Pharmacia & Upjohn Co v Hoult Australia Pty Ltd

[2002] ATMO 88

TRADE MARKS ACT 1995

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

Re:Opposition by PHARMACIA & UPJOHN CO. to registration of trade mark application 800924(5) - PROSTAN - filed in the name of HOULT AUSTRALIA PTY LTD.

DATE OF DECISION:	10 October 2002
DELEGATE:	Acting Hearing Officer Rachel Dunn
REPRESENTATION:	Opponent Stephen Plymin of Watermark, Attorneys
DECISION:	Section 52 Opposition successful for sections 44 and 60: registration refused, section 55(a)

Background

Hoult Australia Pty Ltd (the applicant) filed trade mark application number 800924 for the trade mark PROSTAN for the goods of  'A pharmaceutical product intended for the treatment of benign prostatic hyperplasia in males' in Class 5 on 21 July 1999.  The trade mark application was accepted for registration at the first report, and its acceptance was advertised in the Official Journal of Trade Marks on 18 May 2000.

On 17 August 2000, Pharmacia and Upjohn Co. (the opponent) filed a notice of opposition. The notice of opposition stated grounds in terms of sections 41, 43, 44, 58, 59, 60, 61 and 62 of the Trade Marks Act 1995 (the Act), however only grounds in terms of sections 41, 44, 59 and 60 have been relied upon in the evidence and written submissions.
The opponent served and filed its evidence in support by 17 November 2001.  The applicant did not serve any evidence in answer, nor did it serve a notice to the effect that it did not intend to rely upon evidence in answer to the opposition.

Neither party has requested to be heard in the matter. Accordingly, it has come to me to decide the opposition on the basis of the material on file, as a delegate of the Registrar of Trade Marks. As the evidence and written submissions of the opponent do not seek to rely upon the grounds of opposition in terms of sections 58, 61 and 62 of the Act, I hereby find that the opposition has been unsuccessful on these grounds.

Evidence

The evidence in support can be broken into two groups, the first consisting of statutory declarations by persons who have some connection with the opponent, and the second consisting of statutory declarations by persons who are not involved per se with the opponent.

Stephen J Higgins, the Managing Director of the opponent, outlines the history of the opponent and its ownership and use of the trade mark PROSTIN.  He declares that the trade marks PROSTIN and PROSTAN are almost identical and deception or confusion would be created if the trade marks were to coexist.  In Australia PROSTIN is registered as follows:

Owner	Trade Mark	Number	Priority Date	Goods - Class 5
Pharmacia & Upjohn Company	PROSTIN	250120	15 July 1971	Oxytocic agents
Pharmacia Enterprises S.A.	PROSTIN	360370	19 May 1991	Vasodilators, namely pharmaceutical preparations containing prostaglandins

Stephen Plymin, acting for the opponent, attests to the fact that Nationwide Investigation Services Pty Ltd were retained to conduct discreet enquiries into the use of the subject trade mark in Australia by the applicant or any other entity.  Based on the reports received, he declares his understanding is that neither the applicant nor anyone else has ever used PROSTAN in Australia, and that the use of PROSTAN in the United States of America for a natural product intended to aid prostate conditions has ceased.

The second group of evidence consists of nine statutory declarations made by people in the fields of pharmaceuticals or medicine.  All of these declarations contain statements to the effect that the declarant is familiar with PROSTIN products and believes PROSTAN to be confusingly similar to PROSTIN.  These declarations have been summarized below:

Name	Position	Date
Christine Kemp	Business Development Manager/ Pharmacy Dept. Royal Children's Hospital, Melbourne	21/10/01 (15 yrs in industry)
Ian Larmour	Director of Pharmacy / Monash Medical Centre / Pharmacist	23/10/01 (33 yrs in industry)
David Ford	Director of Pharmancy/ Royal Melbourne Hospital / Pharmacist	32/10/01 (18 yrs in industry)
Des.S. Meagher	Director of Pharmacy / Box Hill Hospital / Pharmacist	23/10/01 (35 yrs in industry)
Brian John Lilley	Director of Pharmacy / Royal Woman's and Royal Children's Hospitals, Melbourne	24/10/01 (20 yrs in industry)
Greg Weeks	Director of Pharmacy / Barwon Health / Pharmacist	26/10/01 (27 yrs in industry)
David Avery	Director of Pharmacy / North West Regional Hospital / Pharmacist	29/10/01 (38 yrs in industry)
Patrick Keefe	Pharamcist / Manager of Pharmacy Dept. Of Launceston General Hospital	1/11/01 (27 yrs in industry)
Nicholas Tong	Director of Pharmacy Dept. / Alfred Hospital / Pharmacist	14/11/01 (35 yrs in industry)

The evidence also includes exhibits showing use of PROSTIN on packaging for injections of a prostaglandin used for therapeutic termination of pregnancy and a gel prostaglandin used to induce labour in term or near-term pregnancies.

Submissions

Ms Amanda Jones, of Watermark Patent and Trade Mark Attorneys, made written submissions on behalf of the opponent for my consideration. These submissions outlined the history of the subject application, the opposition and the evidence provided by the opponent. The submissions included a discussion of section 41 of the Act which concluded that the subject application should be refused in terms of either subsections 41(5) or (6). Similarly, it was submitted that the goods involved were clearly similar, the trade marks were substantially identical (or at least deceptively similar) and that section 44 should prevent registration of the subject application in the face of the two trade marks for PROSTIN that are already registered. In regard to section 59 Ms Jones submitted that the fact the applicant had not used the trade mark, as demonstrated by the opponent's evidence, supports a claim that the applicant has no intention to use the trade mark. Further, in relation to section 60, she asserted that the opponent has a reputation in the trade mark PROSTIN and that this is reinforced by the nine declarants as detailed above. Ms Jones concluded her submissions with a claim for an award of costs in favour of the opponent.

Discussion

Section 41 - Trade mark not distinguishing applicant's goods or services
Section 41 of the Act requires that a trade mark application must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services from the goods and services of other traders. When deciding a trade mark's capacity to distinguish it is open to the Registrar to conclude that the trade mark is inherently adapted to distinguish (subsection 41(3)) or is not at all inherently adapted to distinguish (subsection 41(6)). In the third alternative, the trade mark may be to some degree inherently adapted but not capable of distinguishing on that basis alone (subsection 41(5)). If the Registrar is satisfied that the trade mark is capable of distinguishing, subsection 33(1) binds the Registrar to accept the trade mark, provided there are no other grounds for rejecting it and that the application was made in accordance with the Act. If the Registrar is not satisfied that the trade mark is capable of distinguishing, and the applicant fails to show otherwise, the Registrar must reject the application in terms of subsection 41(2) and subsection 33(3).

The operation of section 41 was considered by Branson J in Blount Inc v Registrar of Trade Marks 40 IPR 498 (the Oregon case) and her analysis was approved by Wilcox J in Oceanspray Cranberries Inc v Registrar of Trade Marks (2000) AIPC 91-539 (the Cranberry Classic case).  The inherent adaptation of a trade mark to distinguish the goods of a trader is to be assessed with reference to the question of Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, at 514, which may be summarised as follows:

The question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

Applying this test I must determine whether the trade mark PROSTAN is inherently adapted to distinguish the goods of the applicant from those of other traders.

The opponent submits that PROSTAN is an abbreviated form of PROSTAGLANDIN or PROSTACYCLIN, also that PROSTAN is a chemical descriptor and that a qualified person would expect PROSTAN to contain prostaglandins.  Furthermore, it is submitted by the opponent that as PROSTAN is directly descriptive of prostaglandins, it has little or no inherent capacity to distinguish and therefore should only have been allowed to proceed to acceptance on the basis of subsection 41(6) or subsection 41(5).

At this point it is convenient to mention the opponent's view that the applicant's claim for A pharmaceutical product intended for the treatment of benign prostatic hyperplasia in males includes within its scope all types of pharmaceutical products including prostaglandins.  I cannot agree with this conclusion.  The claim of goods, I believe, clearly relates to pharmaceutical products that specifically treat a certain type of disease in a specific group of people.

The Macquarie Dictionary and the Oxford English Dictionary do not define the term PROSTAN.  There is nothing in the opponent's evidence to show that PROSTAN is used as a direct description or as an accepted, well-known abbreviation for prostaglandin or indeed any other term.  The evidence that the word prostan can appear as one element of a chemical descriptor, clearly shows that it is not used in that form as a single word.  There are other parts to a chemical description, as in the example provided by the opponent of the compound EPA-113 written as 9,11-(epoxymethano)prostan-1-oic acid.

Clearly there is some similarity between PROSTAN and the term 'prostatic' used in the applicant's claim of goods, meaning 'pertaining to, produced by or connected with the prostrate'.[1]  However there is no direct reference involved here, at most there is a suggestion that the goods are connected to the prostate in some way.  I am not satisfied that PROSTAN falls into the category of a sign that is ordinarily used to indicate the goods in question, and as such the applicant's trade mark has some inherent adaptation and is not caught by the provisions of subsection 41(6).

[1] Oxford English Dictionary

Further, it is established that a trade mark need not be absolutely unsuggestive and may even contain a covert and skillful allusion to the goods and still be prima facie capable of distinguishing.[2] I believe this is the case with the applicant's trade mark. It is necessary to search for a meaning for PROSTAN. The opponent has not convinced me that the application of PROSTAN to the goods in question would necessarily describe, indicate or call to mind the nature of the goods or some attribute they possess. PROSTAN falls into the category of trade marks under subsection 41(3). The Registrar may conclude that trade marks in this category are prima facie capable of distinguishing. The opposition in relation to the ground under section 41 therefore fails.

[2] Burroughs Welcome & Co.'s Trade Mark (1904) 21 RPC 217 at 226 and Mark Foy's Ltd v Davies Coop & Co. Ltd (1956) 1A IPR 470 at 476

Section 44 - Identical etc. trade marks

Section 44, in as far as it is relevant to this opposition, reads:

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

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

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

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

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

Under section 44 the comparison is between the applicant's trade mark PROSTAN and the prior registrations for PROSTIN, as detailed in the table form above. Both PROSTIN trade marks have priority dates (15/07/1971 and 19/05/1981) before that of the trade mark applicant's priority date (21/07/1999), thus both PROSTIN trade marks may be considered in terms of section 44.

The opponent is relying upon both substantial identity and the broader test of deceptive similarity.  When considering the concept of substantial identity Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd., 109 CLR 407, at page 414, said:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison....

The trade mark registrations are for the plain word PROSTIN.  The subject application is for the plain word PROSTAN.  The trade marks are visually very similar, with the only difference being the substitution of the letter "I" in the registrations with the letter "A" in the applicant's trade mark.  This substitution is in the latter part of the word and as such has less of an impact than if made in the prefix of the words.  It was said by Sargant LJ in London Lubricants (1920) Ltd's Application that the

tendency of persons using the English language to slur the termination of words...has the effect necessarily that the beginning of the words is accentuated in comparison, and ...the first syllable of a word is, as a rule, far more important for the purpose of distinction.

The trade marks share all letters except for one.  PROSTAN and PROSTIN have clear visual and phonetic similarities.  Aurally, I believe both trade marks would have the stress on the 'pro' syllable and would be pronounced PRO-stan and PRO-stin respectively.  The net impression of the applicant's PROSTAN compared side-by-side with the registered PROSTIN is therefore one of striking similarity and substantial identity.

Having found substantial identity exists between the words PROSTAN and PROSTIN, I need not turn to the broader test of deceptive similarity.  I do however, need to consider the respective specifications of goods for these trade marks.  The trade mark applicant has applied for the specification of a pharmaceutical product intended for the treatment of benign prostatic hyperplasia in males.  Whilst I believe that this specification may include any pharmaceutical which will have a beneficial effect to the treatment of benign prostatic hyperplasia; as mentioned previously I do not agree with the opponent's submission that this is essentially a claim upon all pharmaceuticals.  The opponent's PROSTIN trade mark is registered for the quite specific claims of oxytocic agents and vasodilators, namely pharmaceutical preparations containing prostaglandins respectively.

The expression 'similar goods' is defined by subsection 14(1) of the Act:
Definition of similar goods and similar services

14.(1) For the purposes of this Act, goods are similar to other goods:
     (a)   if they are the same as the other goods; or
     (b)   if they are of the same description as that of the other goods.

The expression 'goods of the same description' has been the subject of a large amount of judicial comment.  In Southern Cross Refrigerating Co v Toowomba Foundry Pty Ltd (1954) 1A IPR 456, it was said, at 468:

The fact that examination of the nature of the applicant's goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive...There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in Re Jellinek's Application (1946) 63 RPC 59; 1A IPR 393.

Romer J considered the nature of the goods in question, the respective uses and also the trade channels through which the goods were bought and sold, in the analysis of the similarity of the goods.  In this case the general nature and characteristics of the goods are the same - both are pharmaceutical preparations to aid or heal the patient.  As both are used to aid or heal, it could be argued that the uses are the same also.  The evidence shows PROSTIN is used in aiding women in labour by causing cervical ripening and stimulating uterine contractions.  It is also used for causing therapeutic termination of pregnancy by stimulating contractions and emptying the uterus.  However, the specification of vasodilators namely pharmaceutical preparations containing prostaglandins could also, I believe, be used for other medical conditions.  PROSTAN would treat a medical condition or disease of the prostate, but there are no details regarding the specific type of pharmaceutical product the trade mark applicant has in mind.  The core purpose of all of the goods in question is as therapy, aid or treatment for human patients.  Therefore, both the nature and the uses of the goods are the same.

The trade channels involved with these goods may be broken down into the trade channels for the purchase of the goods and the trade channels for the sale of the goods.  The end consumers of the respective goods are likely to be very different people and the situations in which the goods would be consumed are also likely to be very different.  However, both sets of goods are pharmaceuticals that may be ordered by hospitals, surgeries, pharmacies and medical professionals.  I believe it is highly probable that instances of confusion may occur when ordering the goods.  The trade marks are substantially identical and the workers who deal with ordering, shipping, receiving and general administration could not be expected to know the different uses of PROSTIN and PROSTAN products.  Additionally, there is the possibility that the sets of goods would be stored along side each other in a hospital or doctor's surgery.

I conclude that the respective goods of both parties are of the same description.  The goods can not be 'sold in the same shops over the same counters during the same seasons and to the same class or classes of customers', as per John Crowther, (supra).  However, all of the goods are pharmaceuticals used to treat humans that may be ordered by the same medical professionals.  The goods covered by the opponent's PROSTIN trade marks are of the same description as the goods of the applicant's PROSTAN products.

I have found that the trade marks in question are substantially identical, the registered trade marks both have earlier priority dates than the subject application, and the goods of the respective trade marks are of the same description. Further, the applicant has presented no arguments or evidence that the exceptions to subsection 44(1) provided by subsections 44(3) or 44(4) may be applied to this application. The opposition in relation to the ground under section 44 is therefore successful.

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

Generally, such a ground of opposition is difficult for the opponent to establish.  It may succeed however, if the opponent has an admission from the applicant, (McDonald's Corporation v Macri Fruit Distributors Pty Ltd [2000] ATMO 37). The opponent's evidence shows that a United States company offered a product employing the term PROSTAN for sale over the Internet. This product was a natural therapy product for the treatment of prostate problems, and it appears from the evidence that this product has been discontinued and is no longer available. However, this information provided by the opponent does not represent evidence of the applicant's intentions or lack of intentions in relation to use of the PROSTAN trade mark in Australia for the goods specified in the application. The opposition in relation to the ground under section 59 therefore fails.

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

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

I have already decided that the opponent's PROSTIN trade marks are substantially identical to the applicant's trade mark PROSTAN.  This being the case I now need to decide whether or not at the time of filing the subject application (21 July 1999) the opponent's PROSTIN trade marks had acquired a reputation in Australia.  If such a reputation exists, I need to decide if is it so great that use of the applicant's trade mark PROSTAN on the goods specified in its application would be likely to deceive or cause confusion.

The trade marks for PROSTIN are registered in over 100 countries worldwide, and the earliest registration in Australia dates back to July 1971.  Use of the trade mark PROSTIN for the goods specified in trade mark registrations 250120 and 360370 (as tabled above) began in 1991.  However, two of the highest selling PROSTIN products do enjoy a 94.5% and 57.1% share of the relevant market.

Statutory declarations have been tendered in evidence to help show the buying public's familiarity with the opponent's PROSTIN products.  These declarations of nine medical or pharmaceutical professionals show that people in the relevant field of medicine and pharmacy are aware of the PROSTIN range of products and consider the words PROSTIN and PROSTAN to be similar.  I am satisfied that a reputation in PROSTIN products is present within the part of the community most likely to be at risk of deception and confusion with the PROSTIN and PROSTAN trade marks.

PROSTIN products have been promoted by way of packaging and product information and have been sold to such major healthcare suppliers as Sigma and Faulding.  No instances of confusion or deception have been indicated, however as it appears the applicant has not yet used the trade mark, there may have been no chances for any deception or confusion.

I am satisfied on the evidence before me that the reputation of the opponent's PROSTIN goods is of such magnitude that use of the applicant's PROSTAN goods would deceive or cause confusion in the face of this reputation. The opposition in relation to the ground under section 60 therefore succeeds.

Decision

The opposition is successful in relation to the grounds under sections 44 and 60. It follows then that the opposition as a whole has been successful and subject to any appeal from my decision, I refuse to register the subject trade mark PROSTAN.

Costs

The opponent has claimed its costs.  I see no conduct on their part that would justify a departure from the general rule that costs are awarded against the unsuccessful party.  I therefore award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the Official Scale in Schedule 8 of the Trade Mark Regulations 1995.

Rachel Dunn
Acting Hearing Officer
Trade Marks Hearings