Rajendra Patel v iNova Pharmaceuticals (Singapore) Pte

[2018] ATMO 124

TRADE MARKS ACT 1995

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

Re:Opposition by iNova Pharmaceuticals (Singapore) Pte Limited to registration of trade mark application 1760265(5) - DUROFLAM - filed in the name of Rajendra Patel.

Delegate:

Jock McDonagh

Representation:

Opponent: Frances St John of counsel instructed by Gilbert + Tobin

Applicant: Brian Elkington of Adams Pluck Attorneys

Decision:

2018 ATMO 124

Trade Marks Act 1995 (Cth)

Section 52 opposition: ss 42(b), 44, and 60 considered – s60 established – registration refused

Background

1. This matter relates to an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of a trade mark filed by Rajendra Patel (‘the Applicant’). Relevant details of the opposed application are set out below.

Application No

1760265

Trade Mark

DUROFLAM

(‘the Trade Mark’)

Filing Date:        

21.03.2016 (‘the Priority Date’)

Goods & Services:

Class 5: Lozenges for pharmaceutical purposes; Medicated lozenges; Pharmaceutical preparations in the form of lozenges

1. The Trade Mark was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 11 August 2016. Valeant Pharmaceuticals International, Inc (‘Valeant’) filed the SNotice of Intention to Oppose the registration of the Trade Mark on 1 September 2016 and a Statement of Grounds and Particulars (‘the Statement’) on 3 October 2016.  Thereafter the Applicant filed a Notice of Intention to Defend on 2 November 2016. The parties then filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. iNova (‘the Opponent’) asked to be substituted as the opponent on 7 December 2017 and that request was granted.

3. The parties were advised of their right to be heard or to make written submissions.  The parties elected to be heard. The Opponent was represented at the hearing by Frances St John of Counsel instructed by Gilbert + Tobin. The Applicant was represented by Brian Elkington of Adams Pluck Attorneys. I heard the matter in Canberra on 19 February 2018 as a delegate of the Registrar of Trade Marks.

   Grounds of Opposition

4. The Opponent pressed the following grounds of opposition under the Act:

   ·Section 44: The Trade Mark is substantially identical with or deceptively similar to a prior application or registration;

   ·Section 60: The Trade Mark is similar to a trade mark that has acquired a reputation in Australia; and

   ·Section 42(b): Use of the Trade Mark would be contrary to law.

5. To succeed in its opposition the Opponent bears the onus of establishing at least one of these three grounds on the ‘balance of probabilities’.[1] As will become apparent, I have only found it necessary to address the section 60 ground in this decision and this is discussed below.

   [1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

6. The time at which the grounds of opposition must be established is the Priority Date.[2]

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595

   Evidence

   The evidence consists of the following declarations:

Declarant	Position	Date Made	Annexures
Evidence in Support
Christopher John Round (‘Round 1’)	Partner of original legal representatives for Valeant	8.02.17	CJR-1 to CJR-26
Declarant	Position	Date Made	Annexures
Evidence in Answer
Rajendra Patel	Managing Director of Makpar Exports Private Ltd	11.05.17	A and B
Evidence in Reply
Christopher John Round (‘Round 2’)	Partner of original legal representatives for Valeant	14.07.17

1. Round 1 provides a background and history of Valeant as a global pharmaceutical company that develops, manufactures, and distributes a broad range of pharmaceutical products throughout Australia, South East Asia, Africa, the United States of America, and others.

   9.     Round 1 also explains that the following trade marks (‘iNova Marks’) were originally owned by 3M until the Asia Pacific part of the business was sold to iNova Pharmaceuticals (Australia) Pty Ltd in 2006. In 2011, iNova Pharmaceuticals (Australia) Pty Ltd was acquired by Valeant, with the rights to the iNova Marks being acquired by Valeant on about 16 November 2016, and assigned to the Opponent on 29 September 2017. The iNova Marks are:

Number	Trade Mark	Priority Date	Goods and Services
175667	DURO-TUSS	24.08.62	Class 5: Pharmaceutical preparations for alleviation of coughs or colds
626619	DIFFLAM	05.04.94	Class 5: Pharmaceutical preparations, namely, topical anti-inflammatory medicated preparations; all other goods included in this class Endorsements: Registered under provisions of paragraph 45(1)(b).* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.*
1218723	DUROTRAM	10.01.08	Class 5: Pharmaceutical and medical preparations containing tramadol

10. The Opponent relies on the iNova Marks to support its grounds of Opposition, and in particular it relies on the reputation in the DURO-TUSS mark and the DIFFLAM mark for the section 60 ground.

11.   The Opponent operates a website at the URL (iNova Website). Since 2007, the iNova Website has prominently featured the DURO-TUSS mark and the DIFFLAM mark regularly, together with information about products sold under those brands (Round 1 [15]). Example extracts from the iNova Website showing prominent and frequent use of these two marks are in evidence (Round 1, Ex CJR-1).

12.   With regard to the DURO-TUSS mark, Round 1 states:

·     It has been used on goods sold in Australia since February 1978 (Round 1 [21]).

·     It is now used on a range of 12 products, including “Duro-Tuss Dry Cough Lozenges”, which have been sold in Australia since 1995 (Round 1 [22]; and see Ex CJR-4).

·     Since their inception, DURO-TUSS products have been distributed around Australia through chemists and pharmacies (Round 1 [24]).

·     DURO-TUSS products bear the DURO-TUSS mark prominently: for example labels from DURO-TUSS products from 1984, 1993, 1995, 2002, and 2016 are shown at Round 1 Ex CJR-3 and CJR-5.

· It is one of the most popular and highest-selling cough treatment products in Australia: Round 1 [32]. A confidential summary of sales of DURO-TUSS products since 2007 is at Ex CJR-11. The number is substantial. Of these sales, DURO-TUSS lozenges account for approximately 9.3 per cent: Round 1 [32].

·     The Opponent has also used the DURO-TUSS mark extensively throughout Australia in advertising and promotional material, by way of point-of-sale materials; print advertisements; outdoor advertisements; public digital screen advertising (on street displays and in railway stations, office buildings and elevators, shopping centres and other public buildings); digital banner advertisements placed on third-party websites; television commercials; and brochures and product sampling issued to pharmacies (Round 1 [26]).

·     The amount the Opponent has spent on advertising and promoting the DURO-TUSS mark and branded products since 2011 is set out in a confidential document exhibited to Round 1 as Ex CJR-12. That number is substantial.

13.   Round 1 also provides substantially the same evidence with respect to the DIFFLAM mark, which is said (at [36]) to have been used on goods in Australia since 1986.

Section 60 Trade mark similar to trade mark that has acquired a reputation in Australia:

14. Section 60 of the Act provides:

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.

15. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

16.   Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (2000) 51 IPR 102 by Kenny J at [81] – [82]:

What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

17.   Further, at [86], Kenny J said:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

18.   The Opponent submitted that the evidence establishes that, as at the priority date of the Trade Mark, the Opponent had acquired a significant reputation in Australia in the DURO-TUSS mark and the DIFFLAM mark such that the use of the Trade Mark would be likely to deceive or cause confusion among a substantial or significant number of consumers. Specifically, submits the Opponent, consumers would wonder whether goods branded with the Trade Mark were the same as, or related to, goods branded with the DURO-TUSS mark or the DIFFLAM mark, and whether they emanated from the Opponent.

19.   I am satisfied that the evidence establishes that the Opponent had used its DURO-TUSS marks and DIFFLAM marks in Australia in relation to medicated cough syrups, preparations, and lozenges for some thirty years before the Priority Date. The Opponent is arguably one of Australia’s leading brands in relation to such goods.

20.   The evidence demonstrates that at the Priority Date the Opponent’s revenue and customer base in Australia under its DURO-TUSS marks and DIFFLAM marks can be described as substantial.

21.   I am satisfied that as at the Priority Date, the DURO-TUSS mark and DIFFLAM marks had acquired  reputations in Australia in respect of goods including the goods for  which the Trade Mark is sought to be registered.

22.   Having regard to the evidence of the Opponent’s reputation in the areas described above, I consider that the use of the Trade Mark is likely to cause deception or confusion. Specifically, consumers would wonder whether goods branded with the Trade Mark were the same as, or related to, goods branded with the Duro-Tuss Mark or the Difflam Mark, and whether they emanated from the Opponent.

23.   I am satisfied that the Opponent has established this ground of opposition. 

Decision

24. I have found the Opponent has established the ground of opposition it raised under section 60 of the Act. As the Delegate of the Registrar I accordingly refuse to register the trade mark application number 1760265.

25. I have only found it necessary to address the section 60 ground in this decision. Of course, should the decision be appealed, it is open to the Opponent to plead any ground it considers relevant in proceedings before the Court.

Costs

26.   The Opponent has sought its costs.  I see no reason to depart from the general rule that costs follow the event.  As the Opponent has established a ground of opposition, I award costs against the Applicant in accordance with the amounts in Schedule 8 of the Regulations.

Jock McDonagh

Hearing Officer

Oppositions and Hearings

8 August 2018

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