Sanofi-Aventis Healthcare Pty Ltd v Russian Federation

[2014] ATMO 32

TRADE MARKS ACT 1995

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

Re:Opposition by Sanofi-Aventis Healthcare Pty Ltd to extension of protection of International Registration Designating Australia 1493846 - MicroGEN Logo- (International Registration 1115360) in Classes 5, 29 and 30 filed in the name of Federal State Unitary Company "Microgen Scientific Industrial Company for Immunobiological Medicines" of the Ministry of Health and Social Department of the Russian Federation

Delegate:

Debrett Lyons

Representation:

Opponent: Andrew Lockhart, of Shelston IP, Patent & Trade Mark Attorneys

Holder: No appearance or submissions.

Decision:

2014 ATMO 32

Regulation 17A.34 opposition: s 44 considered – trade mark deceptively similar to another trade mark registered for similar goods – extension of protection to Australia refused. Costs awarded against the holder.

Background

1. Trade mark application number 1493846 is the Australian designation of international registration number 1115360 made under the Madrid Protocol (“the IRDA”).   The holder of the international registration is the Federal State Unitary Company "Microgen Scientific Industrial Company for Immunobiological Medicines" of the Ministry of Health and Social Department of the Russian Federation (“the holder”).  Sanofi-Aventis Healthcare Pty Ltd (“the opponent”) has opposed extension of protection to Australia.

2. Relevant details of the IRDA are as follows:

   Priority Date:  6 December 2011

   GoodsClass 5: Nutritional supplements for medical purposes, food for babies, lactic bacteria concentrates for medical purposes

   Class 29: Milk products

   Class 30: Yeast for fermented milk products

   Trade Mark:    

   Endorsement:                  The applicant has advised that translation of the RUSSIAN word appearing in the trade mark is MICROGEN.

3. Following examination, the IRDA was advertised as accepted for possible extension of protection to Australia in the Australian Official Journal of Trade Marks on 28 June 2012.

4. On 27 September 2012 the opponent filed a notice of opposition to extension of protection.  In support of the opposition the opponent filed a declaration by Luke Fitzgerald made 6 June 2013 with exhibits LF-1 to LF-22.

5. The holder did not provide the Registrar with an address in Australia for service of evidence despite being invited to do so.  Consequently the opponent was not obliged to serve a copy of its evidence on the holder.

6. The holder was advised that it could file and serve evidence in answer to the opposition.  It did not file evidence and has taken no part in the proceedings generally.

7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by the Trade Marks Regulations 1995 (‘the Regulations’) as follows:

   Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established. (Reg. 17A.34N)

8. The opponent was given an option to either request a hearing or to file and rely on written submissions.  It elected to be heard and to assist me in making my decision I took oral and written argument from Andrew Lockhart, a partner in the firm of Shelston IP, Patent & Trade Mark Attorneys, at a hearing which was held in Sydney on 12 February, 2014.  There was no appearance or submissions by or on behalf of the holder.

   Grounds of Opposition & Onus

9. By way of regulation 17A.28, the opponent has chosen to press only those grounds listed in the notice of opposition which are underpinned by sections 42(b), 44 and 60 of the Trade Marks Act 1995 (“the Act”).

10. The relevant date for determining the parties’ rights is the priority  date, 6 December 2011, and the onus is on the opponent to satisfy me that a ground of opposition has been established on the balance of probabilities.[1]

    [1] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27]; and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

11. For reasons which follow, I find that the section 44 ground has been established.

    Discussion

    Section 44 – trade mark substantially identical with or deceptively similar to trade mark of earlier application or registration

12. Subsection 44(1) of the Act relevantly provides:

    (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.

13. In order to establish subsection 44(1) the opponent must show that there is an earlier trade mark application or registration in the name of another person for either similar goods or closely related services, where that trade mark is substantially identical with, or deceptively similar to, the opposed trade mark.

14. The opponent relies on its registrations listed in the notice of opposition and now below (“the registrations”):

496859	MICRO-GENICS	5	Vitamins, vitamin preparations, vitamin supplements including supplemented invalids' and infants' foods and all other goods in this class
1204827	MICRO GENICS & Device	5	Vitamins, vitamin preparations; pharmaceutical preparations; herbs, products containing herbs and products containing herbal extracts, all for medicinal purposes; herbal teas for medicinal purposes; medicinal teas; meals for pharmaceutical purposes; food for babies; liniments, creams and lotions for medicinal purposes; medicinal preparations; plant products and plant extracts for medicinal purposes; pharmacological preparations for skin care; nutritional additives for medicinal purposes including tablets and capsules containing omega fatty acid products and/or fish oils; mineral food supplements; dietetic substances adapted for medical use; medicated confectionery and candy for medicinal purposes; chemical preparations for medicinal purposes; beverages and food for medicinal purposes; substances for medicinal purposes
1204832	THANKS MICRO GENICS & Device	5	Vitamins, vitamin preparations; pharmaceutical preparations; herbs, products containing herbs and products containing herbal extracts, all for medicinal purposes; herbal teas for medicinal purposes; medicinal teas; meals for pharmaceutical purposes; food for babies; liniments, creams and lotions for medicinal purposes; medicinal preparations; plant products and plant extracts for medicinal purposes; pharmacological preparations for skin care; nutritional additives for medicinal purposes including tablets and capsules containing omega fatty acid products and/or fish oils; mineral food supplements; dietetic substances adapted for medical use; medicated confectionery and candy for medicinal purposes; chemical preparations for medicinal purposes; beverages and food for medicinal purposes; substances for medicinal purposes
1273908	MICROGENICS	5 30 32	Vitamins, vitamins preparations; pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; natural health food and herbal remedy products in this class; beverages and food for medicinal purposes; food additives and supplements for medicinal purposes; mineral foods supplements for medicinal purposes; nutritional supplements, herbal preparations all for medicinal purposes; plant products and plants extracts for medicinal purposes; preparations for making dietetic or medicated beverages; medicinal preparations; chemical preparations for medicinal purposes; substances for medicinal purposes; food for babies; medicated confectionery and candy for medicinal purposes; pharmacological preparations for skin care Beverages in this class; powders for preparing beverages; beverages fortified with vitamins, minerals and herbs; food preparations in this class containing nutritional and dietary supplements Beverages in this class, preparations for making beverages, mixes for preparing beverages fortified with vitamins, minerals and herbs
1313601	MICRO GENICS THE NATURAL CHOICE & Device	5	Vitamins, vitamin preparations; pharmaceutical preparations; herbs, products containing herbs and products containing herbal extracts, all for medicinal purposes; herbal and medicinal teas; meals for pharmaceutical purposes; food for babies; liniments, creams and lotions for medicinal purposes; medicinal preparations; plant products and plant extracts for medicinal purposes; pharmacological preparations for skin care; nutritional additives for medicinal purposes including tablets and capsules containing omega fatty acid products and/or fish oils; mineral food supplements; dietetic substances adapted for medical use; medicated confectionery and candy for medicinal purposes; chemical preparations for medicinal purposes; beverages and food for medicinal purposes; substances for medicinal purposes

1. The registrations all have earlier priority dates than that of the IRDA.

2. Section 14(1) of the Act provides:

   14  Definition of similar goods and similar services

   (1)  For the purposes of this Act, goods are similarto 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.

3. Accordingly, the next task is to determine whether the respective goods are similar.  In Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 French J said at [39] (about “closely related” goods and services):

   The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second:

   "The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive."

4. To reiterate, the goods of the IRDA are:

   Class: 5 Nutritional supplements for medical purposes, food for babies, lactic bacteria concentrates for medical purposes

   Class: 29              Milk products

   Class: 30              Yeast for fermented milk products

5. The opponent submits that:

   The Opposed Trade Mark claims “Nutritional supplements for medical purposes, food for babies”, in class 5.  These are goods that are the same as some of the registered class 5 goods in each of the Opponent's Registered Trade Marks.

   The Opponent submits that the remaining goods in classes 5, 29 and 32 of the Opposed Trade Mark are "similar" to goods for which the Opponent's Registered Trade Marks are registered.

   The Opposed Trade Mark also claims:

   ·lactic bacteria concentrates for medical purposes in class 5.

   oRegistration 1204827 is registered for "all other goods in class 5" [sic]:  This encompasses lactic bacteria concentrates for medical purposes in class 5. Other items within the Opponent's Registered Trade Marks, such as pharmaceutical preparations, food for pharmaceutical purposes, nutritional additives for medicinal purposes, substances for medicinal purposes" are either the same or "similar" [sic] goods.

   ·Milk products in class 29.

   oAll of the Opponent's Registered Trade Marks claim nutritional supplements, vitamins, beverages and food for medicinal purposes and dietetic substances adapted for medical use in class 5, and so would include Milk calcium concentrate (nutritional supplement), dietetic milk and Milk based beverages with added vitamin/nutritional supplements in class 5.  These are "similar" to milk products in class 29 (which would include at least Nice items such as the class 29 item Food preparations with added vitamins for use by athletes).

   oAll of the Opponent's Registered Trade Marks claim food for babies or infants’ food.  Milk foods for infants and dried milk preparations being food for babies fall in class 5 and are “similar” to milk products in class 29.

   oMilk ferments for pharmaceutical purposes are covered by items such as pharmaceutical preparations, food for pharmaceutical purposes in the Opponent's Registered Trade Marks and these are similar to "milk products" in class 29 (which includes items such as Milk ferments for culinary purposes)

   oRegistrations 1204832 and 1273908 [sic] claim beverages (and preparations for making beverages) in classes 30 and 32, and so include such things as chocolate beverages (class 30) and coconut milk beverages (class 32).   These are similar to milk products in class 29

   oRegistration 1204832 covers mineral food supplements in class 5 and Registration 1273908 mixes for preparing beverages fortified with vitamins, minerals and herbs (so include calcium food supplements/beverage preparations)

   ·Yeast for fermented milk products in class 30.

   oAll of the Opponent's Registered Trade Marks claim nutritional supplements and vitamins in class 5, and so include the class 5 Nice items Yeast dietary supplements, active dried yeast for pharmaceutical purposes and yeast for pharmaceutical purposes.  These are "similar" to Yeast for fermented milk products in class 30.

6. In re Jellinek's Application[2] Romer J set out three factors to be considered when deciding whether or not goods are “of the same description”, namely the nature of the goods; their respective uses; and the trade channels through which they are bought and sold.  Moreover, I am required to consider a notional use of the respective trade marks to the full extent of the respective specifications of goods: Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101. Finally, in making the assessment, the phrase “ ‘goods of the same description’ ought not to be given too restrictive a construction - not to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other”: per Lord Evershed MR of the UK Court of Appeal in J Lyons & Coy Ld's Application [1959] RPC 120 (at 128).

   [2] (1946) 63 RPC 59.

7. Applying those tests I accept the opponent’s submissions (which I note contain some small factual errors but none having bearing on the outcome) and find that the goods listed in the IRDA are similar to the goods of the opponent’s registrations.

8. I turn to decide whether or not the respective trade marks are deceptively similar since it is not argued by the opponent that the trade marks are substantially identical.

9. Section 10 of the Act defines a ‘deceptively similar’ trade mark as follows:

   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.

10. In Registrar of Trade Marks v Woolworths, op. cit., French J said that the assessment of the likelihood of deception or confusion was to be informed by the following considerations:

    (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."

11. The difference between ‘deceive’ and ‘cause confusion’ was considered in New Zealand in PioneerHi-Bred Corn Co v Hy-Line Chicks Pty Ltd (1979) RPC 410 at 423 where it was stated:

    ‘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.

    26.   Concerning deceptive similarity, in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; 35 ALJR 355; 1B IPR 523 Windeyer J. said at [13]:

    …the comparison 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 [holder’s trade mark]

12. Applying the aforesaid principles I find that the opposed trade mark resembles each one of the opponent’s trade marks to the extent that it is likely to cause confusion.  The registrations are all for trade marks, whether they include a device component or not, which primarily feature the elements “MICRO” and either “GENICS” or “genics”.  In my estimation, ordinary people would regard and pronounce all of those trade marks as the single expression, “MICROGENICS”.

13. The International Bureau, which handled the base registration, classified the opposed trade mark as a “composite” trade mark and it is shown again, below:

14. It has two alphabetical components, sharing a common device element.  The Romanized iteration consists of the terms “Micro” and “GEN”.  I consider that ordinary persons of reasonable intelligence would regard and pronounce the Romanized part of the trade mark as “MICROGEN”.  My reasoning rests partly on the fact that the device element would, within the semantic context of the whole, be perceived as a partial double helix DNA strand and not as the letters “XX”.  That understanding of the trademark would cause an ordinary person to likely regard the term “GEN” as a shortening of the word “genetics” and so be more likely to pronounce the separated elements as the single term “MICROGEN” and give no linguistic role to the device element.

1. The registration carries an endorsement that the holder advised the International Bureau that the translation of the Russian language word appearing in the trade mark is MICROGEN.  The endorsement suggests that a native Russian speaker would perceive the trade mark in exactly the same way, but from a Cyrillic alphabetic perspective.

2. I am satisfied that the term “MICROGEN” is deceptively similar to the term “MICROGENICS” and, for reasons given, to the opponent’s trade marks.  The only question is whether the composite trade mark of the IRDA is also deceptively similar to those trade marks – that is – taking account of the whole trade mark and allowing for the Russian language component of the trade mark, would the Australian public without knowledge of the Cyrillic alphabet find the trade marks deceptively similar?

3. In my view, those people without knowledge of the Cyrillic alphabet would be unlikely to regard the Cyrillic component as a separate identifying and distinguishing part of the trade mark and would identify and pronounce the trade mark in English as “MICROGEN” according to the logic already outlined.

4. To the extent those same people thought about the trade mark in any greater depth they might see the common device element and reason that the Cyrillic letters amounted to the same thing (as it does, according to the endorsement).

5. For these reasons I find that the opposed trade mark is deceptively similar to the trade marks of the registrations and so the opponent has established its ground under section 44 of the Act.

   Decision

6. The opponent has established a ground listed in the notice of opposition and so, in accordance with the Regulations, I refuse to extend protection of the opposed trade mark to Australia in respect of all of the goods listed in the IRDA.

   Costs

7. Having been successful in this matter the opponent is entitled to its costs at the official scale.

   Debrett Lyons

   Hearing Officer

   Trade Marks Hearings

   23 April 2014