relevant services [or goods].

As explained in the above Draft Manual of Practice and Procedure, connotations of the kind that would debar a trade mark from registration under the provisions of s.43 may result from the whole trade mark or a part thereof. Grounds for rejection under s.43 are, however, absolute grounds in that the likely deception or confusion must arise from the trade mark itself. The provision does not apply to deception or confusion that might arise from conflict between two trade marks.

Thus any objection to the registration of the word NIAGRA on the basis of a comparison to the word VIAGRA is not open to Pfizer under the provisions of section 43.

I consider that, for the opposition under section 43 to succeed on the basis that VIAGRA had, at the date of the filing of this application, taken on a connotation as a word in its own right, Pfizer would need to show me both that the signification of the word transcended its trade mark origins at that time and that the word NIAGRA was likely to confuse or deceive on that basis.  I note the date of filing of this opposed application predates the placement of the goods onto the market by Pfizer by a few days.  There had undoubtedly been extraordinary publicity concerning the product in the year preceding its launch – however, I would be hesitant to conclude on the basis of the evidenced publicity that the word had then, to all intents, entered Australian parlance apart from its significance as a trade mark in relation to pharmaceuticals.

To turn now to the possible opposition on the basis of the place-name significance, I think that, if there is such a connotation contained in the word NIAGRA, it is not a strong one and not one that would give rise to deception or confusion.  The test must be in the light of how the Australian public is likely to see such a trade mark.  It appears to me to be most probable that most Australians, in their contemplation of the word, will be primarily aware of the Niagara Falls waterfall – it is this image that the word will conjure to mind.  It is not probable that Australians would see the trade mark as connoting that the goods originated at the waterfalls – it is more likely, I think, that the trademark would bring to mind images of the power, might and sound of the waterfalls and, thus, be seen as operating in an allusive way.  I consider that it is considerably less likely that the trade mark NIAGRA would be seen as indicating that the soft drinks, on which it is (or is going to be) used, originate in either of the two cities of ‘Niagara Falls’.  It is much less probable that most Australians are aware of either of these cities – but, if they are, it is probable that they see these places in terms of their full names and the correct spelling of the word.

I therefore consider that, in terms of section 55, Pfizer has not established its grounds of opposition under section 43 of the Act. 

Section 44(1): the Opposed Trade Mark is substantially identical or deceptively similar to a trade mark which is registered, or whose registration is being sought, in respect of similar services or closely related goods and the priority date of the Application is not earlier than the priority date of the other trade mark;

Insofar as it relates to this matter, section 44 of the Act provides:

Identical etc. trade marks

44.(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.

I think that it is not of controversy that the goods of this application, and those of 769222 on which Pfizer relies, are, to all intents identical relating to some of the goods within Class 32.  The Pfizer defensive application also has a priority date earlier than that of this application.  Further, I do not think that it could be seriously argued that the words NIAGRA and VIAGRA are substantially identical.  Therefore, what remains for me to decide is whether the words VIAGRA and NIAGRA are deceptively similar in relation to soft drinks.

In Australian Woollen Mills v. F.S. Walton & Co. Ltd (1937) 58 CLR 641 at 658, in a joint judgement, Dixon and McTiernan JJ said of deceptive similarity:

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.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.

Another view of the matters which have to be taken into consideration was stated by Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, where he said:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

The goods are likely to be sold from display fridges in supermarkets, take-aways, service stations and corner stores.  Although the goods are non-alcoholic, I have very much in mind that it is in relation to these goods that the maxim "thirsty folk want beer not explanations" will apply: Montgomery v Thompson (1891) 8 RPC 361. I am also to consider that the containers the soft drinks are sold in are likely to be round, stored in refrigerators and not always oriented so that the whole of the label can clearly be seen: A. and F. Pears Ltd v Pearson Soap Co Ltd (1925) 37 CLR 340. The goods are not very expensive and people do not take as much time and care in purchasing these goods: cf. -LANCER- Trade Mark Application [1987] FPC 303 [LANCER versus LANCIA for cars].

The test to be applied in considering likely deception or confusion may be stated as in Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101:

Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration.

This passage must, in view of the change brought about by the Trade Marks Act 1995, be read with the caution expressed by French J in Registrar of Trade Marks v WoolworthsLtd [1999] FCA 1020 at para 45:

So far as this passage, reflected in oral submissions, suggests that an applicant must satisfy the Registrar or the Court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

In short, in the comparison of the trade marks, I am to consider potential usages by each owner of the trade marks made in a normal and fair manner in relation to all of the goods claimed.

There are three inter-related ways in which these trade marks could be similar: visually, phonetically or conceptually – the latter importing some visual or phonetic confusion.

Visually, both trade marks in question are in plain script so it could be that the trade marks are used in a number of different standard fonts including some where the letters N and V are not clearly distinguished.  Thus the word NIAGRA could be rendered as NIAGRA, with the possibility of a mistaken recognition of the letter N as the letter V on the part of the purchaser particularly if the bottle or container were to be rounded and the trade mark not immediately visible.  However, this analysis may look at a behaviour of the applicant and a use of the trade mark which goes beyond what the test in Smith Hayden, above, terms a ‘normal and fair’ manner; I also believe that this analysis, as it looks at a combination of hypothetical situations or circumstances not in evidence, cannot leave me ‘satisfied that there is a reasonable likelihood of deception or confusion’.

Phonetically, the initial letters of the two trade marks are very distinct from each other – the initial letter of word VIAGRA is formed with the teeth and lips – whereas the initial word NIAGRA is formed with the tongue and palate.  The common mode of sale of soft drinks, which is from self-serve refrigerators or supermarket shelves, further mitigates against the likelihood of deception or confusion as it is unlikely that the goods will be commonly requested.

Conceptually, there is a possibility that the overall resemblance in the trade marks and the similarity in coinage could confuse or deceive potential purchasers.  Pfizer has removed the overt reference to the NIAGARA FALLS from its sign by first dropping the word FALLS, then removing the central silent letter ‘A’, then fusing the resultant word NIAGRA with the word VIGOUR.  The applicant has obviously travelled a part of the way down the same track, leaving similarities between the trade marks - but, I consider, not so far down that road that any resemblance between the trade marks will lead to a reasonable likelihood of deception or confusion since the trade marks do, I think, on first encounter, bring to mind quite different things.  It is only in the light of information of the origins of both trade marks that a closer nexus might be perceived.  People casually shopping for soft drinks do not normally engage in this kind of analysis.

Thus, while the similarity of the trade marks is such that it would lead me to conclude that there is a possibility of deception or confusion, I am not satisfied that there is a reasonable likelihood of deception or confusion.

Accordingly, Pfizer has not established this ground of opposition.

Section 44(3) and (4): the Opposed Trade Mark has not been used by the Applicant so as to satisfy the requirements of subsections 44(3) and (4) of the Trade Marks Act 1995 and there are no other circumstances which make it proper for the Registrar to accept the application no.774842.

As I have found that the opposition in terms of subsection 44(1) is not successful, it is not necessary to consider the application of subsections 44(3) and (4).  I note that the NIAGRA trade mark is apparently unused, however, as Pfizer relies on a defensive registration, the honest concurrent user provisions would not have been available to the applicant in any event.

Section 58: the Applicant is not the owner of the Opposed Trade Mark.

Section 58 allows:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

The word ‘owner’ in the Trade Marks Act 1995 has the same meaning as the word ‘proprietor’ in the Trade Marks Act 1955 and its predecessors. 

In Hicks's Trade Mark, (1897) 22 VLR 636 (at 640) Holroyd J stated:

In order to substantiate his application to be placed on the Register for this word, he must have claimed to be the proprietor, and the word "proprietor" must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration ... in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the Register for that trade mark.

The trade marks here (as relates to the Class 32 goods) are, by the evidence, unused.  Dixon J in Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 610; 1A IPR 438 (at CLR 627; IPR 448) said that:

The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration.

And, at CLR 628; IPR 448 that authorship:

involves the origination or first adoption of the word or design as and for a trade mark”.

The date of the Pfizer application is earlier than that of this application.

However, in the case of Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) AIPC 91-049; (1994) 120 ALR 495, Gummow J, referring to The Shell Company of Australia Limited v Rohm and Haas Company (1949) 78 CLR 601, said:

... it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice.

Concerning substantial identity, in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414, Windeyer J directs:

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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

The trade marks NIAGRA AND VIAGRA are not, by the above test, substantially identical – there is a clear and very obvious difference between them.  Pfizer has therefore failed to establish its opposition in terms of section 58 of the Act.

Section 59: the Applicant does not intend:

(1)       to use, or authorise the use of the Opposed Trade Mark in Australia; or

(2)        to assign either of the Opposed Trade Marks [sic] to a body corporate for use by the body corporate in Australia,

Pfizer has not led any evidence in relation to section 59 and therefore has not established this ground of opposition.

Section 60: the use of the Opposed Trade Mark in relation to the goods specified in the Application would be likely to deceive or cause confusion because another trade mark that is substantially identical or deceptively similar to the Opposed Trade Mark has acquired a reputation in Australia before the priority date for registration of the Opposed Trade Mark;

As I have, above, decided that the trade marks in question are neither substantially identical or deceptively similar, Pfizer cannot establish its grounds of opposition under section 60 of the Act.

Section 61: the trade mark contains or consists of a sign that is a geographical indication for goods originating in:

1. a country, region or locality in a country, other than the country in which the goods originated; or

2. a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated;

Pfizer has not led any evidence to support its allegation that the trade mark is a specific geographical indication and, accordingly, has not established this ground of opposition.

Section 62(a): the Application was amended contrary to the Trade Marks Act 1995;

Pfizer has not supported this ground of opposition with evidence and inspection of the official file reveals no material that would prima facie support this ground.  The application does not appear to have been amended.

Section 62(b): the Registrar accepted the Application for registration of the Opposed Trade Mark on the basis of evidence or representations that were false in material particulars.

Pfizer has not supported this ground of opposition with evidence and inspection of the official file reveals no material that would prima facie support this ground.

Summary

Pfizer has not, in terms of section 55 of the Act, established its opposition under any of the grounds listed in its Notice of Opposition.

Decision

I dismiss the opposition and direct that the application may, if there has been no appeal from this decision by the elapse of the appeal period, proceed to registration subject to payment of the appropriate fees by the applicant.

Costs

There has been no submission as to costs in this matter; indeed, the applicant does not appear to have had any.  I make no award.

Ian Thompson
Hearing Officer

15 January 2001