Sanofi-Aventis v Eremad Pty Ltd

[2011] ATMO 43

TRADE MARKS ACT 1995

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

Re:Oppositions by SANOFI-AVENTIS to registration of trade mark applications 1187840(5) - OXALITAN RTU - and 1187843(5) - OXALILATIN SOLN. - filed in the name of EREMAD PTY LTD.

Delegate:

Debrett Lyons

Representation:

Opponent: Rebekah Gay of Shelston IP, Patent & Trade Mark Attorneys
Applicant: Christian Dimitriadis of Counsel instructed by Blake Dawson, Solicitors

Decision:

2011 ATMO 43
s52 Opposition – s41 established in relation to 1187843; opposition unsuccessful against 1187840.

No award of costs made.

Background

1. On 18 July 2007, Eremad Pty Ltd (“the Applicant”) applied under the Trade Marks Act 1995 (“the Act”) to register two trade marks (“the Trade Marks”), current details of which appear below:

   Trade mark application:      1187840
   Trade mark:  OXALITAN RTU

   Goods Specification:            Class 5: Pharmaceutical preparations

   Trade mark application:      1187843
   Trade mark:  OXALILATIN SOLN.

   Goods Specification:            Class 5: Pharmaceutical preparations

2. The Trade Marks were examined, accepted and advertised in the Australian Official Journal of Trade Marks for possible registration. On 8 April 2009, Sanofi-Aventis (“the Opponent”) filed notices of opposition (“the Notices”) to registration of the Trade Marks under section 52 of the Act.

   Evidence

3. The parties filed and served one set of evidence common to the oppositions to registration of both Trade Marks as set out below:

   Evidence in Support

   ·statutory declaration of Rebekah Frances Gay dated 21 September 2009; and

   ·statutory declaration of Emmanuelle Ragon dated 29 October 2009.

   Evidence in Answer

   ·statutory declaration of Georgia Marshall dated 30 April 2010; and

   ·statutory declaration of Gary Waters dated 11 May 2010.

   Discussion and Reasons

4. Acting as a delegate of the Registrar of Trade Marks, I heard the parties in Sydney on 18 February, 2011.  Rebekah Gay, solicitor, appeared on behalf of the Opponent, and Christian Dimitriadis of Counsel appeared on the Applicant’s behalf.  Both sides made oral and written submissions. 

5. The Notices cite most grounds of opposition available to the Opponent under the Act but at the hearing the Opponent pressed only the following arguments:

   ·Section 41:  the Trade Marks are not capable of distinguishing the Applicant’s goods from the goods of other persons;

   ·Section 44:  OXALITAN RTU is deceptively similar to trade mark registration 702645 for ELOXATIN in class 5; and

   ·Section 62A:  (in relation to 1187843 only) the application was made in bad faith.

6. The Opponent bears the onus of establishing those grounds on the balance of probabilities[1].  I treat the remaining grounds listed in the Notices as having not been established.

   [1] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) per Sundberg J at [26].

7. The parties have met several times already for hearings in relation to other trade marks filed by the Applicant.  Some of the submissions made before me have been rehearsed or refined as a result of earlier decisions of the Registrar to which I will refer later.

8. Relevant to a greater or lesser extent to each of the grounds pressed by the Opponent is the uncontested fact that OXALIPLATIN is the International Non-Proprietary Name (“INN”) of a pharmaceutical drug used for the treatment of cancer.  It is marketed and sold by various companies including the Opponent and the Applicant.  The Opponent uses the registered trade mark ELOXATIN in relation to OXALIPLATIN and the Applicant intends to use the Trade Marks in relation to the drug.

   Section 41

9. I will first deal with the section 41 ground of opposition as it is maintained against both Trade Marks. 

10. Section 41 requires that a trade mark must possess the requisite capacity to distinguish in order to be registrable.  The section sets up a complex structure that has been explained elsewhere[2] but in a case like this where the Trade Marks have not been used section 41(3) requires me to undertake an inquiry as to the extent to which the Trade Marks are “inherently adapted” to distinguish the Applicant’s goods from the goods of other persons.  That inquiry, in turn, requires a consideration of whether other traders are likely, in the ordinary course of their business and without improper motive, to desire to use the same Trade Marks, or some mark nearly resembling them, upon or in connexion with their goods[3].

    [2] See, for example, Blount Inv v Registrar of Trade Marks (1998) 40 IPR 498.

    [3] Per Kitto J in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514.

11. The Opponent’s section 41 submission relies on the similarity between the Trade Marks and OXALIPLATIN (“the INN”).  The decision of Hearing Officer Williams in Sanofi-Aventis v Eremad 2010 ATMO 76 (18 August 2010) is the most recent case involving the parties here.  It provides a thoroughgoing analysis of the relationship between INNs and trade marks for the purposes of section 41.  Hearing Officer Williams said that

    …it is obvious that if a trade mark is either identical or substantially identical to an INN it is not capable of distinguishing. ... At a lesser level of resemblance there is a spectrum of possibilities … If, towards what might be called the top end of that spectrum of resemblance, a trade mark that is not substantially identical to an INN resembles the INN to such an extent that it can be mistaken for the INN or, imperfectly recollected, be the cause of confusion with respect to the INN, I think it would again follow from first principles that it is not capable of distinguishing the applicant’s goods from those of other traders, those who make legitimate use of the INN.  To this point, I have identified two categories of trade marks that are not capable of distinguishing.

12. The arguments before me are that (i) OXALILATIN SOLN. is substantially identical to OXALIPLATIN, and (ii) both Trade Marks – that is, OXALILATIN SOLN. and OXALITAN RTU – resemble OXALIPLATIN to such an extent that they can be mistaken for the INN or, imperfectly recollected, be the cause of confusion with respect to the INN.

13. As to the former submission, the compared terms differ by the addition of the letter “P” to the INN and the addition of the integer “SOLN.” in the trade mark.

14. The evidence confirmed the commonplace observation that “soln.” was an understood abbreviation of the word “solution”.  Within the context of the goods, it is descriptive of the pharmaceutical presented in liquid dilution.

15. The Opponent argued that SOLN. had no effect on the comparison of the signs and submitted that the “P” in the INN did not alter the fact that both signs were comprised of five syllables and were pronounced similarly, the result being that the trade mark and the INN were substantially identical when the traditional tests of comparison were applied.

16. The Opponent’s submissions are not without merit but in this case it is not necessary for me to made a decision on what I regard to be a finely balanced point of law since it is abundantly clear to me that OXALILATIN SOLN. resembles OXALIPLATIN to such an extent that the trade mark can be mistaken for the INN or, imperfectly recollected, be the cause of confusion with respect to the INN.

17. I find the ground of opposition under section 41 established in respect of application 1187843.

18. It remains for me to assess the Opponent’s submission that OXALITAN RTU also so resembles OXALIPLATIN that it might be mistaken for it.  Another way the same question has been put is to ask whether the trade mark and the INN are confusingly similar.

19. In this instance, the evidence of Ms. Ragon is that RTU is an acronym used in the pharmaceutical industry to indicate that a product is “ready to use”.  The weight I might place on that evidence and the related question of whether people, at large, or only people working in the pharmaceutical industry constitute the correct section of the public who may or may not recognize the letters RTU in that way need not detain me since it does not alter the conclusion I can reach based simply on the comparison of OXALITAN with OXALIPLATIN.

20. I do not consider those terms to be confusingly similar.  Whilst the signs share the prefix “OXALI”, that commonality is in my opinion less significant in overall impression than the marked difference created by the remaining elements, “TAN” and “PLATIN”.

21. I observe that the Opponent did not press any argument founded on the third category of trade marks identified by Hearing Officer Williams in Sanofi-Aventis v Eremad, namely the sort of trade marks that, on pharmaceuticals, we have come to appreciate as clearly derived from the INN, even though they would not be mistaken for an imperfectly recalled INN.  As I understand Hearing Officer Williams, provided that category 3 trade marks are applied to goods containing the INN, there will be no confusion and the trade mark, though clearly derived from the INN, will not be mistaken for it and there can be no other sort of confusion because the goods are, in fact, the INN.   Put another way, category 3 trade marks can cause confusion because of the extent of the resemblance to the INN but, if applied to the right goods, they are capable of distinguishing and do not cause confusion.

22. The Trade Marks have been applied for and accepted in respect of “Pharmaceutical preparations”, not restricted to those to which the INN relates.  The examiner of trade marks appears to have taken the view that no such restriction is needed, consistent with para 4.3 in Part 29 of the Trade Marks Office Manual of Practice & Procedure but in any case there is no submission from the Opponent and so I let the matter stand.  I find the section 41 ground of opposition to have not been established as against application 1187840.

    Section 44

23. The Opponent is the owner of trade mark registration 702645 for ELOXATIN in class 5, which has been registered since 16 February 1996.  The goods in respect of which the trade mark is registered are “Pharmaceutical products and preparations for the treatment of cancers” which are similar if not identical to the goods in respect of which registration is sought.  In terms of the requirements of section 44, it is necessary for the Opponent to show only that OXALITAN RTU and ELOXATIN are deceptively similar (since they are clearly not substantially identical).

24. I do not find them to be so.  Whilst recognising that a side-by-side comparison of the trade marks is not appropriate and that allowance should be made for imperfect recollection of the two marks, in my estimation the differences still outweigh the similarities in their overall impressions.  Leaving to one side for the moment the impression left by the letter “RTU”, I recognise that both are composed of four syllables, that both have eight letters, of which seven are common, and that both contain the integers “OXA” but the terms OXALITAN and ELOXATIN are pronounced very differently indeed, though perhaps for some individuals there might be a tendency to “unjumble” the letters and approximate the terms visually.  Even if the letters “RTU” are descriptive, and thus of little weight in the comparison, I am led to conclude that the trade mark OXALITAN RTU is not deceptively similar to the Opponent’s registered mark, ELOXATIN.

25. The Opponent has not established its ground of opposition under section 44.

    Decision

26. Section 55 of the Act states that:

    (1) Unless the proceedings are discontinued or dismissed, 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.

27. For the reasons given, I refuse to register application 1187843.

28. Application 1187840 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 discontinued or registration is ordered by the Court.

    Costs

29. Given the outcome, no award of costs is appropriate. The Opponent is entitled to costs in respect of application 1187843 but, had the hearings been separate, the Applicant has succeeded in respect of application 1187843 and would be entitled to its costs. 

Debrett Lyons
Hearing Officer
Trade Marks Hearings
27 May 2011