Re: Opposition by Beckman Coulter, Inc to International Registration Designating Australia 1880980 (International Registration No. 1370198) - Open ACCESS - held by Gen-Probe Incorporated
[2019] ATMO 182
•18 December 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Opposition by Beckman Coulter, Inc to International Registration Designating Australia 1880980 (International Registration No. 1370198) – OPEN ACCESS – held by Gen-Probe Incorporated.
Delegate: Bianca Irgang Representation: Opponent: Sarah Dixon of Chrysiliou IP
Holder: Elena Szentivanyi of Henry Hughes IPDecision: 2019 ATMO 182
Opposition under regs 17A.29 and 17A.34 –s 60 considered and established - Protection to be refused.Background
1. Gen-Probe Incorporated (‘the holder’), has applied for extension of protection of International Registration Designating Australia (‘IRDA’) 1880980 in classes 1, 5, 9 and 10 of the International Classification of Goods and Services. Relevant details of the IRDA are set out below.
Trade mark: OPEN ACCESS (the ‘Trade Mark’)
IRDA: 1880980
International Registration: 1370198
Filing Date: 30 August 2017
Convention Claims: United States of America
87360259
6 March 2017Specification: Class 1: Nucleic acids, chemical reagents and buffers for use with automated in vitro diagnostic specimen analyzer instruments for detection and assay of analytes for research use; cartridges and containers comprised primarily of lyophilized and liquid reagents for research use
Class 5: Nucleic acids, chemical reagents and buffers for use with automated in vitro diagnostic specimen analyzer instruments for detection and assay of analytes for medical diagnostic use; cartridges and containers comprised primarily of lyophilized and liquid reagents for medical diagnostic use
Class 9: Automated in vitro diagnostic specimen analyzer instrument and parts thereof, for the detection and assay of analytes, all for laboratory use; computer software for the organization and analysis of specimen test data and to configure and control the operation of instrument system for in vitro diagnostic specimen analysis; cartridges and containers for use with lyophilized and liquid reagents for use in laboratory analysis
Class 10: Automated in vitro diagnostic specimen analyzer instrument and parts thereof, for the detection and assay of analytes, all for medical diagnostic use; cartridges and containers for use with lyophilized and liquid reagents for medical diagnostic use
2. Acceptance of the IRDA for possible protection was published in the Australian Official Journal of Trade Marks on 21 December 2017. Subsequently Beckman Coulter, Inc (‘the opponent’) filed a Notice of Intention to Oppose protection followed by its Statement of Grounds and Particulars[1].
[1] Which constitute ‘the Notice’
3. The holder then filed its Notice of Intention to Defend. Thereafter the parties respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).
4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 8 August 2019. The holder was represented by Elena Szentivanyi of Henry Hughes IP. The opponent was represented by Sarah Dixon of Chrysiliou IP.
Grounds of Opposition
5. In terms of reg 17A the Notice nominated four grounds of opposition but only sections 44 and 60 were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Justice Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. Should the opponent establish one ground of opposition in relation to all of the holder’s goods, there is no requirement for me to consider the other grounds of opposition.
[2] [2015] FCAFC 156, [133]
[3] [2006] FCA 1663, [26]
Evidence
6. The evidence in this matter consists of the following declarations:
Evidence in Support
·Declaration of Sarah Dixon (‘Dixon’) dated 8 August 2018
Evidence in Answer
·Declaration of Glenn Sawyer (‘Sawyer’) dated 16 November 2018
·Declaration of Jesse Strafford (‘Strafford’) dated 19 November 2018
Evidence in Reply
·Declaration of Tiffany Murphy (‘Murphy’) dated 16 January 2019
Discussion
Section 60 - Reputation in Australia
7. Section 60 of the Act provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
8. To establish the ground of opposition under section 60 the opponent relies predominantly on its use of and reputation in the trade marks below:
ACCESS ACCESS 2
(“opponent’s trade marks”)
9. The opponent’s ACCESS trade mark has also obtained registration being Trade Mark Registration No.(s) 571344, 571345 and 571346 in classes 1, 5 and 10. Unlike section 44 of the Act, section 60 does not require that the goods and services upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the holder, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I say now that the goods for which the above opponent’s trade marks are registered cover some of the same goods to those of the Trade Mark being vitro diagnostic goods.
10. It is for me to determine whether the opponent has established that before 30 August 2017 the opponent’s trade marks were recognized by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the holder of its Trade Mark would be likely to cause the public confusion.
11. The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths: [4]
(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:[5]
“...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.”
[4] [1999] FCA 1020 [50]
[5] [1973] HCA 43; (1973) 129 CLR 353, 362
12. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[6] by Kenny J:
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?
[6] [2000] FCA 1335 [81]
13. Dixon states that the opponent is a well-known developer and manufacturer of scientific and laboratory devices and apparatus that advance research and patient care. The opponent’s various goods are found in hospitals, critical care settings and laboratories around the world. The opponent provides scientific solutions across the world for laboratory customers at universities, governments, biotechnology and pharmaceutical companies, hospitals and commercial laboratories.
14. Ms Dixon goes on to explain the considerable history of the opponent which commenced in 1935 as Beckman Instruments when Dr Beckman sold the first commercial pH meter. Within 25 years, the opponent’s pH meter and as well as a DU spectrophotometer (considered the scientific equivalent of the Model T) and the helipot potentiometer found thousands of applications in science, industry and medicine.
15. Another key part of the opponent’s history took place in the early 1950s, when (a then unrelated person) Wallace Coulter derived the Coulter Principal, the most widely used method for counting and sizing microscopic particles suspended in a fluid. His method has been called the first viable basis for flow cytometry and from it grew an industry that changed the world of diagnostic medical research. Wallace and his brother, Joseph, founded Coulter Electronics in 1958.
16. The following timeline takes into account some other noteworthy developments and acquisitions in the opponent’s long-standing history:
· In the 1970s Beckman Instruments and Coulter Electronics expanded their respective products and facilities, each with new sites in Europe. Beckman Instruments also opened a sales unit in China.
· In the 1980s and 1990s Beckman Instruments focused on developing laboratory systems for biological analysis and transforming technology into solutions for clinical laboratories.
· In 1996, Beckman Instruments acquired the ACCESS product line from Pasteur Sanofi Diagnostics, S.A. to add immunoassay to the company’s diagnostics product offering.
· In 1997, Beckman Instruments acquired Coulter Corporation, adding hematology, flow cytometry and hemostasis product lines giving the company the broadest portfolio of laboratory testing instruments available from one source creating Beckman Coulter.
17. According to Ms Dixon, the opponent is a part of a group related companies including Beckman Coulter International S.A. and Beckman Coulter Australian founded in 1980 (herein referred to as ‘the opponent’s related companies’). Becker Coulter Australian Pty Ltd handles all operation and sales of all products including those goods branded with the opponent’s trade marks[7].
[7] Annexure G accompanying Dixon
18. The opponent is the owner of Australian trade mark registration no(s). 571344, 571345 and 571346 which are for the word ACCESS as mentioned in paragraph eight above. According to Ms Dixon, the opponent has used its trade marks primarily in laboratories for diagnostic purposes. One such example of use is in relation to an instrument that tests blood sample to assist doctors in the diagnosis, monitoring and management of disease.
19. Ms Dixon advises that the opponent’s trade marks are primarily used in laboratories for diagnostic purposes and that the primary customer market for the opponent’s ACCESS branded goods are pathology laboratories in public hospitals or commercial laboratories[8]. However, she does state that the opponent’s ACCESS goods have been used from time to time for other scientific diagnostic purposes.
[8] Annexure C accompanying Dixon
20. Ms Dixon avers that there are currently 164 ACCESS branded systems in use throughout Australia and that the opponent’s ACCESS branded systems have been installed in around 150 countries world wide. The opponent’s ACCESS products have received approval from the Australian Government and are listed on the Australian Register of Therapeutic Goods[9]. Ms Dixon states that very considerable revenue is generated from the sales of the goods branded with the opponent’s trade marks and that a lot of this is attributable to Australia.
[9] Annexure E accompanying Dixon
21. I note from the opponent’s evidence that over the years its acquisitions of different companies have lead to extensive brand extension for the opponent into many different fields of science and laboratory goods. Based upon all of the above I am satisfied that the opponent’s trade marks had acquired a significant reputation in Australia at the priority date of the Trade Mark. It now needs to be determined if, given this reputation in Australia, use of the Trade Mark by the holder would be likely to deceive or cause confusion.
22. To answer the opponent, Sawyer states that the holder is a developer, manufacturer and supplier of products in the field of nucleic acid-based diagnostic assays. He explains that nucleic acid-based diagnosis assays involve the detection of specific nucleic acid (i.e. DNA or RNA) sequences. He avers that the holder has developed and commercialized proprietary instrumentation systems that are designed exclusively around nucleic acid-based assays. He further points out that the opponent’s products sold under its ACCESS trade mark related to an immunoassay system and not a nucleic acid -based assay system.
23. Mr Sawyer explains that nucleic acid-based assays and immunoassays use different types of reagents and techniques to achieve different kinds of results. He states that:
Immunoassays are texts designed to detect the presence of a specific antibody or antigen in a sample. Nucleic acid-based assays use specific nucleic acids, chemical reagents and buffers designed to amplify or detect nucleic acid sequences in a sample. Immunoassays are not designed to amplify and detect target nucleic acid sequences … nucleic acid-based assays are incapable of detecting antibodies or antigens. Additionally, reagents for performing immunoassays and nucleic acid-based assays are not packaged together, nor are the two different types of assays run on the same types of instruments because of their technological differences.
24. Mr Sawyer makes an interesting point. While both are diagnostic assays they both are used for different purposes and have many diverging points between them. He also points out that purchasers of both the holder’s and opponent’s goods typically are or will be highly educated with advanced scientific degrees, training and skills who will understand the differences between nucleic acid-based assays and immunoassays.
25. However, while the products are used for different purposes they are both aimed at consumers (both large corporations and then the end users working within the hospital or laboratory) in the scientific and health profession. The opponent has demonstrated in its evidence that it is well-known for the acquisition of and merging with other traders within the scientific marketplace in order to expand the number of products it offers across the number of disciplines. The opponent has demonstrated considerable and long-running brand extension into different scientific and diagnostic fields as part of its business model which can have a significant impact on consumers (no matter how highly educated) when it comes to products that are both found in a similar environment and share similar trade marks.
26. In considering the similarities between opponent’s trade marks and the Trade Mark it becomes clear that the respective trade marks share some striking similarities.
Opponent’s trade mark
Trade Mark
ACCESS
ACCESS 2
OPEN ACCESS
27. All the trade marks contain the striking and usual word ACCESS which has no descriptive meaning when applied to the goods of the opponent or the applicant. While ACCESS and OPEN ACCESS have their own individual meanings of being accessible or being freely accessible, the opponent has persuasively argued that the word “OPEN” only serves to qualify the type of “ACCESS” in the Trade Mark. Further to this, I note from Sawyer that the word “OPEN” in the Trade Mark alludes to the fact that the holder’s new system to run LDT’s is known as an ‘open channel functionality’ which also somewhat detracts from the impact of the word “OPEN” in the Trade Mark.
28. Overall I consider that, given the reputation acquired by the opponent’s trade marks and the opponent’s past merger and acquisition behavior resulting in considerable brand extension, a significant number of consumers would at the very least experience a reasonable doubt[10] as to the existence of some sort of connection between the opponent’s trade marks and the Trade Mark if it were used to the extent of all of the goods listed in the opposed application.
[10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5
29. The opponent has clearly invested a great deal of money and time in promoting its various trade marks and also in growing its business through significant brand extension. While section 60 does not require a finding that the trade mark are substantially identical or deceptively similar, I find that the similarities between the respective trade marks taken together with the opponent’s demonstrated reputation in Australia adds to the likelihood of confusion taking place in the marketplace.
30. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all of the holder’s goods. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.
Decision
31. Subregulation 17A.34(1) provides:
17A.34(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.
32. The opponent has established a ground of opposition under section 60. I reject IRDA no.1880980 (International Registration No 1370198), OPEN ACCESS, and hence extension of protection is refused.
Costs
33. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the holder under section 221 of the Act in terms of Schedule 8 of the Regulations.
Bianca Irgang
Hearing Officer
Oppositions and Hearings
18 December 2019
5
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