Re: Trade mark application number 1946624 (class 35) Optimed in the name of Optimed Technologies Pty Ltd

[2020] ATMO 126

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1946624 (class 35) - OPTIMED- in the name of Optimed Technologies Pty Ltd

Delegate:	Jock McDonagh
Representation:	Registrant: Daniel McKinley of Gestalt Law
Decision:	2020 ATMO 126 Trade Marks Act 1995 (Cth) Intention to revoke registration under section 84A – not satisfied that the trade mark should not have been registered – not reasonable in all the circumstances to revoke registration – revocation of registration refused.

Background

1. This decision is pursuant to s 84A of the Trade Marks Act 1995 (‘the Act’).  It arises from the Registrar of Trade Marks’ intention to revoke registration and acceptance of trade mark number 1946624 in the name of Optimed Technologies Pty Ltd (‘the Registrant), relevant details of which are below.

Trade mark:

OPTIMED (‘the Trade Mark’)

Trade mark application:

1946624

Filing Date:

7 August 2018 (‘Priority Date’)

Specification:

Class 35: Importation and export services, including import and export of medical devices and consumables, pharmaceutical substances, medical and scientific apparatus and equipment, cosmetic substances and toiletries; distribution services, including distribution of medical devices and consumables, pharmaceutical substances, medical and scientific apparatus and equipment, cosmetic substances and toiletries; retailing and wholesaling services, including retailing and wholesaling of medical devices and consumables, pharmaceutical substances, medical and scientific apparatus and equipment, cosmetic substances and toiletries; promotional services, including promotion of medical devices and consumables; provision of business information in relation to medical devices and consumables provided to private medical practice, hospitals and day surgeries

(‘Registrant’s Services’)

2. The application for the Trade Mark was examined as required by s 31 of the Act and no statutory grounds for rejection were identified by the examiner. The Trade Mark was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 19 February 2019. 

3.     No opposition was filed by any third parties and the Trade Mark was entered on the Register on 1 May 2019.

4.     However, on 25 September 2019, a delegate of the Registrar issued a Notification of Proposal to Revoke Acceptance (‘the Notification’) which stated:

Your client’s trade mark – OPTIMED - was lodged on 7 August 2018 and accepted for registration on 19 February 2019. It was subsequently registered on 1 May 2019 for services in class 35, including those relating to medical and pharmaceutical related products.

I have attached a copy of trade marks nos.1056792 and 1704437 for OPTIMED and OPTIMED & Device respectively. As you will see, these registrations cover a wide range of medical instruments in class 10.

The respective marks are identical and/or substantially similar, and there is scope for the parties' goods and services to be similar given the specialist field to which they relate. As such, there is a real and tangible risk that the relevant consumer would be confused as the trade origin of the goods and services when presented with trade mark, OPTIMED.

5.     The Notification outlined several response options. These included commenting on the proposal; and/or informing the Registrar of any use which has been made of the Trade Mark in relation to the services claimed in the application; and/or inform the Registrar of any circumstances supporting the registration of the trade mark making it appropriate not to revoke registration; or applying to be heard on the matter or to submit a request for a decision on the written record.

6.     The Registrant, through its attorneys, filed a written response on 23 October 2019 setting out their arguments as to why it considered that revocation of registration and acceptance was not appropriate in this case.

7.     On 9 December 2019, the delegate of the Registrar of Trade Marks issued a written notice of Revocation of Trade Mark No 1946624 (‘the Revocation Notice’) to the Registrant’s attorneys. The Revocation Notice stated that after further consideration the Deputy Registrar was withdrawing objections based on trade mark number 1704437, but maintaining an intention to revoke registration of the Trade Mark based on trade mark number 1056792. The following further rationale was provided:

This leaves TM 1056792 as the remaining trade mark on which the revocation action is based. When the normal tests for assessing substantial identity are applied to OPTIMED and OptiMed, these trade marks are clearly at least substantially identical and the main issue for consideration will be a comparison of the goods and services.

……….

As you note for the purposes of section 44, the essential comparison can be distilled down to a comparison of specific services in class 35 and specific goods in class 10. For convenience sake I have highlighted the major goods and services from both trade marks which give rise to concerns about how closely related the services of the owner’s trade mark are to the goods of the earlier trade mark.

TM 1056792 (Earlier trade mark)

Class 10

·     Medical instruments and apparatus.

·     Disposable medical products.

·     Application instruments for medical purposes.

·     Surgical implants for medical purposes.

(excluding a number of products for infants)

I note that this effectively includes a large range of medical instruments, apparatus, devices and products.

TM 1946624 (Owners trade mark)

Class 35

·     Importation and export services, including import and export of medical devices.

·     Promotional services, including promotion of medical devices and consumables.

·     Provision of business information in relation to medical devices and consumables provided to private medical practice, hospitals and day surgeries

·     Retailing and wholesaling of medical devices and consumables, pharmaceutical substances, medical and scientific apparatus and equipment, cosmetic substances and toiletries

I note that this effectively includes (i) importation and export services, (ii) retail and wholesaling services and (iii) business information services in relation to a large range of medical devices and products including the very same items that are covered by TM 1056792.

………

In response to your points I note:

·     These marks are at least substantially identical. Effectively from a customer point of view there is no difference between them.

·     The lack of classes 10 and 35 being “associated” in IP Australia’s own cross class search list is not central to the issue of whether the services are closely related to the goods of the earlier registration.

·     The presence or otherwise of “cross class search association” is not referred to in relevant legislation or practice as a being of determinative value.

·     Some - but not all the customers for the goods nominated – are sophisticated and potentially extremely careful in their purchases. However, given how substantially identical the trade marks are and how commonplace it is for the market to expect the nominated goods and services to come from the same source, I don’t think this observation outweighs the strong likelihood of confusion.

·     The fact that it was open to the examiner to not take a citation objection, does not mean the examiner was correct in doing so – especially when law and practice demanded a different approach

………..

In view of the fact that:

(i) the trade marks are at least substantially identical;

(ii) the services of TM 1946624 are closely related to the goods of TM 1056792;

(iii) no persuasive, ongoing use or other circumstances have been presented for consideration;

I am maintaining an intention to revoke registration of TM 1946624.

8. On 6 January 2020, the Registrant informed the Registrar that it wished to exercise its right to be heard in accordance with s 84A(5) of the Act. In the days prior to the scheduled hearing, the Registrant filed the following material for consideration:

·     Declaration of Mohammad Michael Hleis, Managing Director and a shareholder of Optimed Technologies, dated 17 April 2020 with Annexures 1 - 31 (‘Hleis Declaration’); and

·     Registrant’s submissions.

9.     A hearing by video conference then took place in Canberra on 18 April 2020 before me, a delegate of the Registrar.  Daniel McKinley of Gestalt Law appeared by video link on the Registrant’s behalf.

Evidence

10.     The Hleis Declaration states that Mr Hleis is the Managing Director and a shareholder of the Registrant. It commences by giving a background of Mr Hleis’s role in the Registrant and his considerable experience in the healthcare and medical devices industry. The Declaration, at Annexure 1 exhibits Mr Hleis’s curriculum vitae.

11.     Paragraphs [7] to [23] set out the history of the Registration within IP Australia’s file and leading up to the Notification.

12.     Paragraphs [24] to [43] detail the Registrant and its business in Australia, including confidential details of its income and expenditure. The reasoning and good faith in adopting the Trade Mark are explained along with evidence of its use since 2014 in Australia in relation to the Registrant’s Services.

13.     From [44] to [115] the Hleis Declaration explains the medical devices industry in some detail, particularly regarding the highly regulated nature of the market for medical and surgical products in Australia. Specifically, it explains that the Therapeutic Goods Act (1989) (‘TGA’), which is administered by the Therapeutic Goods Administration, is designed to ensure that therapeutic goods supplied in Australia meet acceptable standards of quality and safety. By extension, services related to the supply of these products are also highly regulated.

14.     Pursuant to the TGA the Therapeutic Goods Administration maintains the Australian Register of Therapeutic Goods (‘ARTG’). Such goods include medical and surgical devices and must be entered in or included in the ARTG before they can lawfully be supplied in Australia.

15.     The Hleis Declaration states, from [137] to [139], that the Registrant is listed as sponsor for some 74 listings in the ARTG.

Statutory Framework - Section 84A

16. The relevant provisions of the Act giving the Registrar the power to revoke registration of a trade mark are set out in s 84A. These provide that she be satisfied that the trade mark should not have been registered[1] and that it is reasonable to revoke the registration[2]. In each case subsections (2) & (3) respectively set out some of the circumstances of which the Registrar must take account in reaching her decision.

[1] s 84A(1)(a)

[2] s 84A(1)(b)

17.     Subsections 84A (4) & (5) stipulate that the Registrar may only revoke registration of a trade mark if she has notified both the owner and any person listed on the Register as claiming an interest in the trade mark within twelve months of the trade mark being entered on the Register, and given them an opportunity to be heard on the matter. For completeness, I note that this was not in contention.

18. As discussed in [7] above, in his notice proposing revocation of registration Deputy Registrar Braybrooks cited the earlier trade mark number 1056792 under s 44 of the Act as the reason why the Trade Mark should not have been accepted or registered.

19. Section 44 of the Act relevantly states:

…

(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 services 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.

Note 1:       For deceptively similar see section 10.

Note 2:       For similar services see subsection 14(2).

Note 3:       For priority date see section 12.

Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(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.

1. The Notification specified the following trade mark registration:

Trade mark number:	1056792
Trade mark:	OptiMed (‘earlier trade mark’)
Priority Date:	15 March 2004
Specification:	Class 10: Medical instruments and apparatus, in particularly syringes for medical purposes, needles for medical purposes, guide wires for medical purposes, probes for medical purposes, tubes for medical purposes, pressure connectors for medical purposes, neck valves for medical purposes, pressure valves for medical purposes, screw-cap pressure valves for medical purposes, drainage tubes for medical purposes, secretion bags for medical purposes; disposable medical products, included in this class; catheters and catheter systems, included in this class; balloon catheters; surgical implants (made of artificial materials), in particular vessel implants (stents) for medical purposes; dilators for medical purposes, application instruments for medical purposes, introduction locks for medical purposes, apparatus for breaking up kidney stones, sterile cloths (covering cloths for medical purposes), suture materials, instruments for the insertion of implants for medical purposes; all above goods excluding infants medical beds, infant incubators, infant warmers and combined infant incubators and warmers as well as spare parts for such goods (‘Cited Goods’)

1. I will now consider whether the Trade Mark is substantially identical or deceptively to the earlier trade mark.  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) 109 CLR 407, [12].

2. Applying this test, it is clear that OPTIMED is substantially identical with OptiMed.

3. Turning to whether the Registrant’s Services are closely related to the Cited Goods, I note that in considering the concept of a ‘closely related’ relationship between goods and services, in Registrar of Trade Marks v Woolworths Ltd[4], French J stated:

   [4] [1999] FCA 1020, [38].

   The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets.

4. The Registrant’s Services are essentially the import, export, supply, and distribution of medical, surgical, and pharmaceutical products. The Cited Goods are essentially medical and surgical instruments and apparatus.  Notwithstanding submissions that that the customers for the respective services and goods are sophisticated and potentially extremely careful in their purchases, given that the trade marks are substantially identical I consider it is still likely for the market to expect the nominated goods and services to come from the same source.

5. Given the earlier trade mark’s priority is clearly earlier than the Registrant’s I am satisfied that s 44(2) has been established.

6. It is then necessary to consider whether the Registrar should accept the application on the basis of ss 44(3) or 44(4) of the Act. The was no evidence of prior use, so I find s 44(4) does not apply here.

7. Section 44(3) of the Act gives an applicant the option of overcoming a finding under s 44(2) through the provision of evidence showing that that there has been honest concurrent use of the two trade marks, or that because of other circumstances it is proper to do so.

8. The main factors to be considered in assessing an applicant's case are[5]:

   ·     the honesty of the concurrent use;

   ·     extent of the use in duration, area and volume;

   ·     the degree of confusion likely to ensue;

   ·     whether any instances of confusion have in fact been proved; and

   ·     the relative inconvenience which would be caused to the parties by the allowance or denial of registration.

   [5] McCormick & Co v McCormick [2000] FCA 1335 at [30].

9. The evidence in the Hleis Declaration shows that the adoption of the name of Optimed Technologies was honest. Optimed Technologies was incorporated on 18 June 2014 and the name of the company has not changed since that time. The name was said to have been coined as a combination of “Optimum” and “Medical” to elicit a positive connotation in relation to the services of the business, namely the provision of optimum or superior medical products.[6]

   [6] Hleis Declaration at [24] to [28].

   30.     According to the Hleis Declaration, the Trade Mark was first used by the Registrant in Australia in 2014 in relation to medical and surgical product distribution services.  Thereafter, according to the Hleis Declaration, the Trade Mark has been continuously used in relation to medical and surgical product distribution services throughout Australia.  This apparently includes obtaining ARTG listings for numerous medical and surgical products that permits the Registrant to offer to supply product throughout Australia and also making submissions for tenders in all Australian states and territories.[7]

   [7] Hleis Declaration at [30], [31], [63], [139], [144] and [145].

   31.     Furthermore, according to the Hleis Declaration, the Registrant invests in attending and exhibiting at trade shows and conferences throughout Australia and continues to invest heavily in these activities.[8] Consequently, there has been about 4 years of use of the Trade Mark before the Priority Date.

   [8] Hleis Declaration at [42].

   32.     Since incorporation on 18 June 2014, the Registrant has held distribution rights in relation to Australia from various manufacturers. Copies of brochures for various products that the Registrant distributes were provided in the evidence to which adhesive labels are applied to the brochure with the Registrant’s address and contact details and clearly identifying the Registrant as the distributor.[9]

   [9] Hleis Declaration at [37].

   33.     The Hleis Declaration states that the Registrant is not aware of any instances of confusion with the earlier trade mark.[10]

   [10] Hleis Declaration at [41] and [141].

1. Taking into account the factors to be considered cited above and the Hleis Declaration I consider the evidence is sufficient to justify a finding of honest concurrent use. Under these circumstances I am not satisfied, that the Trade Mark should not have been registered.

2. Subsection 84A(3) sets out a range of non-exhaustive circumstances to be taken into account in determining whether it would be reasonable to revoke:

   (3)  The circumstances to be taken into account under paragraph (1)(b) include the following:

   (a)  any use that has been made of the trade mark;

   (b)  any past, current or proposed legal proceedings relating to the trade mark as a registered trade mark or to the registration of the trade mark;

   (c)  other action taken in relation to the trade mark as a registered trade mark;

   (d)  any special circumstances making it appropriate:

   (i)  to revoke the registration; or

   (ii)  not to revoke the registration.

3. The Registrar’s discretion was considered by Deputy Registrar Arblaster in Method Constructions Pty Ltd [2010] ATMO 43 (‘Bobart’), at [10]:

   The construct of the section itself suggests that revocation is not a decision to be taken lightly. The decision to be made is not simply a question of whether a mistake was made in examining the trade mark. Rather, the Registrar must take account of all the circumstance surrounding the registration, whether or not they were known to her at the time. Furthermore, even if she concludes that the trade mark should not have been registered, she must also satisfy herself that “in all the circumstances” it is reasonable to revoke the registration.

4. In exercising the discretion, I have considered:

   ·     The evidence of the Registrant’s use of the Trade Mark since 2014;

   ·     The evidence of the Registrant’s honest adoption of its name and desire to register its name as a trade mark;

   ·     Prejudice to the business that would result from a requirement to change its name including potentially jeopardising various contractual commitments and needing to amend all of its ARTG and National Product catalogue listings and notify all of its customers and its suppliers with whom it has distribution agreements;

   ·     The strict regulatory regime imposed by the TGA that would, in practice, reduce the likelihood of confusion in the relevant industry;

   ·     The low likelihood of confusion as evidenced by the lack of any instances of confusion between the owner of the earlier trade mark and the Registrant.

5. These considerations, along with my finding that it was reasonable to accept the Trade Mark for registration, satisfy me that in all the circumstances it would not be reasonable to revoke the Trade mark.

   Decision

6. Under the circumstances, outlined above, I am not satisfied that the Trade Mark should not have been registered, nor could I be satisfied that it is reasonable to revoke registration. As each is a necessary condition of revocation, s 84A(1) of the Act does not permit me to do it and I refuse to do so.

   Jock McDonagh
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   27 July 2020