Re: Opposition by Myriad Women's Health, Inc. (formerly Counsyl, Inc.) to registration of trade mark application number 1857394 (classes 16, 39, 42, 44 - 4cyte in the name of 4Cyte Pathology Pty Limited

[2020] ATMO 94

TRADE MARKS ACT 1995

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

Re:Opposition by Myriad Women’s Health, Inc. (formerly Counsyl, Inc.) to registration of trade mark application number 1857394 (classes 16, 39, 42, 44 – 4CYTE - in the name of 4Cyte Pathology Pty Limited

Delegate:	Jock McDonagh
Representation:	Opponent: Sonia Stewart of Counsel, instructed by F.B. Rice and Co Applicant: Gabriella Rubagotti of Counsel, instructed by KeyPoint Law
Decision:	2020 ATMO 94 Trade Marks Act 1995 (Cth) - Section 52 opposition: grounds under ss 44, 58 and 58A pressed - s 44 ground established – registration refused.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by Myriad Women’s Health, Inc. (formerly Counsyl, Inc.) (‘the Opponent’) to registration of the following trade mark:

Trade Mark No:	1857394
Trade Mark:	4CYTE (‘the Trade Mark’)
Applicant:	4Cyte Pathology Pty Limited (‘the Applicant’)
Filing Date:	6 July 2017 (‘Priority Date’)
Specification:	Class 16: Contract forms; Contracts; Correspondence notes; Documentation for recording comments on patient care; Documentation for scientific purposes; Forms (printed); Forms (stationery); Information reports; Instructional charts for use in relation to medical health; Instructional material; Newsletters; Paper for correspondence; Periodical newsletters; Periodical publications relating to health care; Periodical publications relating to medical research; Periodicals; Printed matter; Printed matter relating to health education; Printed matter relating to medical matters; Printed reports; Reports (printed matter); Scientific reports Class 39: Arrangement of transportation; Arranging of transportation; Information services relating to the transportation; Transportation by courier; Provision of information relating to transport; Transport services Class 42: DNA testing services; Laboratory services; Laboratory testing services; Medical laboratory services; Veterinary laboratory services; Genetic fingerprinting; Genetic research; Laboratory analysis; Toxicity analysis; Clinical trials Class 44: Advisory services relating to diseases; Advisory services relating to medical problems; Advisory services relating to medical services; Blood bank services; Consultancy and advisory services in relation to medical services; Cytological specimen analysis services for medical and agricultural purposes; Cytological specimen examination services; Health care consultancy services (medical); Human tissue bank services; Information services relating to health care; Medical advisory services; Medical analysis services; Medical diagnostic services (testing and analysis); Medical services; Medical treatment services; Pathology services; Providing information including online, about medical services, and veterinary services; Provision of health care services; Provision of medical services; Services for the preparation of medical reports; Services for the testing of blood; Services for the testing of sera; Services for the testing of urine; Analysis of tissues for medical treatment; Conducting of medical examinations; Genetic testing for medical purposes; Medical examination of individuals; Medical screening; Preparation of reports relating to medical matters; Provision of medical facilities; Provision of medical information; Health care; Preparation of reports relating to health care matters; Cholesterol testing  (‘Applicant’s Goods and Services’)

1. The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 30 November 2017.

2. The Opponent filed a Notice of Intention to Oppose on 29 January 2018 followed by a Statement of Grounds and Particulars (‘the SGP’) on 28 February 2018.

3. The Applicant filed a Notice of Intention to Defend on 17 April 2018.

   Evidence

4. The evidence consists of the following declarations:

Declarant	Position	Date Made	Annexures
Evidence in Support
Brian Symmons (‘Symmons’)	Vice President, Marketing of Opponent	25.07.18	1 to 12
Supplementary declaration by Brian Symmons	(This declaration rectified some formal deficiencies in Symmons but did not include further evidence)	28.08.18
Evidence in Answer
Edmund James Bateman (‘Bateman’)	Chief Executive Officer of Applicant	7.12.18	A to P
Evidence in Reply
Lisa Catherine Neilson (‘Neilson’)	Trade Marks attorney for Opponent’s legal representatives.	11.02.19	LCN-1 to LCN-2

1. The matter came before me, a delegate of the Registrar of Trade Marks, in Canberra on 25 July 2019. Sonia Stewart of Counsel, instructed by F.B. Rice and Co, appeared by video link on behalf of the Opponent. Gabriella Rubagotti of Counsel, instructed by KeyPoint Law, appeared in person for the Applicant. 

   Grounds of opposition and onus

2. In the SGP, the Opponent nominated grounds of opposition under ss 42(b), 44, 58 58A and 60 of the Act. At the hearing the Opponent only pressed grounds under ss 44, 58 and 58A.

3. The Opponent bears the onus of establishing the ground of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [132].

4. If the Opponent establishes one of the grounds of opposition in relation to all of the Applicant’s Goods and Services, there is no requirement for me to consider the other grounds of opposition.

5. The date at which the rights of the parties are to be determined is 6 July 2017 being both the filing date and the priority date in this matter.

   Section 44

6. The relevant provisions of the Act with respect to the ground pursuant to s44 are:

   Section 44 - Identical 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)it 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.

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

   (a)it is substantially identical with, or deceptively similar to:

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

   (ii)           a trade mark whose registration in respect of similar services or closely related goods 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 servicers is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)            the similar goods or closely related services; or

   (ii)           the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

7. The Act also provides:

   Section 10 - Definition 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.

8. To succeed the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services. 

9. The Opponent relies on the following International Registration Designating Australia (‘IRDA’) as the basis for this ground of opposition:

Trade Mark No:

1879296 (International Registration 1368716)

Registered Owner:

The Opponent

Trade Mark:

FORESIGHT (‘the IRDA’)

Filing Date:

8.08.2017 (Convention priority date 9.02.2017)

Specification:

Class 10: Medical apparatus and instrument for diagnostic use, namely, apparatus for medical diagnostic testing in the fields of tissue-based diagnostic testing, cytology and cell-based testing

Class 44: Genetic testing for medical purposes

1. From the information set out above, it is evident that the IRDA is held in a name other than that of the Applicant and it has a priority date earlier than that of the Trade Mark.

2. I note that the filing date of the IRDA was two months later than that of the Trade Mark. Therefore, it was not considered by the trade marks examiner during the examination of the Trade Mark. Indeed, as pointed out by Ms Stewart in her submissions, the Trade Mark was initially cited under s 44 during the examination of the IRDA.

3. The Applicant’s submissions contained a suggestion that the Opponent should have provided evidence to support the formal adequacy of the IRDA’s Convention claim for priority. However, I have nothing before me to repudiate any presumption of the regularity of the Register as it currently stands regarding the IRDA as applied for. Therefore, I accept the priority date of the IRDA.

4. Ms Stewart submitted that the Trade Mark was arguable both substantially identical to and deceptively similar with the IRDA.

   Substantially identical or deceptively similar?

5. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J 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.[3]

   [3] [1963] HCA 66, at [12].

6. On a side by side comparison there are clear visual differences between the respective trade marks notwithstanding conceptual and aural similarities with the word FORESIGHT.

7. Ms Stewart referred to “dominant cognitive cues” which will be retained by a viewer, and by which a person seeking out the goods or services will recognise as a way of connecting the goods with a particular trader. She cited Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[4](Pham Global), where the Full Federal Court confirmed that such “dominant cognitive cues” are analogous to the “essential features” of the mark referred to by Windeyer J in Shell, and that “[t]he dominant cognitive dues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical.

   [4] [2017] FCAFC 83 at [51] per Greenwood, Jagot and Beach JJ.

8. However, in Pham Global the competing marks were both devices comprising a stylised eyeball and the word INSIGHT, along with descriptive words. Such dominant cognitive cues are absent in the comparison between the Trade Mark and the IRDA. I am not satisfied that the Trade Mark is substantially identical with the IRDA.

9. Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at paragraph 13 per Windeyer J:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two  marks  side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the  marks  clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "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" (1937) 58 CLR, at p 658.

10. I am to estimate the effect of the trade marks on the minds of potential customers – in other words, the assessment is to take place in the context of the marketplace for the goods and services.  This contextual comparison was stressed in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380, where Parker J 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.

11. The standard which is applied to the assessment of whether the trade marks are deceptively similar was stated by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 45 IPR 411 at paragraph 50:

    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."

12. As mentioned above, Ms Stewart advised that because the IRDA was filed after the Trade Mark it was not cited in the course of examination. In the examination of the IRDA, the examiner seems to have ignored the convention priority date and cited the Trade Mark under s 44. In her submissions Ms Stewart agreed with the examiner's conclusions regarding the similarity of the respective trade marks and goods and services. In particular, she considered that the FORESIGHT and 4CYTE trademarks are conceptually and aurally similar and on that basis they are at least deceptively similar to each other She also noted that:

    ·     the Trade Mark’s application claims a range of medical and medical-related goods and services, including specifically in relation to DNA testing, genetic research and testing, cytological specimen examination and analysis and analysis of tissue for medical treatment; and

    ·     the IRDA Application claims genetic testing for medical purposes and medical equipment for diagnostic testing in the fields of tissue-based diagnostic testing, cytology and cell-based testing.

13. Paragraph [5] of Neilson notes that Bateman [12] states that 4Ctye Pathology provides ‘pathology services in all major pathology sub-specialties. That is, haematology, chemistry, histopathology, microbiology, molecular testing, cytopathology [emphasis added]. Molecular pathology encompasses the use of molecular and genetic techniques designed to assess protein and nucleic acid based molecules and genetic techniques designed to assess protein and nucleic acid based molecules within a patient for the diagnosis and classification of diseases; prediction of response to treatment; predicting likelihood of disease progression; identifying for susceptibility of individuals to develop diseases/conditions and/or to pass on inherited conditions to offspring. This encompasses the Opponent’s specific genetic screening testing provided in connection with its FORESIGHT Carrier Test as detailed in the Declaration made by Brian Symmons dated 25 July 2018.’

1. I am satisfied that the Trade Mark application is for similar services to that of the IRDA, for the reasons outlined by counsel for the Opponent and supported by evidence.

2. I am also satisfied that the Trade Mark’s specified Class 16 goods are specialised medical paperwork that is closely related to the IRDA’s specialist genetic testing services in Class 44.

3. I have considered all the ways that the Applicant could have used the Trade Mark as at the priority date and the use to which the Trade Mark could be put in a ‘normal and fair manner’[5] for all the goods or services specified in the application. I consider that the goods and services claimed in the Trade Mark’s application and the IRDA Application are accordingly similar or closely related.

   [5] Re Smith Hayden & Co Ltd (1946) 63 RPC 97; and Berlei Hestia Industries v The Bali Company Inc (1973) 129 CLR 353 at 362.

4. Given the conceptual and aural similarities of the marks I am satisfied that there is a real and tangible danger of deception or confusion occurring and that the Trade Mark is deceptively similar to the IRDA.

5. There is no evidence of either honest concurrent use or prior use of the Trade Mark to satisfy either subsection. Therefore, I find that s 44 has been established.

   Decision

   Section 55: Decision

   (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or

   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

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

   Note:  For limitations see section 6.

6. Subsection (3) is not applicable in this case. The ground of opposition under s 44 of the Act has been established. I accordingly refuse to register trade mark application 1857394.

   Costs

7. The Opponent sought its costs.  As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant in accordance with Schedule 8 of the Regulations.

   Jock McDonagh
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   28 May 2020