Pfizer Products Inc v Global Exporters Limited

[2013] ATMO 92

TRADE MARKS ACT 1995

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

Re:Opposition by Pfizer Products Inc to registration of trade mark application 1447232 (5) - VEGETAL VIGRA - in the name of Global Exporters Limited

Delegate:	Michael Kirov
Representation:	Opponent: Gabriella Rubagotti of Counsel, instructed by Robert Arnold of Baker & McKenzie, Attorneys & Solicitors. Applicant: No appearance or submissions.
Decision:	2013 ATMO 92 Section 52 opposition: s 60 considered – use of the Trade Mark likely to deceive or cause confusion because of the reputation of the Opponent’s VIAGRA trade mark –opposition established and registration refused.  Costs awarded against the Applicant.

Background

1. This is an opposition brought by Pfizer Products Inc pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Global Exporters Limited (“the Applicant”):

Application Number:	1447232
Priority Date:	8 September 2011	“the Priority Date”
Trade Mark:	VEGETAL VIGRA	“the Trade Mark”
Goods:	Class 5: Health food supplements for persons with special dietary requirements; health food supplements made principally of minerals; health food supplements made principally of vitamins; mineral food-supplements; nutritional supplements; vitamin supplements

1. Pfizer Products Inc is a subsidiary of Pfizer Inc, a large American pharmaceutical company which markets and promotes its products in Australia through a locally incorporated subsidiary, Pfizer Australia Pty Ltd.  As nothing turns on the distinction, I will for convenience refer to these three entities collectively hereafter as “the Opponent”.

2. Since the late 1990s one of the Opponent’s very successful products in Australia and around the world has been an oral treatment for erectile dysfunction marketed under the trade mark VIAGRA (“the VIAGRA product”).  The evidence before me confirms to my satisfaction that the VIAGRA product and the VIAGRA trade mark were both very well known in Australia as at the Priority Date.

3. The Applicant is a Hong Kong company which, while having nominated a local address for service in Sydney at the time of filing the opposed application, apparently left that address shortly after the commencement of these proceedings.  It has filed no evidence, although the results of Internet searches attached to the Opponent’s evidence include the Applicant’s LinkedIn® page, where the Applicant describes itself as being a privately held company with between 11 and 50 employees which deals in “Consumer Goods”.  The LinkedIn® page was downloaded on 15 January 2013, at which time the Applicant had posted the following description:

   With branches in the UK, USA, Hong Kong, China, Philippines and now Australia, Global Exporters Limited provides a superior global wholesale distribution service. Our implementation of a sophisticated warehouse management system enables us to serve both the domestic and international sectors and we pride ourselves in bringing a fresh and innovative approach to supplying business people and acting as a liaison between manufacturers and distributors.

4. Downloaded pages from third party websites included with the Opponent’s evidence which offer for sale a product bearing the Trade Mark describe the product in question as being “a pill used to treat erectile dysfunction (impotence) in men.”  At the heart of the present opposition is the claimed similarity of the Trade Mark to the Opponent’s well known VIAGRA trade mark and the deception or confusion the Opponent says is likely to ensue amongst Australian consumers if the Trade Mark is used for any of the goods covered by the opposed application (“the Applicant’s Goods”).

5. Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 12 January 2012 and the Opponent filed its Notice of Opposition (“the Notice”) on 10 April 2012.

6. I heard the matter as a delegate of the Registrar of Trade Marks on 17 October 2013 in Sydney.  The Applicant did not appear and was not represented at the hearing, nor did it file any written submissions.  Gabriella Rubagotti of Counsel, instructed by Robert Arnold of Baker & McKenzie, Attorneys & Solicitors, appeared for the Opponent.  Ms Rubagotti’s oral submissions were supplemented by written submissions emailed to both the Applicant and me on 3 October 2013.

Grounds of Opposition and Onus

1. The Notice lists some fourteen grounds corresponding to various provisions of the Act. The Opponent’s attorneys nevertheless confirmed via email on 3 October 2013 that the Opponent would only be pressing those grounds based on sections 42, 43, 44, 60 and 62A of the Act. To succeed in its opposition the Opponent bears the onus of establishing at least one of these five grounds. As will become apparent, I have only found it necessary to address the Opponent’s s 60 ground in this decision and this is discussed below. Of course should the decision be appealed, it would always remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.

2. As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 595, the relevant date at which the rights of the parties are to be determined is the Priority Date.

Standard of Proof

1. I confirm I am proceeding on the basis that the relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32], Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12], Nexans S.A. v. Nex 1 Technologies Co. Ltd [2012] FCA 180 (2 March 2011) per Murphy J at [9], Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13] and DC Comics v Cheqout Pty Limited (2013) 101 IPR 334 per Bennett J at [13].

The Evidence

1. As evidence in support of its opposition the Opponent filed and served a Declaration by Heather McDonald, Pfizer Product Inc’s Attorney-in-Fact, made on 1 March 2013, with Annexures HM-1 to HM-52.

2. As mentioned, the Applicant has not filed or served any evidence.

Discussion

Section 60

1. The ground based on section 60 of the Act is indicated in the Notice as follows:

   Use of the opposed trade mark would be likely to deceive or cause confusion because of the reputation of another trade mark where such reputation was acquired in Australia before the priority date of the opposed trade mark

2. Section 60 of the Act itself is reproduced below:

Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

Note:  For priority date see section 12.

1. As mentioned, the Opponent relies on its use of its VIAGRA trade mark to underpin its s 60 ground. The McDonald declaration indicates that as at the Priority Date the Opponent had continuously used this trade mark for some 13 years in Australia in relation to the VIAGRA product.

2. What needs to be considered for the purposes of s 60 is the notional use the Applicant might make of the Trade Mark in relation to its designated goods of interest. The issue is whether use for the goods claimed would be likely to deceive or cause confusion in light of the reputation of the Opponent’s VIAGRA trade mark as at the Priority Date. As mentioned, annexures to the McDonald declaration indicate that the Trade Mark has in fact been used on (at least two) third party websites in relation to a product described as being “a pill used to treat erectile dysfunction (impotence) in men”, such product on the face of it being within the scope of the opposed application.

3. As to the reputation of the VIAGRA trade mark, Ms Rubagotti firstly reminded me that this has been considered in recent years by the Federal Court in Pfizer Products Inc v Karam[2] (“Herbagra”) and by IP Australia in Viaguara SA v Pfizer Products Inc (“Viaguara”)[3].

   [2] (2006) 70 IPR 599.

   [3] (2010) 86 IPR 643.

4. Ms Rubagotti highlighted the fact that in Herbagra Gyles J not only accepted that by December 2002 the VIAGRA trade mark had the kind of reputation contemplated by s 60, he considered that such reputation was not limited, (as the trade mark applicant in that case had argued), to pharmaceutical products available only by prescription. Referring to the Registrar’s delegate’s decision at first instance and to the delegate’s assessment of the evidence going to reputation relied upon by Pfizer Products Inc, his Honour concluded at [30] – [31]:

   [30] The delegate, having considered that material, was satisfied that the VIAGRA marks were very well known in Australia and enjoyed a considerable reputation, both literally and for the purposes of the 1995 Act. I can only agree. Karam does not dispute that conclusion as such. However, it is submitted that the reputation relates to a particular medical treatment for a particular medical condition available only on prescription from pharmacies. It is submitted for Pfizer that the reputation of VIAGRA is not limited to that strict core but has gained a wider reputation as being associated with sexual health and performance generally, including enhancement of sexual performance on the part of both males and females and the reputation is not limited to a prescription by medical practitioners available only in pharmacies. Counsel for Pfizer has pointed to examples in the material produced by [Pfizer Australia Pty Ltd’s legal director] which would support such a wider reputation.

   [31] The evidence warrants a conclusion that the trade mark VIAGRA is associated with a substance taken orally for enhancement of penile erection for the improvement of sexual performance as well as curing of penile dysfunction. I would not conclude that it would be generally understood that the product VIAGRA is only available on prescription from pharmacies and I would not limit the reputation of the mark in that way.

5. Ms Rubagotti further noted that some years later and based on essentially similar but updated evidence going to reputation, Hearing Officer Thompson said in Viaguara:

   [42] I note that, in [Herbagra], Gyles J stated he “would not conclude that it would be generally understood that the product Viagra is only available on prescription from pharmacies and I would not limit the reputation of the mark in that way”. On the updated evidence before me, such a finding remains appropriate.

6. In submitting that the above noted findings of the Court and of the Registrar’s delegate(s) ought to inform my assessment of the reputation of the VIAGRA trade mark as at the Priority Date, Ms Rubagotti emphasized that the evidence contained in the McDonald declaration was based upon essentially the same (although updated) evidence relied upon in Herbagra and Viaguara.  Moreover, she said, given the Opponent had continuously used the mark throughout the intervening years to promote and market the VIAGRA product in Australia it was reasonable to assume that the VIAGRA trade mark would have become even more well known since those decisions were made.

7. I accept Ms Rubagotti’s above submission and do not propose to detail here the extensive evidence contained in the McDonald declaration which serves to reinforce the point made. In summary, I accept that at the Priority Date the VIAGRA trade mark clearly had the kind of reputation contemplated by s 60 in relation to not only the VIAGRA product per se, but indeed effectively extending to goods in Class 5 of the kind covered by the opposed application.

8. I turn now to the question of whether, in light of that reputation, use of the Trade Mark in relation to the Applicant’s Goods would be likely to deceive or cause confusion.  In this regard it is useful to note that in The Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107; 47 IPR 481 the Full Federal Court (Black CJ, Sundberg and Finkelstein JJ) said the following at [39] in relation to the meaning of the terms “deceive” and “cause confusion”:

   [39] …No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:

   “Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

9. Moreover, as Gyles J highlighted in Herbagra, it is well established that the kind of confusion required by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495[4] at 501:

   A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales: Southern Cross at CLR 495. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived: Re Hack's Application (1940) 58 RPC 91 at 103–4.

   [4] His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court (Wilcox, Tamberlin and Merkel JJ) (1998) 45 IPR 393, but not on this point.

10. In Registrar of Trade Marks vWoolworths Ltd (1999) 45 IPR 411 at [50] French J (as he then was) highlighted the following further matters concerning confusion, also based on principles formulated by Kitto J in Southern Cross:

    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 it might not be the case that the two products or closely related products and services come from the same source.  It is enough if the ordinary person entertains a reasonable doubt.  It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    …

    In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration.  These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

11. With that as background, I think it is helpful to revisit some of the findings from the Herbagra and Viaguara cases which, as Ms Rubagotti noted in her submissions, also appear pertinent to the current opposition.  In each of these earlier cases the tribunal concerned considered that the opposed HERBAGRA and VIAGUARA trade marks had obviously been coined with the well known VIAGRA trade mark in mind.  It was thought that this would be recognised by consumers and would, if anything, most likely heighten the risk of relevant deception or confusion.

12. Herbagra concerned an application to register the trade mark HERBAGRA for “Herbal medicines used to aid health, vitality and sexuality”.  In passages from the Herbagra judgment that Ms Rubagotti highlighted in her submission (and that I agree have relevance to the current opposition), Giles J said:

    [38] In my opinion, a substantial number of members of the public would identify herbal medicines used to aid health, vitality and sexuality marketed under the name “HERBAGRA” to be a herbal version of VIAGRA, whether or not from the same source, or connected with VIAGRA because of the pervasive reputation of VIAGRA. In my opinion, there is sufficient similarity between the marks and between the goods with which each would be associated to lead to that result.

    …

    [42] In my opinion, [the trade mark applicant’s] submissions under estimate the impact of the aural similarity between the words by virtue of the suffix “-AGRA”. It forms a clear link between the marks which is not explained in any way as “AGRA” has no relevant meaning. To see invented words such as this is to invite attention to the sound as well as the sight, even if the sound is, as it were, heard silently. In any event, the sound is used in discussion about the product for sale, ordering the product for sale, and so on: Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362; 1 ALR 443 at 449.

    [43] I do not agree that the fame of VIAGRA would help to distinguish the marks. It would rather cause HERBAGRA to strike a chord with the consumer as to a link with VIAGRA. The deception or confusion need not persist until the point of purchase: Hack, Re Application to Register a Trade Mark (1940) 58 RPC 91 at 103–104; Southern Cross Refrigerating Co per Kitto J at CLR 595–6. Campomar Sociedad Limitada v Nike International Ltd (1999) 202 CLR 45; 169 ALR 677; 46 IPR 481; [2000] HCA 12 at [83].

    [44] In my view, many potential purchasers would not know that VIAGRA is only available on prescription. Even if they did, there would be no reason for the ordinary consumer to reject the idea that there might be a complementary or herbal version of the prescription drug.

13. In Viaguara[5] the applicant was seeking to register the trade mark VIAGUARA for “Alcoholic beverages; brandy, cocktails, liqueurs, rum, whisky, wine vodka” in Class 33 and had claimed the mark had been coined from the words “via” and “guara”, meaning “from” or “out of” and the name of a place in the Amazon Basin, respectively.  The Hearing Officer concerned nevertheless did “not consider that these alleged antecedents of the opposed trade mark are so obvious on first flush that this kind of analysis is likely to be influential in the comparison of the trade marks.”  Rather, he noted Pfizer Products Inc’s evidence regarding the manner the applicant had actually used the opposed mark on its website, concluding:

    [36] Accordingly, I consider that I should take into account [Pfizer Product Inc’s] evidence that the [applicant’s] website made reference to the ingredient in the [applicant’s] goods as being, “used by the American Indians when they desired erotic adventures after a hard working day,” because “Guarana increases sexual appetite in both sexes”. The evidence of the ithyphallic stick figures on the [applicant’s] website is also undisputed by the [applicant]. This evidence suggests to me that the [applicant] is alert to the similarity between its trade mark and the opponent’s trade mark (and the similarity of the alleged effects of guarana to the demonstrated effects of the opponent’s goods) and prepared to highlight this likeness.

    …

    [40] Taking into account my discussion of the [applicant’s] evidence of the origins of the opposed trade mark I conclude that the [applicant’s] explanation of the antecedents of the trade mark and the origins of the elements “via” and “guara” in the opposed trade mark appears to be strained. The opposed trade mark has the appearance to me of being a construct made with the opponent’s trade mark in mind and — noting the opponent’s website material in evidence — intended to confuse.

    [5] Which I note in passing was in the event decided under s 44 of the Act rather than s 60.

1. In the present matter I am likewise satisfied that the Applicant has devised the Trade Mark with the Opponent’s well known VIAGRA trade mark (and the VIAGRA product) in mind.  The element VIGRA has no meaning as far as I am aware and appears to be no more than a trifling variation of the VIAGRA mark, itself a made up word with no significance other than as the brand name of the VIAGRA product.  For its part, as Ms Rubagotti noted, the element VEGETAL is an ordinary English adjective defined in the (online) Macquarie Dictionary as “relating to or of the nature of plants or vegetables; vegetable”.  It is accordingly entirely descriptive in the context of the Applicant’s Goods.

2. In this regard Ms Rubagotti reminded me that the often quoted words of McTiernan and Dixon JJ in Australian Woolen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 657 appear apt:

   … The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public …

3. As mentioned, annexures to the McDonald declaration indicate that the Trade Mark has been used to date on at least two third party websites in relation to a product described as being “a pill used to treat erectile dysfunction (impotence) in men.” Indeed, Ms Rubagotti drew my attention to the fact that in copy on both of these websites the element VIGRA is in fact more often than not “misspelled” as “VIAGRA”. While conceding that the relevant pages from these websites in evidence had been downloaded after the Priority Date and that there was no evidence before me that the Applicant itself was responsible for the “misspellings”, she made the obvious point that in view of the reputation of the VIAGRA trade mark these are clear examples of the kind of (apparent) confusion likely to result from use of the Trade Mark and which s 60 is intended to guard against. I agree.

4. To conclude, like Gyles J in Herbagra, I think it likely that a substantial number of members of the public would believe, or at least be caused to wonder whether, the Applicant’s Goods marketed under the Trade Mark were a herbal version of the well known VIAGRA product and would be deceived or confused in the relevant sense accordingly. I thus find that the Opponent has established its s 60 ground.

Decision

1. Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:

   …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.

   Note: For limitations see section 6.

2. I have found the opposition to be successful on the ground raised pursuant to s 60 of the Act. I accordingly refuse to register trade mark application number 1447232.

Costs

1. In the event that it prevailed, Ms Rubagotti requested an award of costs in the Opponent’s favour.  As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.

Michael Kirov
Hearing Officer
Trade Marks Hearings
4 November 2013