Pfizer Products Inc

[2004] ATMO 25

TRADE MARKS ACT 1995

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

Re:Trade mark application number 894613 (classes 1, 10, 28, 29, 30, 31, 32, 33, 41, 42) - VIAGRA- in the name of Pfizer Products Inc.

Delegate:	Terry Williams
Representation:	Applicant: Michael Kirov, solicitor, Spruson & Ferguson
Decision:	S 185, defensive application (VIAGRA) famous invented word, inferred connection likely, rejection inappropriate

On 9 November 2001, Pfizer Products Inc (Pfizer) applied to register the word VIAGRA as a defensive trade mark. At issue are s 185 and 187 of the Trade Marks Act 1995 (the Act), which read:

Section 185

(1) If, because of the extent to which a registered trade mark has been used in relation to all or any of the goods or services in respect of which it is registered, it is likely that its use in relation to other goods or services will be taken to indicate that there is a connection between those other goods or services and the registered owner of the trade mark, the trade mark may, on the application of the registered owner, be registered as a “defensive trade mark” in respect of any or all of those other goods or services.

(2) A trade mark may be registered as a defensive trade mark in respect of particular goods or services even if the registered owner does not use or intend to use the trade mark in relation to those goods or services.

(3) A trade mark may be registered as a defensive trade mark in respect of particular goods or services even if it is already registered otherwise than as a defensive trade mark in the name of the applicant in respect of those goods or services.

(4) A trade mark that is registered as a defensive trade mark in respect of particular goods or services may be subsequently registered otherwise than as a defensive trade mark in the name of the registered owner in respect of the same goods or services.

Section 187 relevantly provides:

In addition to any other ground on which:

(a) an application for the registration of a trade mark as a defensive trade mark may be rejected; or

(b) the registration of a trade mark as a defensive trade mark may be opposed;

the application must be rejected or the registration may be opposed:

(c) if the trade mark is not registered as a trade mark in the name of the applicant; or

(d) in the case of a registered trade mark - if it is not likely that the use of the trade mark in relation to the goods or services in respect of which its registration as a defensive trade mark is sought will be taken to indicate that there is a connection between those goods or services and the registered owner.

The present application relates to goods in classes 1, 10, 28, 29, 30, 31, 32, 33, 41 and 42 - as detailed in Annexure 1. 

The matter came before me for hearing because the examiner of trade marks believed that s 187(d) was triggered. That, in itself, is not an unusual situation since ex parte hearings result, always, from an objection to some part of an application. However, the current matter is somewhat unusual in that the present application was filed as a divisional application[1] of an earlier or "initial" application, 769222, that had itself already been the subject of a recent ex parte hearing. 

[1] See Division 3 of Part 4 of the Act

The current application thus claimed the same trade mark and the same priority date as the initial application.  Moreover, it relates entirely to goods and services deleted from the initial application before this was accepted - see Appendix 1.  That is an allowable course for the filing of a divisional application.  However, it also posed a dilemma for the examiner, who reported as follows:

As you are aware, following a hearing on 16 August 2001, the initial application was accepted as a defensive trade mark.  The condition for acceptance was that the specification of goods and services be amended to exclude the goods and services initially claimed for which there is insufficient evidence "to show the public are likely to draw a connection with the applicant" (letter from Senior Examiner Frances Aarnio dated 18 October 2001).  You agreed with this condition.

Consequently, I am unable to recommend acceptance of your application because it covers precisely all the goods and services excluded from the initial application.

In other words, the examiner considered that he faced a matter of res judicata.  That may perhaps be an inappropriate extension of judicial language to an administrative tribunal even though the basic principle is entirely appropriate.  It could equally be said that the examiner was of the view that as the matter had already been fully dealt with on the merits there was no remaining discretion to be exercised in the applicant's favor. 

I believe that the examiner was quite correct to decline to accept an application on terms that had, just four months prior to examination of the present application, been unacceptable to a hearing officer, on and because of facts that were completely unchanged and directly applicable. However, the applicant has now waived its claim to divisional status. The present application has therefore shed the earlier priority date and comes before me for decision with a later priority date for the purposes of s 185.

The upshot of this is that I am able to consider the effect of an additional three years of use of the trade mark VIAGRA, up to the priority date of the present application.  Even so, as the applicant had already requested a hearing, it elected to continue with its chosen course.  At that hearing, Michael Kirov, solicitor, appeared on behalf of the applicant.  I will set out, briefly, what I take to be the most essential parts of his submissions.

Mr Kirov began by noting the obvious.  It is fairly clear that the trade mark VIAGRA was one that most people would immediately recognise.  VIAGRA is used in respect of a drug that deals with erectile dysfunction.  The product has attracted huge amounts of interest in the general media.  Mr Kirov asserted that, aside from perhaps a small number of hermits, there would be few people in Australia who had not heard of the trade mark in question.  By and large, I think he is correct in this.  The drug sold under that trade mark appears to be unique; or, if not, the applicant has certainly been the beneficiary of media attention to a unique extent.  I can only concede that, on the material presented to me, the trade mark appears to be even more famous than at the time of the initial application.

That same material shows that the reputation of the applicant's trade mark has deepened but not widened over time.  It is famous in respect of only one particular pharmaceutical.  I say this not by way of criticism so much as to flag what I see as the extent of the fame of the trade mark in question.  I go further and say that the evidence suggests most of the Australian population would be aware that VIAGRA is a trade mark used for only a single line of pharmaceuticals.

Mr Kirov took special note of the terms of s 185 before coming to the central tenet of the argument. He was very critical of existing decisions of the Trade Marks Office, and of the Manual of Practice and Procedure. In all instances, he argued, the Trade Marks Office had sought to constrain the "connection" stipulated by s 185. The legislation itself, he noted, set no limit on what sorts of connection might be taken to exist, so long as it be a connection between the goods of the defensive application and the owner of the famous trade mark.

Mr Kirov noted my own decision in relation to the trade mark MOBIL[2], under the former 1955 act.  I said (emphasis subsequently added):

[2] (1995) 32 IPR 535

I put it to Mr Gibbs that, whatever the connexion may be, the framing of the test in terms of "likely to be taken as indicating" was reminiscent of the test under s 28, "likely to deceive or cause confusion".  The latter test is also imported into s 33 by virtue of the definition of " deceptively similar" marks, s 6(3). 

In interpreting the test under s 28, the authorities have consistently required more than the existence of a few individuals who would hold the necessary belief.  It is necessary that the belief amount to a "reasonable doubt".  Per Kitto J in Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595: "a mere possibility of confusion is not enough - for there must be a real tangible danger of its occurring". There must be a "substantial number" of people, see The Kendall Co v Mulsyn Paints, (1963) 109 CLR 300 at 305, who would hold the relevant belief or beliefs. I note, however, and borrow, the UK explanation of the philosophy involved, that the word substantial must be applied properly and sensibly as being a judicial gloss - see Lord Upjohn in BALI trade mark [1969] RPC 472 at 496.

Mr Kirov suggested that I had adopted "likely to deceive or cause confusion" as a limiting paraphrase of the wording of the former legislation.  I do not agree with this. The next paragraph of my decision reads as follows (again, emphasis subsequently added):

In short, the evidence to date does not of itself go far enough in quantifying the extent to which individuals would expect a connexion between the mark at issue and Mobil. 

and I do not see any point in the decision at which I have said that the connection need be one that is driven by deception or confusion.  However, I think it is equally clear that, where a person expects a connection to exist, and none does, that person has been deceived.  It was the word likely that I suggested should be measurable by the same yardstick as was used to test the likelihood of deception or confusion under old s 28.

While the range of potential connections under the 1995 Act is clearly undefined and open ended, I think that it is perfectly legitimate for any delegate to expect that the circumstances attendant on the connection to be inferred, if such an inference is "likely", should be describable.  Such perceived connections may well have a basis in licencing, sponsorship, brand extension or in what is sometimes referred to as a "natural connection" or an "obvious nexus", which no doubt go to perceived connections in the course of trade.  Where the inference of a connection is said to have some other basis, I think the inference still ought to be open to some articulation of the factors (whatever they may be) on which it is allegedly based.   

That is not to say that professionally prepared survey evidence which tends to establish a fact (a perceived connection, on the part of the relevant public in general) without necessarily establishing underlying reasons for that perception should be ignored.  Far from it.  However, in the present case the applicant relies on no more than an assertion that "a connection will be inferred because our trade mark is famous".  Such applicants, I think, should always be prepared to articulate a basis for their assertion in order to lend it greater weight on the balance scales.

Putting this aside, I note Mr Kirov's point.  I will approach this matter on the basis that the various forms of words used in text relevant to the 1995 Act were indicative examples only[3].  I am satisfied that, after a further three years of use, a connection will be inferred for a somewhat wider range of goods than was previously the case.  In addition to the deepened fame of the trade mark there are a number of inter-related elements:

[3] As did Senior Examiner Ryan in AT & T Corporation's Application [2001] ATMO 96

q  VIAGRA is quite obviously a completely made-up word, not open to ordinary descriptive use as part of the English language.  This goes beyond any possible debate about whether the word might, or might not, have qualified as "invented" under earlier UK or Australian legislation: no doubt in the matter is possible in this case.

q  That being so, and given the extent of use and the accompanying reputation, it is hard to see how anyone other than the owner could have any legitimate need to use the word as a trade mark.  As Mr Kirov noted, such use will almost by definition involve a money-making purpose, reflecting, in all probability, on both the likelihood that a connection will be inferred and on the motives of subsequent users other than the present applicant.

q  That in turn being so, there is little about any of these goods that might suggest that the connection to be inferred, and on the likelihood of which the applicant relies, might be described as either fanciful or unlikely.  The goods do not include space shuttles or blast furnaces or any others so far removed from those on which VIAGRA is famous as to give any pause for thought before a connection, of whatever sort, is inferred with Pfizer.

I note, for the record, Mr Kirov's argument that VIAGRA is a trade mark within the scope of 120(3).  This needs to be taken with 120(4), as follows.

(3) A person infringes a registered trade mark if:

(a) the trade mark is well known in Australia; and

(b) the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

(i) goods (unrelated goods) that are not of the same description as that of the goods in respect of which the trade mark is registered (registered goods) or are not closely related to services in respect of which the trade mark is registered (registered services); or

(ii) services (unrelated services) that are not of the same description as that of the registered services or are not closely related to registered goods; and

(c) because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and

(d) for that reason, the interests of the registered owner are likely to be adversely affected.

Note 1: For registered trade mark see section 6.
Note 2: For deceptively similar see section 10.
Note 3: For well known in Australia see subsection (4).
Note 4: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

(4) In deciding, for the purposes of paragraph (3)(a), whether a trade mark is well known in Australia, one must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason.

Mr Kirov noted that this was an argument raised in Re Application by Cantarella Bros Pty Ltd - 57 IPR 256. In that case, Hearing Officer Skivington noted the issue:

Further, submitted Mr Yates, if there were infringement proceedings based on the primary registration, in relation to goods for which the applicant is seeking a defensive registration, Ms Strachan’s evidence would satisfy the requirements of s 120 (3) to a prima facie level. The infringement action, he asserted, would succeed on the basis of the trade mark being well known in Australia. He said that on this basis, since the legislators intended that the protection granted to a mark registered under the provisions of s 185 should be at least as great as that afforded to a primary registration, it followed that this trade mark should be accepted.

She went on to say:

So far as this point is concerned, I do not think it would be appropriate for me to speculate on what a court might find in an infringement action, and then to base an assessment as to whether or not this application meets the requirements of s 185 of the Act, on any opinion I might form, as a result of such speculation.

Mr Kirov reminded me that, given the terms of Advantage Rent-A-Car[4], it may not now be open to me to conclude that, simply because a matter arising from legislation may ultimately be within the discretion of a court, I might be exempt from any expectation that I will consider it.  I do not think it is necessary to read the hearing officer in Cantarella as reliant on such an "exemption". She went on to set out reasons why she was not prepared to accept the application, those reasons based entirely on s 185. Not surprisingly, she found at the outset that it would not be appropriate to give such weight to the s 120(3) argument as might allow it to overturn her subsequently-stated basis for rejecting the application.

[4] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd - 52 IPR 24

For my own part in the present matter, I will simply base my decision on what I regard as the appropriate application of s 185, and leave, for consideration elsewhere, the application of s 120(3) - and particularly s 120(3)(d). I note and appreciate the similarities between the terms of s 120(3) and s 185. It is precisely because of those similarities that I find s 120 not to need my detailed consideration in the present case. Conversely, however, I think it needs to be said that the existence of s 120(3)(d) and 120(4) will make it difficult for an applicant to lend weight to its case under s 120 if that case lacks weight under s 185.

All things considered, I am satisfied, on the balance of probabilities, that rejection of this application in terms of s187(d) is not appropriate. I am therefore required to accept the application, and will do so as soon as this is practicable.

Terry Williams
Hearing Officer
Trade Marks Hearings
14 May 2004

Annexure 1

Initial application 769222 as filed	Initial application 769222 as accepted	Divisional application 894613 as filed	Class
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	Chemicals in this class used in science; chemical preparations for pharmaceutical purposes; diagnostic preparations in this class; growth regulating preparations (plant); preservatives for pharmaceutical preparations	Chemicals in this class used in industry; chemical preparations for scientific purposes (other than for medical or veterinary use); adhesive preparations for surgical bandages; alginates (gelling and inflating preparations); saccharin; artificial sweeteners; protein raw material; silicon	1
Toilet and cosmetic preparations for personal use; skin care products, hair care products, cleaning preparations for personal use; fragrances; essential oils	(accepted without change)	3
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	(accepted without change)	9
Surgical, medical, dental and veterinary apparatus and instruments	Surgical, medical apparatus and instruments	Dental and veterinary apparatus and instruments	10
Publications and printed matter relating to health care or personal care; instructional and teaching material (except apparatus) relating to health care or personal care	(accepted without change)	16
Clothing, footwear, headgear	(accepted without change)	25
Sporting articles and equipment in this class	Gymnasium equipment	Sporting articles in this class	28
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)	(No class 29 goods)	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)	29
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	Preparations made from cereals, confectionery	Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour, bread, pastry, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice	30
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	(No class 31 goods)	Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt	31
Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages	Mineral waters, aerated waters and non-alcoholic beverages	Beers; fruit drinks and fruit juices; syrups and other preparations for making beverages	32
Alcoholic beverages (except beers)	(No class 33 goods)	Alcoholic beverages (except beers)	33
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	(Accepted without change)	35
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	Health education services; arranging and conducting of medical conferences and seminars; health club services; 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	Physical education; providing sports facilities; rental of sports equipment	41
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	Medical 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	Hygienic and beauty care services	42