Pfizer Products Inc v Joseph Karam

[2005] ATMO 60

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 938868(5) - HERBAGRA; HERB AGRA; HERB-AGRA (SERIES OF 3 MARKS) - filed in the name of Joseph Karam.

Delegate:	Jock McDonagh
Representation:	Opponent: Written submissions by Baker & McKenzie, solicitors Applicant: Written submissions by MatthewsFolbigg, solicitors
Decision:	1. Section 52 opposition. Grounds of opposition under 42, 43, 44 and 60 not established -registration allowed 2. Costs awarded against opponent

Background

1. The applicant, Joseph Karam, applied to register the following trade mark:

Application Number:	938868
Trade Mark:	HERBAGRA; HERB AGRA; HERB-AGRA (SERIES OF 3 MARKS)
Goods:	Class  5:   Herbal medicines used to aid health, vitality and sexuality
Priority date:	23 December 2002
Advertised:	10 July 2003

1. The opponent, Pfizer Products Inc, filed notice of opposition to the trade mark's registration on 30 September 2003.  That notice listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act").

2. The opponent duly served and filed a considerable amount of evidence in support. The applicant did not serve or file any evidence.

3. Neither party has requested to be heard in this matter.  Accordingly, it has come to me, as a delegate of the Registrar of Trade Marks, to decide on the material on file.  The opponent’s solicitors, Baker & McKenzie provided written submissions.   The applicant’s solicitors, Matthews Folbigg, also provided written submissions.

   Evidence

4. Details of the evidence is shown in the following table:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Arthur A. Silverstein	29.06.2004	AAS1 to AAS8	Silverstein
Sally Glover	29.09.2004	SG-1 to SG-43

1. The Silverstein declaration is made by the Assistant General Counsel – Trade Marks for Pfizer Inc, located in New York City. He outlines the history of the opponent’s pharmaceutical product “Viagra” and provides details of the advertising and promotion of the product in the United States of America and world-wide.  Details of trade mark registrations in the USA and numerous other countries were also exhibited.

2. The Glover declaration is made by the Manger of Legal Affairs of Pfizer Australia Pty Ltd (“Pfizer”).  Pfizer and the opponent are subsidiaries of their USA principal, Pfizer Inc.  The declaration provides similar material regarding the promotion of the opponent’s product in Australia, and details of Australian trade mark registrations for the trade mark viagra.

3. I am satisfied that the material establishes that the opponent's viagra marks are very well known in Australia and enjoy a considerable reputation, both literally and for the purposes of the Act.

   Grounds of opposition

4. In its submissions, the opponent relied upon four grounds of opposition, namely those under sections 42, 43, 44 and 60 of the Act. I formally dismiss the remaining grounds of opposition.

   Ground 1 - Section 42 (b): use of trade mark contrary to law

5. Following the decision of Madgwick J in Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd (2001) 5 IPR 24, the Registrar is obliged, when assessing whether use would be contrary to law under s.42(b), to take into account the operation of laws and legislation other than the Trade Marks Act 1995.

6. Here, the opponent alleges that use of the trade mark would constitute a breach of the Trade Practices Act 1974 (“TPA”) and/or the common law tort of passing off.

7. The nub of the opponent's submissions was that in view of the reputation of the opponent's viagra trade marks, use by the applicant of its herbagra trade marks would involve a misrepresentation that the products sold under the applicant's marks is associated with the opponent that would lead to deception of the public. Further, such representation is likely to cause damage to the goodwill of the opponent's viagra trademarks and would amount to common law tort of passing off.

8. The opponent pointed to its argument relating to section 60 ground of opposition in support of the submission.

9. The applicant provided quite detailed submissions relating to this ground, which I do not intend to repeat.  However, it should be noted that the applicant accepted the opponent's evidence relating to its viagra marks to the effect that viagra has become exceptionally famous throughout the world.

10. The applicant pointed to the fame or notoriety of the opponent's viagra trademarks, to the fact that such products are available only upon prescription, and the likely class of consumer's (men suffering from erectile dysfunction).

11. The applicant submitted that the relevant buying public was unlikely to be misled or deceived.  At worst, consumers are likely to perceive the applicant's trade mark as a cheeky reference to the opponent's viagra mark.

12. I must say that I find the applicant's submissions to more closely represent the actual situation.  I am not satisfied that the applicant's use of its mark would amount to the misleading or deceptive conduct claimed by the opponent.  See also my discussion below relating to deceptive similarity of the competing  marks.

13. Therefore, I reject this ground of opposition

    Ground 2 - Section 43: a connotation within the trade mark

14. Section 43 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.

15. This section does not depend on the existence of a conflicting trade mark.  Connotation refers to that which is implied within the mark itself, as a secondary implied or associated meaning: Down to Earth (Victoria) Co-operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644 and confirmed in Winton Shire Council v Lomas (2002) 56 IPR 72.

16. TGI Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 confirms that the connotation must be in the applicant's trade mark itself. The connotation cannot be determined as a result of external considerations, such as reputation or use.

17. The opponent submitted that in the substantial reputation of its marks, the suffix –agra signified in association with the opponent especially in relation to goods that would be covered by class 5.

18. The opponent cited the office's decision in Intel Corp. v Magnatex International Pty  Ltd (1998) 41 IPR 406, where the Registrar's delegate accepted that one, if not the only, connotation of the pentium trade mark was “the products of Intel”. However, submitted that unlike the Intel decision, which concerned dissimilar goods, this case involved in goods of similar function in nature.

19. The applicant did not address that this ground of opposition.

20. While I accept that viagra has achieved such a degree of notoriety that the use of that word in relation to any goods would necessarily connote the products of Pfizer, I do not believe that the same can be said of the suffix –agra.

21. Agra is the name of an Indian city, the home of the Taj Mahal and the Red Fort. Agra seems to have some currency in agricultural and mining businesses.

22. It seems that the effect of the suffix is not one properly considered under this ground, rather it is better considered in respect to compassionate marks under sections 44 and 60. I dismiss this ground of opposition.

    Ground 3 - Section 60: Reputation

23. To satisfy section 60 of the Act, the opponent has the burden of establishing the following elements:

    (a)       a pre-existing trade mark;

    (b)substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

    (c)the acquisition of a reputation in Australia by the pre-existing trade mark; and

    (d)a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

24. I have already stated that the opponent’s evidence shows that it has a considerable reputation in its viagra trade marks. It has both established reputation by direct evidence of consumer appreciation and by inference from a high volume of sales, together with substantial advertising and other promotions: McCormick & Company v McCormick [2000] FCA 1335, at paragraph 86.

25. The test to determine whether trade marks are 'deceptively similar' is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407, at 415:

    'The marks are not now to be looked at side by side [as for substantial identity].  The issue is not abstract similarity, but deceptive similarity … the comparison … is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant's [trade mark]'

26. Further, the Court added at 416, that:

    '[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.'

27. The criteria for deceptive similarity have been set out in Australian Woollen Mills Limited v F S Walton & Co Limited (1937) 58 CLR 641 at 658 and by Parker J in Pianotist Co's Application (1906) 23 RPC 774 at 778 and reiterated in Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411.

28. The parties essentially agreed on the relevant legal principles and that the marks were not substantially identical; however, they applied different weightings to the rules of comparison. It was also common ground that the opponent’s mark comprised the prefix vi- and suffix –agra and that the applicant’s marks essentially were a prefix herb- and suffix –agra.

29. To condense the opponent’s detailed submissions, it was contended that, although the prefix suggested vigor, vibrancy and vitality, the essential feature of both of the marks was the suffix –agra. This suffix is quite rare in Australian trade marks. It was submitted that consumers would think that herbagra was a herbal version of viagra and would be likely to wonder if both products came from the same source.

30. The opponent also cited the Registrar’s delegate’s decision in Tonka Corp v Chang (1994) 20 IPR 253, which found musicopoly deceptively similar to monopoly and anti-monopoly.

31. The applicant submitted that the market for both products is, primarily, that of men seeking a remedy for erectile difficulties. There might, it was submitted, be a sub-market comprising men who do not suffer such difficulties but nevertheless wish to improve their sexual performance.

32. It was submitted that the viagra product was a prescription product, which may not be marketed directly to the general public.  There was no such restriction on the herbagra products.

33. The applicant submitted that there was considerable dissimilarity in the visual impression of the marks. The opponent’s prefix was literally meaningless, whereas the applicant’s prefix was the word “herb”.  Additionally, it was submitted, the first syllable of a word is, as a rule, the most important for the purposes of distinction.

34. The applicant submitted that both products deal with an indisposition of a highly sensitive nature and would make purchaser particularly careful of what he was buying.  Additionally, it was submitted, the viagra product was available only on prescription, so the consumer would be wary of buying a similar product off the shelf without careful consideration.

35. I am not satisfied that the marks are deceptively similar.  The ideas of the mark are quite different, notwithstanding a common suffix.  As the opponent suggested, the prefix suggested vigor, vibrancy and vitality, and the otherwise meaningless word is suggestive of the famous waterfalls at Niagara.  The imagery is one of potency, as I imagine the opponent would have wished.

36. The applicant’s mark is suggestive of something herbal. I do not consider that the dysfunctional yet discerning prospective customer would be likely to consider the products came from the same source.  At worst, they could, as suggested by the applicant, recognize a cheeky reference to viagra.

37. I consider that Australian market generally, and certainly for such products, is quite “trade mark savvy”, and appreciates the importance that merchants place on their trade marks.  Consumers would know that the viagra trade mark is extremely well known.  They would expect any varieties of the product to include the well known mark with a modifier.  For example a herbal version could be expected to be herbal viagra, or a weaker version for consumers with a lesser dysfunction might be viagra lite.

38. I dismiss this ground of opposition.

    Ground 4 – Section 44: Substantially identical/deceptively similar prior registrations

39. To establish the s.44 ground, the opponent must establish all of the following:

    ·     At the priority date there was a substantially identical or deceptively similar trade mark application or registration

    ·     in respect of similar goods or closely related services

    ·     in the name of a person other than the applicant.

40. The test to be applied under s.44 may be expressed as follows:

    'assuming use by the owner of the cited mark in a normal and fair manner of their mark in respect of any of the goods or services covered by the registration, is the Registrar satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of goods covered by the proposed registration.'

    Re Smith Hayden & Co’s Application (1946) 63 RPC 97, 101;

    Johnson & Johnson v Kalnin (1993) 26 IPR 435, 438.

41. And the priority date, the opponent had a number of trademark registrations in respect of similar goods; however, I have already found that these were neither substantially identical nor deceptively similar.  Therefore, I dismiss this ground of opposition.

    Conclusion

42. The opponent has not made out any of its grounds of opposition, thus the opposition fails.

43. The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Costs

44. The applicant sought its costs.  The general rule in awarding costs is that costs are usually awarded against the unsuccessful party, unless there is some conduct on the part of the successful party that would justify a departure from the general rule.

45. I see no reason why costs should not follow the general rule. I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    31 October 2005