Pfizer Products Inc v Viaguara S.A

[2010] ATMO 27

TRADE MARKS ACT 1995

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

Re:Opposition by Pfizer Products, Inc. to extension of protection to international registration designating Australia 1184479(33) - VIAGUARA (International registration no. 855223) – filed in the name of Viaguara S.A.

Delegate:	Iain Thompson
Representation:	Opponent: Hamish Bevan of counsel instructed by Ruth Horvai of Baker & McKenzie Holder: Peter Maddigan of counsel instructed by Catherine Chant of Thomson Playford Cutlers
Decision:	2010 ATMO 27 Regulation 17A.29 opposition s44 - whether trade marks VIAGRA and VIAGUARA are deceptively similar; parody; assumption based on ‘colloquial misapprehension’ as to nature of opponent’s goods; phonetic similarities of the trade marks; likely pronunciation of VIAGUARA. Protection refused – costs awarded against holder.

Background

1.In this matter, Viaguara S.A., of Warszawa, Poland, (‘the holder’) has requested extension of protection to an international registration designating Australia (‘IRDA’); current details of the IRDA appear below:

Application No:           1184479 (International: 855223)
Priority Date:               26 February 2007

Services:Class: 33.  Alcoholic beverages; brandy, cocktails, liqueurs, rum, whisky, wine vodka

Trade Mark:                viaguara

(‘the opposed trade mark’)

2.Following examination, the IRDA was advertised for possible protection in the Australian Official Journal of Trade Marks of 9 August 2007.

3.Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29.

4.On 8 November 2007 Pfizer Products Inc (‘the opponent’) of Groton, Connecticut, filed Notice of Opposition (‘the Notice’) to protection to the IRDA.  The Notice cites, inter alia, the grounds of opposition under the Trade Marks Act 1995 (‘the Act’) detailed at paragraph 6, below. As a delegate of the Registrar of Trade Marks I heard the arguments of both parties in Sydney on 17 March 2010. Hamish Bevan of counsel instructed by Ruth Horvai of Baker & McKenzie represented the opponent; Peter Maddigan of counsel instructed by Catherine Chant of Thomson Playford Cutlers represented the holder.

Grounds of Opposition

1. Regulation 17A.31 sets out the grounds for opposing an IRDA. These include sections 39 to 44 of the Act (by virtue of 17A.31(1) and 17A.28(1)), and sections 58 to 61 of the Act (by virtue of 17A.31(3)). Regulations 17A.28(2) and 17A.31(3) provide that:

   • Where the relevant section of the Act refers to an “application” an IRDA is to be understood; and
   • Where an “applicant” is referred to within the Act, the holder of the IRDA is to be understood.

   6.Mr Bevan, for the opponent, made submissions going to four grounds under the Act; he argued that the registration of the opposed trade mark would be contrary to:

   • section 60 of the Act as use of the VIAGUARA trade mark would be likely to deceive or cause confusion in view of the opponent’s reputation in its trade mark VIAGRA in Australia;
   • section 44 of the Act on the basis the VIAGUARA trade mark is deceptively similar to the opponent’s registered defensive trade mark 894613 for the trade mark VIAGRA in Class 33 in respect of “alcoholic beverages (except beers)”;
   • section 43 of the Act as the VIAGUARA trade mark contains a connotation of the opponent’s VIAGRA trade mark so as to be likely to deceive or cause confusion; and
   • section 42 of the Act as use of the VIAGUARA trade mark will be contrary to the Trade Practices Act and the law of passing off.

   7.I understand that the grounds are argued in descending order of importance to the opponent and will decide the matter on the second ground (section 44) since, having considered all the grounds, I believe that the opposition must most obviously succeed under section 44.

   Evidence

   8.The service and filing of evidence was as prescribed by the Act and regulations thereto and comprises five statutory declarations. The opponent served and filed the declaration of Sally Glover dated 1 February 2008 in support of the opposition. The holder has served and filed in answer the joint declaration of Grzegorz Ksiazek and Marta Jezewska dated 23 June 2009, and also two declarations of Catherine Chant – the first dated 30 April 2009 and the second dated 1 July 2009. The opponent served and filed as evidence in reply the declaration of Tiffany Trunko dated 25 September 2009.

   9.My understanding from submissions and the materials in evidence is that the product sold or intended to be sold in Australia under the opposed trade mark is a pre-mixed alcoholic drink (often called an ‘alcopop’) which contains a substance called guarana an extract from a plant called ‘guarana’.  Guarana is defined in Wikipedia:

   Guarana  […] from the Portuguese guaraná, Paullinia cupana (syn. P. crysan, P. sorbilis) is a climbing plant in the maple family, Sapindaceae, native to the Amazon basin and especially common in Brazil. Guarana features large leaves and clusters of flowers, and is best known for its fruit, which is about the size of a coffee bean.  As a dietary supplement, guarana is an effective energy booster: it contains about twice the caffeine found in coffee beans (about 2–4.5% caffeine in guarana seeds compared to 1–2% for coffee beans).

   As with other plants producing caffeine, the high concentration of caffeine is a defensive toxin that repels pathogens from the berry and its seeds.

   The guarana fruit’s color ranges from brown to red and contains black seeds which are partly covered by white arils.  The color contrast when the fruit has been split open has been likened to eyeballs; this has formed the basis of a myth.  [parenthetical material and footnotes omitted]

   10.  Ms Glover was at the time of making her declaration the Legal Director of Pfizer Australia Pty Ltd (“Pfizer Australia”) which is a subsidiary of Pfizer Inc.  Pfizer Australia is responsible for sales and distribution of the goods sold bearing the opponent’s VIAGRA trade mark in Australia.  Ms Glover’s evidence sets out the history of the opponent’s VIAGRA trade mark and the exhibits to her first declaration reproduce the opponent’s evidence before the Court in Pfizer Products Inc v Karam [2006] FCA 1663 (‘Karam’) where, at paragraph 29, Gyles J summarised the evidence given by Arthur Silverstein, an in-house lawyer, who provided evidence of use and reputation of the VIAGRA trade mark internationally and the evidence of Sally Glover regarding the reputation of the VIAGRA trade mark in Australia thus:

   Silverstein dealt with the history, advertising and promotion of the product, advertising expenditure, sales of the product, trade mark registrations and, in relation to the reputation of VIAGRA, attached a representative sample of articles mentioning the product which have appeared in various United States publications with international circulations from newspapers, magazines and medical publications.  Glover dealt with the history of VIAGRA, advertising of the product in Australia, the sales of the product bearing the trade mark in Australia, Australian trade mark protection and the reputation of VIAGRA.  A good deal of material was produced in relation to reputation including market research, radio transcripts, media reports covering print and electronic media and the internet.  Evidence also establishes that Pfizer is the only owner of a trade mark registration class 5 for a mark containing the ‘-AGRA’ suffix.  The product in relation to which Pfizer uses the trade mark was the first oral treatment for erectile dysfunction, both in Australia and internationally.  ‘VIAGRA’ is an invented word.  The product was launched in Australia in September 1998.

   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 Glover which would support such a wider reputation.

   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.

   11.  Much of Ms Glover’s first declaration in support of this opposition updates the evidence in Karam, above. Ms Glover’s evidence also mentions the opponent’s Australian trade mark registrations including defensive registration 894613 (relevant to section 44 in this decision) which covers “alcoholic beverages (except beers)” in Class 33 of the International (Nice) Classification of Goods and Services.

   12.  Ms Glover’s declaration also exhibits at SG-12 the “information page” printed from the holder’s website on 27 August 2007.  Ms Glover observes that this information page refers to the “extraordinary power” of guarana 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.”  Ms Glover refers to the holder’s website, and further states:

   The [holder’s] product is promoted on the website with the slogan “Inflame Your Senses” and is described as a “first combination of Brazilian Guarana with exquisite Polish spirit.  Inspires your senses and stimulates your body.  Get seduced by the thrill”. The labels on the bottles featured on the website show stick figures of men with large penile erections. See attached copies of extracts from the website printed on 17 January 2008 at Annexure SG-13. Also included at Annexure SG-13 is a photograph of a bottle of the applicant’s product in which the labelling can clearly be seen. [parenthesis added]

   13.  Grzegorz Ksiazek and Marta Jezewska are joint declarants in the holder’s evidence in answer.  Mr Ksiazek is the Vice-President of the holder.  Ms Jezewska is the holder of commercial power of attorney of the holder.  My understanding is that joint declarations are required under some European company law.  The joint declarants state that the opposed trade mark was coined by combining the word “via” meaning “from” or “out of” and “Guara”, the alleged name of the place in the Amazon Basin from which the plant Paullinia cupana, the source of guarana, is supposed to originate.  They state that the holder has not yet started distributing goods under the opposed trade mark in Australia and:

   We are aware that the trade mark viaguara coexists with the opponent’s trade mark Viagra on the trade mark registers of Poland and the United States of America and that the viaguara mark coexists with the opponent’s trade mark Viagra in the market, in Poland. In particular, regarding coexistence on the Trade Marks Registers, We are aware that the applicant has obtained the Polish trade mark registration No.s 136284 and 208076 referred to at paragraphs 9 and 10 of this declaration and the United States of America trade mark registration No. 3,194,358 referred to at paragraph 10 of this declaration and that the opponent has obtained the following trade mark registrations in the United States of America and Poland:

   (i)        United States trade mark No. 2162548 VIAGRA filed on 12 April, 1996 in class 5, in respect of compound for treating erectile dysfunction; and

   (ii)       Polish trade mark No. 114102 VIAGRA filed on 26 November, 1996 in Class 5, in respect of pharmaceutical products, compounds for treating erectile dysfunction.

   We annex and mark TK-6 a copy of a printout from the USPTO database in respect of the United States trade mark No. 2162548 VIAGRA. We annex and mark TK-7 a printout in respect of the Polish trade mark VIAGRA from the database of the Polish Patent Office.

   The opponent unsuccessfully opposed the registration of the applicant’s trade mark viaguara in Norway and Japan. We annex and mark TK-8 copies of a letter dated 11 March, 2009 from our client’s Norwegian attorneys to our client’s Polish attorneys enclosing the Norwegian decision and relevant provisions of the Norwegian Trademarks Act. We annex and mark TK-9 copies of the decision of the Japanese Patent Office dated 1 April, 2009, together with translation.

   14.  Ms Chant is a solicitor employed by Thomson Playford Cutlers Lawyers, the firm representing the holder.  Ms Chant’s first declaration exhibits a list extracted from the ATMOSS trade marks database of IP Australia listing pending and registered trade marks with the prefix “VIAG-”, in all classes.  This list shows many of the opponent’s registered trade marks, as well as others such as 768918 VIAGROW(1), 942842 VIAGEN(42) and 955954 VIAGE (32).

   15.  Ms Chant’s second declaration addresses probative issues arising out of the joint declaration of Grzegorz Ksiazek and Marta Jezewska and need not be discussed.

   16.  In evidence in reply, Tiffany Trunko states she joined Pfizer Inc in 1998 as trade mark counsel and is now Assistant General Counsel - Trademarks and is the global head of Pfizer’s Trade Mark Department.  Ms Trunko says:

   The status of this International Registration in Germany is that, by a judgment dated 7 July 2009, the District Court in Munich ordered that the applicant consent to the withdrawal of protection of the German part of the International Registration of the mark “Viaguara” registered with WIPO under number 855223. The District Court also granted injunctions in favour of the Opponent restraining the applicant from using the “Viaguara” mark in Germany. The Applicant has subsequently appealed this decision. An English translation of the decision of the Munich District Court is attached.

   The deadline for cancelling the registration of the Czech designation of the International Registration of the trademark has not yet lapsed. To the best of my knowledge, the applicant has not distributed any products under the VIAGUARA trade mark in the Czech Republic as of today’s date.

   Similarly, the deadline for cancelling the registration of the Swiss designation of the International Registration of the trade mark has not yet lapsed. To the best of my knowledge, the applicant has not distributed any products under the VIAGUARA trade mark in Switzerland as of today’s date.

   The Opponent has filed a cancellation action against the applicant’s United States International Registration referred to in paragraph 10 of [Grzegorz Ksiazek and Marta Jezewska] declaration (United States registration no. 3194358). In addition, attorneys in the United States representing Pfizer sent a warning letter to the applicant advising it that should it come to Pfizer’s notice that the Applicant has commenced use the VIAGUARA trade mark in the United States, Pfizer reserves the right to pursue legal action. To the best of my knowledge, the Applicant has not distributed any products under the VIAGUARA trade mark in the United States as of today’s date.

   The opponent has filed an opposition to the registration of US national application 77522421 which is also for registration of the trade mark VIAGUARA.

   As for the applicant’s national registration for the VIAGUARA trade mark in Mexico, the deadline for cancelling the registration has not yet lapsed. To the best of my knowledge, the applicant has not distributed any products under the VIAGUARA trade mark in the Mexico as of today’s date.

   The declaration of [Grzegorz Ksiazek and Marta Jezewska] states at paragraph 12 that the Opponent has unsuccessfully tried to oppose registration of the VIAGUARA trade mark in Norway. The opponent has filed an appeal against this decision. This appeal is pending.

   The opponent has oppositions pending against registration of the VIAGUARA trade mark in Brazil, Canada, China, Estonia, Hong Kong and Latvia.

   Further, the opponent successfully opposed the applicant’s application for a national registration for the VIAGUARA trade mark in Hungary. Applicant filed an appeal of this decision.

   The registration of the VIAGUARA trade mark has been refused in Russia. Attached and marked Annexure TT-3 is a copy of the official notification of this refusal.

   The applicant did not defend the opponent’s opposition of the VIAGUARA trade mark in New Zealand and the application has therefore been abandoned. A copy of an extract from the New Zealand database and the official notification of abandonment are attached and marked Annexure TT-4.

   Similarly the applicant’s application for registration of the VIAGUARA trade mark in Singapore has been withdrawn after the applicant failed to defend the opposition filed by the opponent.

   Onus

   17.  After reviewing the precedents in Karam, in particular whether such matters should be decided in summary manner only on clear proof, Gyles J said of the onus in trade mark oppositions:

   I am faced with the clear words of the statute, on one hand, and the opinions of various judges, on the other. There is no binding Full Court authority. I cannot find any instance where a single judge has actually applied the higher standard. In my opinion, in this case, comity does not demand that I depart from my view as to the meaning of the statute. ‘The fundamental responsibility of a court when it interprets a statute is to give effect to the legislative intention as it is expressed in the statute’ per Mason J in Babaniaris v Lutony Fashions Pty Ltd [1987] HCA 19; (1987) 163 CLR 1; cited with approval by Mason CJ, Wilson, Dawson, Toohey and Gaudron JJ in John v Federal Commissioner of Taxation [1989] HCA 5; (1989) 166 CLR 417 at 439. I will, therefore, approach the matter on the basis that the opponent has to establish a ground of opposition, although not clearly establish such a ground, whether in a summary fashion or otherwise.

   18.  I will accordingly decide this matter on the balance of probabilities, although if the higher standard were adopted, my decision would be unaltered.

   Section 44

   19. Section 44 of the Act relevantly provides:

   44Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   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.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   20. To establish its ground under section 44, the opponent must evidence an application or registration (in the name of a person other than the holder) which has an earlier priority date than that of the opposed IRDA and which is registered for the same or similar goods on which the trade mark is at a minimum deceptively similar to the opposed trade mark.

   21.  Here the opponent relies on its defensive registration 894613 of VIAGRA which covers “alcoholic beverages (except beers)” in class 33.  The opponent’s registration has a priority date of 9 November 2001 which is earlier than that of the opposed application.  The goods of the opposed IRDA fall within the scope of the term ‘alcoholic beverages’ on the defensive registration.  It is not argued by the opponent that the trade marks in question are substantially identical; thus, it remains to be decided whether the trade marks of the parties are deceptively similar.

   Legal Background

   22. Deceptive similarity is defined within section 10 of the Act which provides:

   10Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

   23.  In Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641, Dixon and McTeirnan, JJ said, concerning the comparison of trade marks:

   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, then 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.

   24.  Subsequently, in the same case, they said:

   It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.

   25.  The context of the particular marketplace of the goods in question is also important.  This contextual comparison was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J, as he then was, 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.

   26.  Concerning the assessment of likelihood of deception or confusion, the standard which is applied to the test is that specified in Registrar of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 50 by French J who said:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) 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.

   (iii) 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.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

   Discussion

   27.  There was, both in evidence and in submissions, argument about the meaning of the word VIA and the holder’s professed coinage of the opposed trade mark out of the words VIA and GUARA.  Guara is alleged in the holder’s evidence to be the name of the place where the guarana plant originates in South America (the reference cited above states the origin to be in the Amazon basin so, logically, this is where one should look for a place called ‘Guara’). 

   28.  The word ‘via’ means, according to the Oxford English Dictionary:

   1. By way of; by the route which passes through or over (a specified place).

   1779 J. LOVELL Let. to Adams 13 June, A.'s Wks. 1854 IX. 483 This night is the fourteenth since we first had the news of his victory, via New Providence. 1813 SIR R. WILSON Priv. Diary (1862) II. 139, I would sweep through Berlin, revictual the fortresses, and return via Magdeburg. 1833 T. HOOK Parson's Dau. III. x, Lord Weybridge..is on his way to London viâ Paris. 1856 C. M. YONGE Daisy Chain II. xxii. 589 Ethel's misanthropy was happily conducted off via the Cocksmoor children. 1882 H. DE WINDT Equator 127, I arranged to proceed through Spain and viâ Paris, home. 1899 KIPLING Stalky 56 Beetle..overturned a student's lamp, which dripped, via King's papers..on to a Persian rug. 1931 R. FRY Let. 3 Mar. (1972) II. 654, I was ever so glad to hear, via Helen, of you. 1958 A. SILLITOE Saturday Night & Sunday Morning iv. 60 Arthur and his father walked via the scullery into the living-room. 1959 M. GILBERT Blood & Judgement xiii. 138 More..had come to the Police via the Lower Deck of the Royal Navy. 1981 G. HOUSEHOLD Summon Bright Water iii. 149 He led me to talk of my interest in ancient economies and thus, via agriculture in the Forest of Dean, eased the way to my impressions of Broom Lodge.

   2. By means of, with the aid of.

   1930 in Amer. Speech VI. 122 Eastbay youth admits thefts via fish pole. 1972 M. KAYE Lively Game of Death (1974) vii. 41 Any deal..would have to be..concluded via contracts, attorneys, the whole schmeer. 1977 Rep. Comm. Future of Broadcasting iv. 30 It would in theory be possible to provide five more services with national coverage via satellite.

   29.  Thus, the word ‘via’ does not mean, as was suggested by the holder, ‘from’ or ‘out of’.

   30.  I do 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.  This is not, to me, how the opposed trade mark presents itself and the opposed trade mark does not obviously split itself into the elements VIA and GUARA on first inspection for the following reason: while many people know of guarana or guaranine as an ingredient in ‘energy’ drinks, not many Australians would be aware of the supposed origins of this ingredient in a geographical place named Guara which is proposed as such by the holder.  Although these origins of the word or element GUARA in the opposed trade mark have been alleged both in evidence and submissions by the holder, this has not been demonstrated.  There is no evidence before me which connects the word GUARA with the ingredients guarana or guaranine whereas the word ‘Guara’ has other meanings as a species of South American wild dog,[1] a bird,[2] or Sierra de Guara is the name of a range of mountains in the Pyrenes.[3]  It is thus the antecedents of the opposed trade mark (rather than the comparison of the trade marks) which are brought into question by the evidence of its supposed coinage: there is no evidence of a place called Guara in the Amazon basin where the guarana plant is claimed in evidence to have originated, nor is there such a place which I can immediately identify within readily available public resources.  Although Guarã is either the name of a Brazilian city in Paraná State or the name of a municipality in the State of São Paulo in Brazil,[4] these locations are much further south within Brazil than the Amazon basin which is the origin of the guarana plant. 

   [1] Oxford English Dictionary

   [2] Op cit

   [3] The Columbia Gazetteer of the World

   31.  Neither do I consider that the holder’s evidence of the other trade marks which have the element VIAG- as a ‘prefix’ has much relevance to my considerations when those other trade marks have ‘suffixes’ which have no arguable phonetic semblance to the ‘suffix’ within the opposed trade mark.  This is not to say that the opponent does or does not have any kind of monopoly in the ‘prefixes’ VIA- or VIAG- in relation to the relevant goods, but that this is (in the light also of my comments, above, about the supposed antecedents of the opposed trade mark) one occasion on which it is appropriate to compare the trade marks strictly as wholes, with no emphasis or discount being accorded to one or other parts of the trade mark(s).

   32.  Additionally, the evidence of the success of the parties (or lack of it) in other jurisdictions is not of great weight: considerations of deceptive similarity occur within local cultural, linguistic, phonetic and legal contexts and these differ from country to country.  Prolonged consideration of the decisions in other countries is likely to be as unproductive as consideration of prior registrations on the Australian register of trade marks: Ocean Spray Cranberries Inc v Registrar of Trade Marks 2000 [FCA] 177.

   33.  What I am to consider is the likelihood of confusion or deception if the trade marks are used in respect of any of the goods in respect of which they are registered on the one hand and in respect of which protection is sought on the other.  In the words of French J, in Registrar of Trade Marks v Woolworths [1999] FCA 1020:

   The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

   34.  There are occasions when the Courts and Registrar depart from the ‘fair and normal’ test set out in Smith Hayden and mentioned in Woolworths, above.  In NEC Corporation v Punch Video (S) Pte Limited [2005] FCA 1126, at paragraph 33, Branson J observed that the trade mark applicant’s opposed necvox trade mark had (despite the applicant’s statement to the contrary) historically been used in upper case which stressed its similarity to the opponent’s NEC trade mark registrations – and had on one occasion been used in the same font as that of the opponent’s trade mark.  Branson J went on to say:

   In AustralianWoollen Mills Limited v F S Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641 (‘Australian Woollen Mills’) at 657 Dixon and McTiernan JJ stated:

   ‘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.’

   In Windsor Smith Pty Ltd v Dr Martens Australia Pty Ltd (2001) 49 IPR 286 (‘Windsor Smith’) at 293 the Full Court considered that the inference to be drawn from a finding that a trader has deliberately adopted the get-up of a rival’s product for the purpose of implying a connection with the rival was ‘simply one piece of evidence to be assessed with such other evidence as may be adduced on the issue’. It is not necessary for me to decide whether there is any inconsistency between the approach of the Full Court in Windsor Smith, which involves claims under the Trade Practices Act 1974 (Cth) and for passing-off, and that of the High Court in Australian Woollen Mills. In this case, unlike the situation that prevailed in Windsor Smith, there was no persuasive evidence concerning the practical operation of the market place which suggested that the intention of causing confusion had failed. The inability of NEC to call evidence of actual confusion of consumers by reason of the use of the Trade Mark carries little weight. Only limited advertising using the Trade Mark appears to have been undertaken.

   35.  In Christian Dior Couture v Dior Investments Pty Ltd [2008] ATMO 18, I discussed a situation where the applicant had stressed the association between its DIOR trade mark and the opponent’s industry by including a photograph of the frontage of two well-known fashion houses in a brochure. I observed:

   … the applicant, in juxtaposing the opposed trade mark with the trade marks CARTIER and LOUIS VUITTON in its brochure, might appear to be sensible to the likelihood of confusion and slow to dispel it. This evidence, showing the Cartier and Louis Vuitton trade marks on buildings, also neatly illustrates the strong associative force in the opponent’s trade mark DIOR in relation to the opposed services once that is highlighted.

   36.  Accordingly, I consider that I should take into account Ms Glover’s evidence that the holder’s website made reference to the ingredient in the holder’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 holder’s website is also undisputed by the holder.  This evidence suggests to me that the holder 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.

   37.  This in itself is not fatal to the holder’s application.  Mr Maddigan in submissions drew my attention to Geoffrey Inc v Hoyle (2004) 63 IPR 196 at [38] where I said::

   Although in the trade context described above I consider it to be unlikely, it is possible that some people might see in the Applicant’s trade mark a reference to the Opponent’s trade mark or a part of it. However, making reference to part of another trade mark is permissible if the end result is that such reference will not mislead or deceive in terms of s 52 of the Trade Practices Act 1974 (Cth) (the TPA) (or s 42 of the Fair Trading Act) or will not result in deception or confusion in terms of ss 44 or 60 of the Act: see for instance, McIlhenny Co v Blue Yonder Holdings Pty Ltd formerly t/as Tabasco Design (1997) 144 ALR 496; 39 IPR 187 (the Tabasco case).  Registration is not an award for originality as long as that lack of originality is not a source of deception or confusion or would be likely to mislead or deceive.

   38.  It might be possible, for example, to view the opposed trade mark VIAGUARA as hovering on the edge of parody of, or being an oblique reference to, the opponent’s trade mark.  However, in Southcorp Limited v Morris McKeeman [2006] ATMO 48, (the trade mark ‘Tenfolds Grunge’) at paragraph 22, I said:

   The approach of the Courts in cases where parody is claimed is to consider each instance on its facts.

   In Pacific Dunlop Ltd v Hogan (1989) 14 IPR 398; 87 ALR 14, Burchett J stated at IPR 430:

   The suggestion in the present case, as his Honour found the facts, was of an endorsement of the appellant’s shoes by Mr Hogan’s almost universally appreciated Crocodile Dundee personality, and through that of an association between Mr Hogan and the product so endorsed. The television audience would accordingly hold the shoes in higher regard. On the evidence, some evocation of Crocodile Dundee was admittedly both intended and achieved; I do not see any basis for disturbing Gummow J’s view of its true effect. That view owed much to the special nature and circumstances of Mr Hogan’s portrayal of a character really indistinguishable from his own public image. It is, too, consistent with the concession made by the advertisement’s author, as noted by his Honour (ALR at 410; IPR at 232), “that the intention of the advertisement was that viewers should get an impression of Crocodile Dundee in connection with Grosby shoes”. I reject the appellant’s attempt to avoid, by miscalling its advertisement a parody, the consequences of representing Crocodile Dundee (actually addressed in the advertisement by his name Mick) as endorsing its shoes. The essence of Mr Hogan’s performance is parody, which can hardly itself be parodied, at least by what would be more accurately described as a parasitic copy -- parasitic because its vitality is drawn entirely from the audience’s memory of the original. As well might an attempt to imitate “HMS Pinafore” be called a parody of Gilbert and Sullivan!

   Thus, the parody, if it be such, must be of a nature that it is immediately and principally recognizable as both parody and distinct from the original and not imply some endorsement by the its owner, or a connection with the original or its owner such that the goods would be seen by the public as originating from the owner of the original. 

   39.  I do not think that the materials from the holder’s website and exhibited to Ms Glover’s declaration support the view that the opposed trade mark is a parody – or an oblique reference to the opponent’s trade mark such that the use of the  trade mark would not be confusing.  There is no countervailing material, or suggestion within the trade mark, which immediately dispels the obvious reference to the opponent’s trade mark and its trade marked product nor is there any obvious ‘joke’ such as within the Tenfolds Grunge trade mark which obviously sets it apart from the other trade mark. 

   40.  Taking into account my discussion of the holder’s evidence of the origins of the opposed trade mark I conclude that the holder’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.

1. The concepts ‘deceive’ and ‘cause confusion’ have often been conflated; however, the word ‘confuse’ refers to a different state of mind than does the word ‘deceive.’  In Pioneer Hi-Bred  Corn  Co v Highline 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.

   42.  I note that, in Karam, 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.

   43.  Mr Bevan proposed in submissions a form of confusion he called ‘colloquial misapprehension’ – that the similarity of the trade marks in question would be likely to lead to an understanding or supposition on the part of purchasers of goods sold under the opposed trade mark that it would or could contain as an ingredient the opponent’s goods sold under the opponent’s trade mark.  Although the opponent’s goods are available only on prescription, it is not generally understood that this is the case.

   44.  The strained explanation of the origin of the opposed trade mark, and the material from the holder’s website, appear to support the conclusion that the holder is alert to the possibility of this misapprehension and either views this possibility as a likelihood or, by drawing attention to it, would make confusion a likelihood.

   45.  Additionally, the opposed trade mark is, I think, likely to be pronounced either as VI-(as in ‘by’)-A-GOO-ARA or as VI-(as in ‘by’)-A-GWA-RA; both possibilities seem as likely as each other.  The opposed trade mark is well-known and it is likely that most people’s pronunciation of the opposed trade mark will be informed by their knowledge of the opponent’s trade mark – the holder has, historically, been prepared to stress this connection.  I consider that, in the context of the goods which are in fact cocktail mixes (alcopops), a request in a bar environment for a drink under the opponent’s notionally used[5] trade mark would be likely to be misheard as a request for goods sold under the applicant’s similarly used trade mark: it is axiomatic that “thirsty folk want beer not explanations” Montgomery v Thompson (1891) 8 RPC 361.

   [5] See Smith Hayden, above

   46.  Accordingly, I find the opposed trade mark deceptively similar to the opponent’s trade mark registration.

   47. There is no evidence from the holder which goes to subsections 44(3) or 44(4) of the Act and so the issues of honest concurrent use or prior use of the opposed trade mark do not need to be considered.

   48. I am satisfied that the opponent has established its opposition to registration under section 44 of the Act.

   49.  There is no need for me to consider the opposition under the other grounds on which it was argued.

   Decision

   50.  Regulation 17A.34 provides:

   17A.34   Decision on opposition

   (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

   (2)The Registrar must tell the International Bureau of his or her decision.

   51.  I refuse protection in respect of all of the goods listed in the IRDA.  The International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with regulation 17A.34(2).

   Costs

   52.  The opponent is entitled to its costs which I award against the holder at the scale set out in the regulations.

   Iain Thompson
   Hearing Officer
   Trade Marks Hearings
   7 April 2010