Sandonda (Australia) Pty Ltd v Zeneca Limited

[1998] ATMO 9

TRADE MARKS ACT 1955

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

Re:      Opposition by ZENECA LIMITED to the registration of trade mark          application number 638219 in the name of SANONDA (AUSTRALIA) PTY.    LTD.

As provided for in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.  

This matter concerns application number 639219 which was lodged on 19 August 1994 in the name of Sanonda (Australia) Pty Ltd, (the applicant).  It sought registration of the mark
  

in respect of “insecticide” in class 5.

Acceptance of the mark in Part A of the Register was advertised in the Australian Journal of Trade Marks of 29 June 1995.  The advertisement bears an endorsement:

“Registration gives no right to the exclusive use of the word OZ”.

On 28 December 1995, Zeneca Limited, (the opponent), lodged a notice of opposition to registration of the applicant’s mark, under the provisions of section 49 of the Act.  A number of grounds are recited in the notice of opposition.  At the hearing, attention was primarily directed to the grounds based on the allegation that the applicant’s mark was not qualified for registration as a trade mark in Part A or Part B of the Register in the name of the applicant in relation to insecticide, and that it was equivalent to the word PYRIFOS which is a known chemical group and an abbreviation for chlorpyrifos, a common insecticide.  

Evidence
The only evidence in these proceedings was the evidence in support, lodged on 29 April 1997, in the form of a statutory declaration by James Roderick Hibberd, dated 24 April 1997, with exhibits JRH1 - JRH9. 

Mr Hibberd has held the position of the business manager - Insecticides of Crop Care Australasia Pty Ltd since 1993.  He has been employed in the agricultural chemical industry continuously for seventeen years and holds a Bachelor of Agricultural Science (Land Resources) degree.  He says he is aware that the applicant markets an insecticide, PIRIFOZ 500 EC, which has as its active ingredient, chlorpyrifos, a common name for an insecticide.  Chlorpyrifos is one of the world’s major insecticides and is used extensively in Australia and elsewhere.  As far as he is aware, since the patent rights to this product expired in or about 1986, chlorpyrifos containing insecticide has been marketed by a large number of insecticide producers.  He has annexed a copy of a list of products on the Australian market containing chlorpyrifos as an active ingredient.

He explains how a systematic name is formulated, concluding that it is the final part of the name which gives the most immediate indication of the structure and nature of the molecule.

While the formal nomenclature system is essential for providing an understandable chemical language, in very many cases, and in particular in the majority of complex organic compounds, the systematic names are unwieldy and impractical for day to day use, Mr Hibberd says.  Therefore, many have been given or are known by common names, such as in this case, chlorpyrifos.  Common names are often derivatives of a systematic name and often use group names such as “chlor” as in chlorpyrifos.  As in the systematic name, the use of “chlor” in such a common name indicates the presence of chlorine.  Although there is no chemical group “pyrifos”, it would be possible to see how it is derived from the systematic name, i.e. taking the “pyri” from pyridine and the “fos” (or “phos”) from phosphorothioate.  He says, however, that due largely to the naming conventions followed in chemistry, the “chlor” in chlorpyrifos is a much less important part of the name, the significant part being “pyrifos”. 

Mr Hibberd says that chlorine containing compounds make up a major proportion of the current insecticides and many have common names which include the “chlor-” prefix.  To illustrate this, copies from a pesticide manual are annexed to his declaration. As there are no other “pyrifos” pesticides other than the analog, chlorpyrifos-methyl, in Mr Hibberd’s opinion, the important part of the name “chlorpyrifos” is “pyrifos”.  He states further that there are numerous examples in the agricultural chemical industry of compounds which have common names including prefix “chlor-” and related compounds of the same name, but without the “chlor-” prefix and provides examples in the exhibits. 

The hearing on the matter was held in Canberra.  Mr Malcolm Bell of Phillips Ormonde & Fitzpatrick, patent and trade mark attorneys of Melbourne, appeared for the opponent.  No representation or written submissions was made on behalf of the applicant. 

Submission
Concerning the question of service of the evidence in support on the applicant, Mr Bell said that, as it appeared the applicant had not advised the Trade Marks Office of having been served with that evidence, a statutory declaration had been prepared by the opponent’s attorneys, together with a consignment note, to the effect that the evidence had been delivered to the applicant by courier on 29 April 1997.  In compliance with my request, this declaration by Malcolm Neil Bell, dated 1 December 1997, was forwarded to the applicant as evidenced by copies of the declaration and the accompanying letter provided since the hearing.

Turning to the principal issues, Mr Bell focussed his submissions on the provisions of section 24 of the Act, saying that the applicant’s mark did not qualify for registration in terms of paragraphs (c) and (d), particularly paragraph (d), which he considered to be most relevant because the word “pyrifos” was directly descriptive of chlorpyrifos - a common and well known insecticide chemical.  Under the Trade Marks Act 1955, the onus for registration of a mark rested on the applicant - see Cooper Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 - and if registration was in dubio, then it ought to be refused.  There was also the question of whether persons in the relevant market would believe the goods contained chlorpyrifos.  In light of the test concerning directly descriptive words, as per Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190, and the consideration of the target audience, as postulated in Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175, Mr Bell said that the applicant’s mark would be seen to be descriptive by those dealing with insecticides. In support, Mr Bell referred to Schweppes Ltd v E. Rowlands Pty Ltd (1913) 16 CLR 162, where it was decided that the mark SARILLA was not an invented word, and that it directly described sarsaparilla, a well-known beverage.

Mr Bell said that it was also useful to look at some other considerations, i.e. comparison between the words PIRIFOZ and chlorpyrifos.  In this regard, Schweppes v Rowlands was relevant.  He then mentioned some factors which, he said, should be taken into account in assessing the degree of similarity between trade marks, such as: 

• the idea of the marks - Cooper v Sigmund Pumps, supra, asserting that, as the product contains chlorpyrifos, that was the idea of the mark;

• the essential feature - Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147; in the present mark it was pyrifos, whereas “chlor” was a minor element;

• the marks are to be compared both visually and aurally - Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65;

• account to be taken of marks where their appearance may lead one to assume some relationship between the pre-existing mark or a pre-existing word - John Fitton & Co Ltd’s Appn (1949) 66 RPC 110.

Mr Bell submitted that these considerations applied to words in common usage as descriptive terms, not simply to words in relation to section 33 of the Act.

It was an obvious conclusion from Mr Hibberd’s statements, Mr Bell said, that by use of the mark PIRIFOZ the applicant intended to connote that the product contained chlorpyrifos, the very product upon which the mark was being used.  He said that there was adequate precedent to the effect that related compounds or marks that would be seen to be related are not registrable.  The question of direct descriptiveness was not limited to words which necessarily have an actual meaning when one looked at the word on its own, as in Schweppes v Rowlands, supra, where the word SARILLA was shortened and manipulated.  Although such a word did not exist, it was found to be directly descriptive of sarsaparilla. 

The opponent sought costs in the matter. 

Decision
The opponent contends that the applicant’s mark fails to qualify for registration in Part A of the Register in terms of paragraphs (c) and (d) of sub-section 24(1) of the Act, which read:

1. A trade mark is registrable in Part A of the Register if it contains or consists of -
         ...
         (c)       an invented word;

(d)      a word not having direct reference to the character or quality of the   goods or services in respect of which registration is sought ....      

In Grant and Hackh’s Chemical Dictionary, fifth edition, at p 305, in “Table 45. Insecticides”, “chlorpyriphos” is identified as a “common name”, its chemical name being O,O, -Diethyl O-(3,5,6-trichloro-2-pyridyl) phosphorothioate. As this chemical name corresponds with the name listed as “chlorpyrifos” for an insecticide in other reliable sources on chemicals, such as: The Merck Index, twelfth edition; Nanogen Index, A Dictionary of Pesticides, December 1979 update, and Condensed Chemical Dictionary, twelfth edition, by Richard J Lewis, Sr, I understand it to be an alternative spelling of “chlorpyriphos”.  Henceforth I will refer to it as “chlorpyrifos”.

In Mark Foy’s v Davies Coop, supra, which outlines the criteria for determining whether a mark has a direct reference to the character or quality of the applicant’s goods, Dixon C J states, at 195:

The test must lie in the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess.

The expression “ordinary persons” has been described by his Honour in an earlier case, Howard v Webb Industries, supra, as that “section of the community following a particular pursuit or possessing special vocational or technical interest, or ... the public at large ...”.

Mr Hibberd’s evidence establishes that the common name chlorpyrifos consists of “chlor-”, which is a well-recognized and a common prefix signifying chlorine content in a compound, and the suffix “pyrifos”.  “Pyrifos” simpliciter, however, according to Mr Hibberd, does not represent any “chemical group”.  He has also demonstrated in an exhibit to his declaration that many of the common names for insecticides include “chlor-” as the prefix but there are also names without this prefix, even though the insecticides include chlorine.  In copy of a list by National Registration Authority for Agricultural  and Veterinary Chemicals, extracted from the Commonwealth of Australia Gazette No. NRA 12, of 3 December 1996, which is annexed to Mr Hibberd’s declaration, are shown eighty-one products containing chlorpyrifos marketed by a considerable number of manufacturers.

In the absence of any information as to the precise nature of the applicant’s insecticide and its uses, I have to assume that the insecticide is suitable for wide application and may be available to the professionals as well as members of the public for veterinary, agricultural, horticultural, industrial or domestic use.  Hence, the purchasers dealing with such goods are likely to cover a relatively broad spectrum of the community, i.e. ranging from veterinarians, chemists, pest controllers, farmers, staff members in garden centres to amateur gardeners and any other persons seeking insecticides for the purpose or eradicating mosquitos or household insects.  The vast majority of these persons would possess specialist knowledge or qualifications in the field and therefore are likely to be familiar with the use of chlorpyrifos as an insecticide chemical.  Given the extensive use of chlorpyrifos in insecticides, the hazards associated with the use of insecticides and the fact that such products are used with caution, I believe that those persons who lack particular knowledge of agricultural chemicals, including members of the purchasing public seeking the product for household and home garden use, would have some awareness of the content of the insecticide they were handling.

Having regard to the foregoing, particularly the opponent’s evidence, in my opinion, the close resemblance of the applicant’s mark PIRIFOZ to the word chlorpyrifos and its obvious abbreviation, according to the undisputed declaration by Mr Hibberd, who is an expert in the area, would lead the members of the relevant public to expect the applicant’s goods to be chlorpyrifos insecticide or insecticide containing chlorpyrifos, as was submitted by Mr Bell.  For these reasons, I consider the trade mark PIRIFOZ to be descriptive of the character or quality of the applicant’s goods and not suitable for registration under the provisions of paragraph 24(1)(d).  Furthermore, the word would be misdescriptive, should those goods not contain chlorpyrifos.   

Considering what constitutes an invented word, in Howard v Webb Industries, supra, Dixon J stated, at 181:

The materials from which such a word has been fashioned cannot be neglected and if it is a compounded of elements of which the source is manifest and the intended meaning is transparent, it becomes a question whether there is anything more than a colourable attempt at reproducing some of the sounds and all the sense of an expression belonging to common speech.  Mis-spellings, variations and distortions or ordinary words do not amount to invention. ... Novelty is, of course, looked for and that means more than giving existing words or a combination of words as disguise, whether phonetic or graphic, which the mind of the hearer or reader at once penetrates.

Visually the word “chlorpyrifos” differs from the applicant’s trade mark PIRIFOZ by the readily recognizable prefix “chlor-”, the letter “y” following “p” in both words rather than “i” and the terminating letter “s” as opposed to the letter “z”.  In addition, the mark PIRIFOZ is rendered in two slightly different type scripts, i.e. “PIRIF” in ordinary block upper case letters, whereas “OZ” appears in sloping block letters.  In pronouncing “chlorpyrifos” and PIRIFOZ by the majority of persons concerned with the product, the only clearly discernible difference between the words would be present in the initial part “chlor”.

In Schweppes v Rowlands, supra, where evidence had been produced to the effect that the words “sar” and “sars” were commonly used abbreviations for the product “sarsaparilla”, Griffith C J concluded that “sarsaparilla” was a word which naturally lent itself to abbreviations, such as “sarsprilla” or “s’prilla”, so that the mark sought to be registered became either a colourable variation of “sarsprilla” or “s’prilla”, or the word “sar” with a familiar termination, meaning that it was “sar” in some form or other.  In light of this finding, the criteria on invented words enunciated by Dixon J and my comments in relation to the descriptive nature of the applicant’s mark, I think the origin and the meaning of the word PRIFOZ would be obvious to the persons concerned as clearly relating to chlorpyrifos even without the presence of the prefix “chlor-” and irrespective of the slight variations in the spelling of the word noted earlier.  In this regard, I also refer to “Slophyllin” Trade Mark [1984] RPC 39, where it was found that the mark SLOPHYLLIN directly related to slow-release preparation of theophylline, the goods for which the mark was propounded, and therefore not an invented word. Accordingly, I do not see the applicant’s mark as belonging to the category of invented words within the meaning of paragraph 24(1)(c) of the Act.

Conclusions
I find that the opponent has succeeded in its opposition on the grounds based on section 24 pursued at the hearing.  I am obliged therefore to refuse the application.

Concerning the matter of costs, I see no reason why costs should not follow the result.  I therefore award costs to the opponent.

Vija Zars
Hearing Officer
24 March 1998