Re: Oppositions by Siemens Healthcare Diagnostics Inc. to registration of trade mark application numbers 1921241(10), 1921243(9), and 1921280(5) - READIFLEX - in the name of Abbott Laboratories

[2020] ATMO 129

TRADE MARKS ACT 1995

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

Re:Oppositions by Siemens Healthcare Diagnostics Inc. to registration of trade mark application numbers 1921241(10), 1921243(9), and 1921280(5) – READIFLEX – in the name of Abbott Laboratories

Delegate:

Debrett Lyons

Representation:

Opponent: Daniel Wilson of Spruson & Ferguson, Patent and Trade Mark Attorneys

Applicant: Sonia Stewart, of Counsel, instructed by Clayton Utz, Solicitors

Decision:

2020 ATMO 129

Trade Marks Act 1995 (Cth) - section 52 oppositions: ss 44, 60 and 62A of the Trade Marks Act 1995 considered – none established and oppositions unsuccessful – trade mark may proceed to registration

Background

1. This matter concerns oppositions brought by Siemens Healthcare Diagnostics Inc. (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of three separate applications made by Abbott Laboratories (‘the Applicant’) on 20 April 2018 (‘the Filing Date’ or ‘the Priority Date’ as the context requires) for READIFLEX (‘the Trade Mark’). The applications were examined by this Office as mandated by s 31 of the Act, accepted, and advertised as such in the Australian Official Journal of Trade Marks for possible registration for the following goods:

2.     App. No.

3.     Goods

4.     1921241

Class 10: Medical diagnostic instruments, namely, molecular diagnostics analyzers and sample automation instruments

5.     1921243

Class 9: Laboratory instruments, namely, molecular diagnostics analyzers; operating software for molecular diagnostics analyzers; software supporting

molecular diagnostics analyzers; software for configuring molecular diagnostics analyzer operations; software for monitoring molecular diagnostics analyzer operations; software for managing test samples for molecular diagnostic analyzers; software for automating molecular diagnostic analyzer sample testing

6.     1921280

Class 5: Medical diagnostic reagents and assays

1. On 13 November, 2018, the Opponent filed its Notices of Opposition and later its Statements of Grounds and Particulars (‘the SGPs’).  The Applicant then filed Notices of Intention to Defend on 1 February 2019.  The parties each filed evidence after which they requested to be heard and the hearing took place on 7 July 2020.  I was delegated by the Registrar to take the hearing and so sent directions to the parties to ensure the orderly conduct of the hearing.  In compliance with those directions the Opponent, represented Daniel Wilson, a Principal of Spruson & Ferguson, Patent and Trade Mark Attorneys, provided written submissions and advised that he would attend the hearing by telephone. The Applicant provided a written outline of its submissions and advised that it would attend by video-conference, represented by Sonia Stewart of Counsel, instructed by Clayton Utz, Solicitors.

   Grounds of Opposition, Onus and Standard of Proof

2. The Oppositions raise the same three grounds against each application, namely ss 44, 60 and 62A. The onus of proof to establish one of those grounds rests upon the Opponent[1] which it must do based on the balance of probabilities as existed on 20 April 2018.[2]

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

   [2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

   Evidence

3. The parties filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’).   The  Evidence in Support comprises the declaration of Joann M. Walter, Vice President of the Laboratories Diagnostics Clinical Chemistry/Specialty Assays Division of the Opponent, made 29 April 2019 with Annexures A to H (‘the Walter Declaration’)[3].

   [3] The Walter Declaration states that it “regards portions” (unidentified) of the declaration as containing commercially sensitive information and therefore requests that it all be kept from public disclosure.  As has been noted in many earlier decisions from this Office, such a request potential renders the evidence useless. What has been said here of the contents of the declaration is in either general terms or already a matter of public record.

4. The Applicant’s Evidence in Answer comprises the declarations of Brett Chapman Doyle, a solicitor and Director of the Brands & Trade Marks group of Clayton Utz, the Applicant’s representatives, with Annexures BCD-1 to BCD-14 (‘the First Doyle Declaration’) and with Annexures A to D (‘the Second Doyle Declaration’), both made 30 July 2019.

5. There was no Evidence in Reply from the Opponent.

   Submissions and Discussion

6. The parties are both well-known companies and competitors in the same market.  The  Opponent asserts trade mark rights and a reputation in both READY PACK and FLEX and alleges that the use of the Trade Mark is likely to cause confusion in the face of those marks for which the Opponent holds the following registrations (‘the Opponent’s Registrations’)

13.   Reg. No.	14.   Priority Date	15.      Trade Mark	16.   Goods
17.   782548	7  Jan. 1999	18.      READY PACK 19.	Class 10: Apparatus and equipment for use in medical analysis and diagnostic testing; cartridges and containers including compartmentalised containers being the packaging component for reagents used for in vitro medical diagnostic testing equipment
20.   915945	21.   7 June 2002	22.      FLEX	Class 5: Diagnostic reagents and diagnostic reagent cartridges, all for clinical and medical laboratory use

1. Further, the Opponent alleges that the Applications were made in bad faith because the parties both market goods for in-vitro testing in Australia and elsewhere and there is no doubt that the Applicant knew of the the Opponent’s Registrations before 20 April 2018.  It is asserted that the READY PACK and FLEX trade marks have been used by the Opponent in Australia since 1997.

2. Of relevance to all grounds pressed is the Opponent’s submission that the Trade Mark is deceptively similar to the READY PACK trade mark and/or the FLEX trade mark; in other words the argument is that the Trade Mark is deceptively similar to (a)  READY PACK,      (b)  FLEX, and (c) the combination of  READY PACK and  FLEX.

3. The Applicant acknowledges the Opponent’s Registrations and that the parties are known to each other but broadly denies the allegations of confusion or bad faith.

4. The First Doyle Declaration attests to the state of the Register in reliance upon which the Applicant asserts the commonality of the integers of which the Trade Mark is composed.  The Second Doyle Declaration attests to coexistence of the Trade Mark with the Opponent’s registrations for READY PACK and  FLEX in other jurisdictions in reliance upon which the Applicant resists, inter alia, the allegation of bad faith.

   Section 60

5. I have found it convenient to first consider the section 60 ground of opposition. Section 60 of the Act provides:

   60Trade 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.

   Note:For priority date see section 12.

6. Accordingly, the Opponent needs to establish to the satisfaction of the Registrar that:

   ·     the trade mark(s) upon which it relies had a reputation in Australia at the priority date; and

   ·     because of that reputation the use of the Trade Mark would deceive or cause confusion.

7. In McCormick & Co Inc v McCormick[4] (‘McCormick’) Kenny J asked:

   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”.

   [4] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

8. In Le Cordon Bleu B.V. v Cordon Bleu International Ltee[5] Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)[6] was to be:

   ... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   (Implicitly approved by the Full Federal Court (Moore, Tamberlin and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee). ^[7]

   [5] [2000] FCA 1587; (2000) 50 IPR 1.

   [6] The word ‘reputation’ was not used in subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the word “reputation” into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438.

   [7] [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].

9. Regarding the measurement of reputation, in McCormick Her Honour went on to state:[8]

   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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   [8] Op cit at [86].

10. The Applicant’s position is that the Opponent has not met the evidenciary onus to prove a reputation in Australia in either the READY PACK or FLEX trade mark (upon which the Opponent relies).  It submits that unsupported statements in the Walter Declaration and the deficient evidence accompanying it do not establish a reputation in either mark in this country. 

11. The Walter Declaration states that “[g]iven the Opponent’s prolific use of both the FLEX Trade Mark and the READY PACK Trade Mark across its extensive range of in vitro diagnostic devices in Australia and worldwide, I am of the opinion that there is substantial reputation in these trade marks.”   As indicated earlier, that claim is premised on an assertion of continuous use of those trade marks in Australia since 1997.  However, there is no sales evidence whatsoever, either from Australia or from other jurisdictions.  The supporting material annexed to the Walter Declaration is of very limited assistance in establishing a reputation in the particular marks upon which the Opponent relies within Australia.  I am largely in agreement with the Applicant’s assessment of the Walter Declaration made below:

    Walters asserts that the Opponent is “the diagnostics division of Siemens Healthineers, a medical technology company” and “is among the five largest in vitro diagnostic companies in the world”.  An unsupported reference is then made to a ranking attributed by Kalorama Information, that the Opponent “ranked third by estimated revenue in 2017 after Roche Diagnostics and Abbott Laboratories.” It is not clear whether this ranking relates to Australia or globally. Accepting this evidence at face value for the limited purpose of addressing whether the Opponent has established a sufficient reputation in either READY PACK or FLEX, the evidence still does not assist the Opponent, because it is impossible to know whether the relevant revenue derives from sales under those marks. More likely than not, they relate to sales under the parent brand SIEMENS and a subset of sales these might be referable to some unknown extent to those marks and possibly extending to the Australian market before the priority date.[9]

    [9]     The images of packaging and devices appearing at Annexures C, G and H of the Walter Declaration indicate presence of the parent brand, SIEMENS.

12. In short, I find that there is insufficient evidence to show that another trade mark had, before the priority date, acquired a reputation in Australia. It follows that examination of s 60(b) becomes unnecessary and I find that the Opponent has not established this ground of opposition.

13. Without departing from those findings and for the purposes of the s 44 discussion which follows something more should be said of the evidence of use of the FLEX trade mark. The Walter Declaration states that there are 59 different products sold by the Opponent under this trade mark and that “[e]ach of the reagent cartridges sold under the FLEX Treade Mark is sold in conjunction with another trade mark corresponding with the in vitro diagnostic device with which it is compatible” and that in each case “the FLEX Trade Mark is a suffix to [that other] trade mark…”. I have examined what there is of the material supporting that claim and, putting aside the fact that there is no sales information, I do not find compelling evidence of a family of FLEX suffixed marks.

    Section 44

14. Section 44 of the Act provides, inter alia:

    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.

15. Clearly, the priority dates of the Opponent’s Registrations predate that of the Trade Mark.  The Opponent submits that the goods claimed in the Trade Mark applications are similar to the goods covered by the Opponent’s Registrations.  In particular, it submits that the nominated class 5 goods, namely, medical diagnostic reagents and assays, are “substantially identical with the ‘diagnostic reagents’ in Class 5 and the ‘packaging component for reagents’ in Class 10 which are designated by the FLEX Trade Mark and the READY PACK Trade Mark respectively.”  Further, that the nominated class 9 goods, namely, molecular diagnostics analyzers, are

    “substantially identical with the ‘apparatus and equipment for use in medical analysis and diagnostic testing’ in Class 10 which are designated by the READY PACK Trade Mark … and similar to the “diagnostic reagents… for clinical and medical laboratory use” in Class 5 which are designated by the FLEX Trade Mark given ‘molecular diagnostics analyzers’ require ‘diagnostic reagents’ to perform their function. These goods are therefore that which are used in conjunction and for the same overriding purpose.  The goods designated by the READIFLEX Trade Marks also include ‘medical diagnostic instruments, namely, molecular diagnostics analyzers’ in Class 10. These are substantially identical to the ‘molecular diagnostic analyzers’ discussed in the preceding paragraph. These goods are therefore also substantially identical with or similar to the ‘apparatus and equipment for use in medical analysis and diagnostic testing’ in Class 10 and the ‘diagnostic reagents… for clinical and medical laboratory use’ in Class 5 which are designated by the READY PACK Trade Mark and the FLEX Trade Mark respectively.”

16. Strictly speaking, the Act does not employ a test of substantial identity in the comparison of goods. Section 14 provides that 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. In Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd[10], the High Court cited with approval the Assistant Comptroller for the United Kingdom Trade Marks Office from Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 at 372:

    In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Re Jellinek’s Application Romer J classified these various factors under three heads, viz the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Mark Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description.”

    [10] (1954) 91 CLR 592 at 606-7.

17. The Applicant objects that whilst the Walter Declaration states that the Applicant and Opponent are “direct competitors in the Australian market for in vitro diagnostic goods”, it does not go further by stating that the parties’ goods are used as substitutes or alternatives for each other.

18. I find that the class 5 goods, namely, medical diagnostic reagents and assays, are the same as the class 5 goods, “diagnostic reagents”, found in the Opponent’s trade mark registration for FLEX.  It follows from what I decide shortly that I do not need to consider the Opponent’s additional submission that medical diagnostic reagents and assays are similar goods to “packaging component for reagents” in Class 10 of the Opponent’s READY PACK registration.

19. I find that the class 9 goods, namely, molecular diagnostics analyzers (and their operating software) are of the same description as the class 10 goods, “apparatus and equipment for use in medical analysis and diagnostic testing” of the Opponent’s READY PACK registration, noting that [38] above has already set out that the trade mark classification scheme is not a decisive criterion.

20. I find that the class 10 goods being, medical diagnostic instruments, namely, molecular diagnostics analyzers and sample automation instruments, are also of the same description as the class 10 goods of the Opponent’s READY PACK registration.

1. What remains is the Opponent’s submission that the class 10 goods are similar to  “diagnostic reagents … for clinical and medical laboratory use” in Class 5 of the FLEX registration. I find that they are not; they may well be complementary goods in the sense that they work together or are used together but they are not of the same description.

2. Subject to these findings, the remaining question is whether the compared marks are deceptively similar, there being no submission from the Opponent regarding substantial identity of the marks. 

3. Put simply, the Opponent’s principal submissions are that:

   ·     the difference between READY and READI is trivial and this element is common to the Trade Mark and the Opponent’s READY PACK mark.

   ·     the element READY “attaches specifically to FLEX and PACK both being four letter words. That these end in ‘X’ and ‘K’ being letters with significant resemblance between them means that the [Trade Mark] and the READY PACK [mark] are not only comprised of the same number and many of the same letters but that these are similarly bookended.”

   ·     the ordinary purchaser is likely to infer that the Trade Mark and the READY PACK mark are related and come from the same source because of the practice of building on certain words as the basis of a family of marks and the element READY is an example of such a word.

   ·     the Trade Mark is also deceptively similar to the Opponent’s FLEX mark for whilst the ordinary purchaser may not mistake READIFLEX and FLEX, that purchaser is likely to infer that the marks are related and come from the same source.

4. Section 10 of the Act states that “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.” In Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd[11], Jacobson J distilled nine guiding principles to be applied in the assessment of deceptive similarity, the following being of particular relevance here:

   …

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[12] at 594 – 595.

   Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. …

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   …

   [11] [2012] FCA 1022; 97 IPR 183.

   [12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

5. The Applicant is especially interested in the surrounding circumstances identified by Jacobson J in point seven above and its submission is that:

   … it must be accepted that the designated goods of the Opposed Applications and those of the READY PACK Trade Mark and FLEX Trade Mark are therapeutic goods, used for the purpose of undertaking in vitro diagnostics by persons working in laboratories. [The Walter Declaration] confirms that “Both the Opponent and Applicant provide laboratory diagnostic products and services in Australia. Among the range of laboratory diagnostic products offered by the Opponent are in vitro diagnostic medical devices including clinical chemistry analysers and reagents which are provided in kit form or separately.”  This is clear from the nature of the goods themselves and also confirmed, by way of example, by an image [annexed to] the Walter Declaration, where the packaging clearly states “For Professional Use.” They are not goods available to the general public, even on prescription.

6. Accordingly, with the assistance of case citation[13] the Applicant argues that:

   … the goods … are used by carefully trained professionals working in calm and quiet laboratory environments, and who are highly trained in undertaking in vitro diagnostics. By way of contrast, the environment is not even a busy pharmacy, with waiting customers and the potential for noise and other distractions. There is every opportunity for these professionals to go about their work calmly and confidently, taking care and having an opportunity to inspect carefully the products they are working with, and to act in accordance with their professional responsibilities, and exercising due skill and care.

   [13] Diasil case (1947) 64 RPC 125;

7. Further, the Applicant seeks to include evidence of the state of the Register as a “surrounding circumstance” in spite of the Opponent’s reasoned objection that the state of the Register is an “unwarranted distraction”[14]. Before coming to that objection I note that what is required in order to decide the outcome of s 44 is, amongst other things, a comparison of the trade marks, taking account of how their character measures up to the goods[15], for as it was said by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, stated:

   The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances. [16]

   [14] Citing Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at [35] insofar that this does not speak to the nature of the market at the time that a particular trade mark is being considered for registration.

   [15] See, for example, Re Frigiking Trade Mark [1973] RPC 739 at 752 (Ch D), Whitford J.

   [16] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [13].

8. The Applicant’s submission is that:

   … the difficulty for the Opponent is that the elements of READIFLEX are prefixes and/or suffixes that are common to the trade and indeed to traders in general and their goods. This is also true of the Opponent’s READY PACK Trade Mark and its FLEX Trade Mark, both of which consist of or are comprised of terms that are descriptive: convenience (READY), packaging format (a PACK) and flexibility (FLEX). 

9. As indicated earlier, the First Doyle Declaration attests to the state of the Register in reliance upon which the Applicant makes these assertions about the commonality of the integers of which the Trade Mark is composed.  Based on that evidence the Applicant submits that:

   Whatever the rights afforded to the Opponent in virtue of its FLEX registration, they clearly do not extend so far as to prevent other traders from registering and therefore being entitled to use FLEX formative marks in class 5 for the same goods for which the FLEX mark is registered.  

10. The Second Doyle Declaration attests to co-existence of the Trade Mark with the Opponent’s registrations for READY PACK and FLEX in Brazil, Japan, Germany, Russia and the United States and calls upon the Second Doyle Declaration in additional aid of s 44 as showing “surrounding circumstances” mitigating against the likelihood of confusion in Australia.

11. Taking these arguments into account I am required to make certain preliminary findings.  There is nothing controversial in the Opponent’s submission that the difference between READY and READI is trivial and this element is common to the Trade Mark and the Opponent’s READY PACK mark.  However, there is then something awkward in its following submission that READI/READY “attaches specifically to FLEX and PACK both being four letter words. That these end in ‘X’ and ‘K’ being letters with significant resemblance between them means that the READIFLEX Trade Marks and the READY PACK Trade Mark are not only comprised of the same number and many of the same letters but that these are similarly bookended.”  The Applicant’s objection is that this argument entails “bridging over” of the Opponent’s FLEX and READY PACK trade marks:

    … In such cases, the Opposed Mark is alleged to create confusion through similarity to more than one mark by occupying the middle ground and eroding the distinctive space between the marks in question. 

    Absent evidence of a family of marks or at least of a proven reputation in both marks I find that the Opponent’s argument is not sustainable.

12. The next preliminary matter is the state of the Register as it sheds light on the inherent character of the elements of the compared trade marks.  I do not need the help of the Register to understand how the word “ready” (or its misspelling, “readi”) would be understood by the ordinary person.  I agree with the Applicant’s submissions that it would be understood to mean “convenient”.   I find that it has very low distinctive value.

13. The element “flex” is another matter.  As seen already, it is the Applicant’s suggestion that “flex” implies “flexibility”.  So it may, but its use in connection with the class 5 goods at issue - medical diagnostic reagents and assays – is not in my assessment intuitive or direct.  That is not to say either that the term has no bearing on the class 5 goods, or that its actual and proven use in the trade may dilute its distinctiveness irrespective of meaning, but there is no such evidence and in its absence the Applicant seeks to rely on the state of the Register.  I am not so convinced that this is the unwarranted distraction that the Opponent claims it to be.  The Applicant led me to the recent case of Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd[17](“Vagisan”) where the Federal Court considered the deceptive similarity of VAGISAN to VAGISIL in connection a range of personal care goods in classes 3 and 5 and reasoned:

    It has been recognised that the state of the register does not establish what is actually happening out in the market and that comparison with other marks on the register is in principle irrelevant when considering a particular mark that has been tendered for registration: Ocean Spray Cranberries Inc v Registrar of Trade Marks  [2000] FCA 177; 47 IPR 579 at [35] citing British Sugar plc v James Robertson & Sons Ltd  [1996] RPC 281 at 305. See also 1-800-Flowers.Com Inc v Registrar of Trade Marks [2012] FCA 209; 201 FCR 488 at [41].

    The significance of the evidence of the registrations and the limited sales of the limited products is not in relation to the knowledge or understanding of the ordinary consumer of existing trade marks and therefore of their capacity for confusion. It is rather in its support of the notion that the word or prefix VAG or the prefix VAGI- are likely to be understood by the ordinary consumer to be references to the vagina, and are therefore descriptive. The fact that many traders seek to register VAG or VAGI in relation to particular types of feminine healthcare products is indicative of that likely understanding.[18]

    [17] [2020] FCA 39.

    [18] at [73] – [74].

14. Accordingly, returning to the First Doyle Declaration I note the occurance of “flex” in a significant number of class 5 registrations, current and removed.  In many instances those registrations cover, inter alia,  pharmaceutical substances or medical preparations and whilst the Applicant is right to say that those descriptions embrace the diagnostic reagents and assays at issue here, I am cautious of how far I am guided by broad class headings.  Some of the registrations include goods where a link to the mark is discernable, for example, LEUKOFLEX (243288) registered for “surgical plasters, wound dressings, material for bandaging”, amongst other things.  Others such as PRISMAFLEX (1012917) are registered solely for goods - in this case, “fluids for medical use for machines used for invasive treatment of renal failure” - where any possible correlation between “flex” and the goods is guesswork.  In summary, the evidence from the Register shows a noteworthy regularity of adoption of the term “flex” for class 5 ( and other, related) goods but falls short of being an indicator of use of that term in the market for in vitro products or a guide as how the term would be understood by the ordinary consumer when used in connection with those goods.

15. Moving to the Second Doyle Declaration, I find that in spite of the citations relied upon by the Applicant, no reliable inferences, least of all, conclusions, can be drawn about the  likelihood of confusion be reason of co-existence of the marks on overseas Registers. This argument has been considered over many years and many decisions[19] and I need only underscore for present purposes that several of the jurisdictions are not English speaking,  some are deposit countries, others have very different standards of relative ground examination to Australia.

    [19] See, for example, the discussion in Spirits Product International Intellectual Property B.V. v Diageo Brands B.V. [2007] ATMO 64.

16. I come then to the final analysis and firstly to the Opponent’s claim that the Trade Mark is deceptively similar to it READY PACK mark.  I do not find that the ordinary purchaser is likely to infer that the Trade Mark and the READY PACK mark are related.  Whilst there is no question that brand owners do indeed build on certain words as the basis of a family of marks, there is no evidence whatsoever in this case that READY is an example of such a word or that the Opponent has created that family.  The compared marks are quite different, visually and aurally, and the mere fact that they have the  wholly descriptive word “ready” or its phonetic equivalent in common is not nearly enough to render the marks deceptively similar.  

17. On the other hand, a serious question exists as to whether READIFLEX and FLEX, used for similar goods, is likely to deceive or cause confusion.  As presented, the Opponent’s argument is that the ordinary purchaser may not mistake READIFLEX and FLEX, but is likely to infer that the marks are related and come from the same source.  

18. I am minded to restate Richardson J’s words from the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where his Honour 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.[20] 

    [20] [1979] RPC 410, 423.

19. This seems to me to be an occasion when the purchasing public may be deceived or confused. Given what I have already said about the character of the elements of the Trade Mark, the Opponent’s submission seems to me respectable even in the absence of a proven reputation in the FLEX trade mark or evidence of a family of “FLEX” marks.  I say this accepting that the term “flex” is likely to be understood by the ordinary consumer as a reference to “flexibility”, it is not obviously descriptive of the goods[21] and its frequency on the Register is not enough to allow me to rely on the principle cited in Millenium and reiterated by in Vagisan at [55] that:

    … where the common element of two marks is descriptive or of limited distinctiveness or in common use in the trade, it should be paid less attention, and greater weight must be given to the additional features of the marks in question. For example, in Mond Staffordshire Refinery Co Ltd v Harlem [1929] HCA 6; 41 CLR 475 at 477 the High Court held that MONSOL and MULSOL were not deceptively similar, in part because of the common use of the suffix “-sol” in relation to medicines and pharmaceutical preparations.

    [21] And so, in my assessment is not on all fours with the case of Abbott Biologicals BV v Novartis AG cited by the Applicant where it was held that INFLUGUARD and INFLUVAX  were not in conflict for vaccines, having regard, inter alia, to the presence of a number of registered marks containing the prefix “-influ”, being a clear truncation of “influenza”.

20. Nonetheless, the Opponent bears the evidenciary burden to show a real, tangible danger of deception or confusion and from what has been argued by the Applicant certain surrounding circumstances may mitigage against a finding of deceptive similarity. The first is the Applicant’s assertion that the goods of both parties will invariably carry their respective house marks and would, for example, be ordered by additional reference to those marks if not directly from the parties themselves. However, I note that the s 44 comparison involves a test of nominal, fair use and registration of the Trade Mark places no constraint on how it is used, nor is the Opponent’s use of its trade mark so constrained.

21. The second circumstance concerns the probable acquirers of the goods which the Applicant identifies as trained professionals working in a calm environment exercising due care.  Indeed that would seem to be so and I find this sort of purchaser is the relevant person who may or may not be deceived or confused.  In my consideration this has a determinative influence on what is an otherwise finely balanced matter.   Further, the type of purchaser has in a real sense already been imposed by the class 5 specification which qualifies the goods as all for clinical and medical laboratory use.

22. Had not the class 5 goods carried the qualification it does, I would have been minded to impose it in consequence of these proceedings as part of my decision.  As it is, applying the legal principles explained and taking into account the character of the probable acquirers of the goods, I find that the Opponent has not done enough to meet the evidenciary burden to prove a real tangible danger of deception or confusion.  I find that the marks are not deceptively similar.

23. Accordingly, the Opponent has not established its ground under s 44 of the Act against any of the applications for the Trade Mark.

    Section 62A

24. Section 62A of the Act states that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. There is little to commend this ground of opposition. In the case of Real Estate Home Loans Pty Ltd v REA Group Ltd.[22] I wrote that:

    Very few of the facts are in dispute and it is for me only to characterise the Applicant’s behaviour. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 gave examples of opportunistic behaviour borrowed from older cases, none of any real guidance to me here. The generalisation from the Courts has been that “the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character”. Examples of bad faith conduct are not finite. They may be as simple as breach of a contractual promise not to apply to register a certain mark, or a ‘spoiler’ application filed only to frustrate a competitor’s passage to registration. However, expectation has met experience since it has been more common to see claims based on an inference that the use of the impugned trade mark was intended to gain some unfair benefit or advantage, usually but not necessarily, over an opponent.

    [22] [2019] ATMO 129.

25. The Opponent reads its claims of use of a deceptively similar mark onto a judicial statement that prolonged competition between parties may be sufficient to infer a finding of bad faith,[23] but in my assessment of the evidence as a whole there is nothing showing conduct on the part of the Applicant falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.[24]  Taking account the character of the Trade Mark I am unable to infer that it was coined to gain some unfair benefit or advantage over the Opponent.

    [23] Fry Consulting Pty Ltd v Sports Warehouse Inc (No. 2) (2012) 94 IPR 551 at [152] and [156].

    [24] See, for example, DC Comics v Cheqout Pty Ltd (2013) FCR 194 at [62], per Bennett J.

1. I find that the section 62A ground of opposition has not been established.

   Decision

2. Section 55 of the Act relevantly provides:

   55Decision

   (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.

3. The Opponent has not established a ground of opposition against any of the applications.

4. The applications may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the applications should be in accordance with the court’s order or direction.

   Costs

5. The Applicant sought its costs in the event it was successful in this matter and I accordingly award costs against the Opponent in respect of trade mark number 1921241 under s 221 of the Act in line with the amounts in Schedule 8 of the Regulations. In respect of trade mark numbers 1921243 and 1921280, I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd., 53 IPR 591.

   Debrett Lyons

   Hearing Officer

   Hearings and Oppositions

   30 July 2020.