Sanofi-Aventis v Eremad Pty Ltd

[2009] ATMO 97

TRADE MARKS ACT 1995

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

Re:Opposition by SANOFI-AVENTIS to registration of trade mark application 1077034 (5) - OXALATIN - filed in the name of EREMAD PTY LTD.

Delegate:	Heath Wilson
Representation:	Opponent: Ben Fitzpatrick of Counsel instructed by Shelston IP, Patent & Trade Mark Attorneys Applicant: Christian Dimitriadis of Counsel instructed by Blake Dawson.
Decision:	2009 ATMO 97 Section 52 opposition – Grounds under sections 41 and 43 – Inherently adapted to distinguish – TM similarity to INN – “confusingly similar” – connotation within a trade mark – s43 established and trade mark to proceed with a condition of registration – Costs awarded against opponent.

Background

1. On 23 September 2005,  Eremad Pty Ltd (“the applicant”) applied to register the following trade mark:

   Trade mark application:        1126209
   Trade mark:  OXALATIN

   Goods Specification:             Class: 5 Pharmaceutical preparations and substances

2. The trade mark was advertised in the Australian Official Journal of Trade Marks on 2 February 2006 as accepted for possible registration. On 22 March 2006, Sanofi-Aventis (“the opponent”) filed a notice of opposition (“the notice”) to this trade mark application under section 52 of the Trade Marks Act 1995 (“the Act”).

   Evidence

3. The parties filed and served evidence as set out below:

   Evidence in Support

   ·    Statutory Declaration of Sophie Bodet dated 22 February 2007 (Annexures SB-1 to SB-13)

   Evidence in Answer

   ·    Statutory Declaration of Gary Waters dated 7 April 2008 (Annexures A to E)

   ·    Statutory Declaration of Melissa Louise Preston dated 1 April 2008 (Annexures A to E)

   Evidence in Reply

   ·    Statutory Declaration of Rebekah Gay dated 16 September 2008 (Annexures RFG-1 to 7)

   Applicant’s Further Evidence

   ·    Statutory Declaration of Gary Waters dated 22 January 2009 (Annexures “A to B”)

   ·    Statutory Declaration of Rachel Kay dated 227 January 2009 (Annexures “A to I”)

4. The relevant undisputed facts in this case are that OXALIPLATIN is the International Non-Proprietary Name (INN)[1] of a pharmaceutical drug used for the treatment of colorectal cancer. It is marketed and sold by various companies including the opponent and applicant. The opponent uses the trade mark ELOXATIN in relation to OXALIPLATIN and the applicant currently uses OXALATIN in relation to this drug.[2]

   [1] Sophie Bodet declaration: annexure SB-3.

   [2] Gary Waters declaration, paragraph 6. Annexure C

   Grounds of Opposition

5. The notice cites grounds of opposition under sections 41, 42(b), 43, 44, 58, 59, 60, 61, 62(a) and 62(b) of the Act. At the hearing, the opponent only pressed grounds relating to sections 41 and 43. I will address those grounds in detail in the following reasons and note, for the sake of completeness, that the remaining grounds nominated in the notice have not been established on the evidence or submissions before me.

6. For an opposition to succeed, the opponent bears the onus of establishing at least one of the grounds cited in the notice on the balance of probabilities (Pfizer Products Inc v Karam[3]; Chocolaterie Guylian N.V. v Registrar of Trade Marks.[4])

   [3] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26]

   [4] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) per Sundberg J at [26]

7. I heard this matter on 9 September 2009 in Sydney as a delegate of the Registrar of Trade Marks. Ben Fitzpatrick of Counsel appeared on behalf of the opponent, and Christian Dimitriadis of Counsel appeared on the applicant’s behalf.   

   Reasons

   Section 41: Trade mark not distinguishing applicant’s goods or services

   (1)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1:For applicant and predecessor in title see section 6.

   Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

   (2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

   Note:For goods of a person and services of a person see section 6.

   (3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a)the Registrar is to consider whether, because of the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

   (c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

   Note 1:For goods of a person and services of a person see section 6.

   Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

   (6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

   (a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

   (b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b) the time of production of goods or of the rendering of services.

   Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

   Inherently adapted to distinguish

8. The main issue relied upon by the opponent is whether the trade mark OXALATIN is capable of distinguishing “Pharmaceutical preparations and substances” from the goods or services of other persons who require use of the INN “Oxaliplatin” in order to identify their goods.  In F. H. Faulding & Son v Imperial Chemical Industries of Australia and New Zealand[5] Kitto J said:

   The question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

   [5] F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.[5] (1965) 112 CLR 537

9. However, in its line of reasoning, the opponent relies on the original comments made by Justice Kitto in Clark Equipment Co v Registrar of Trade Marks [6] (my emphasis):

   The applicant’s chance of success in this respect [i.e. in distinguishing his goods by means of the mark, apart from the effects of registration] must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without improper motive, to desire to use the same trade mark, or some mark nearly resembling it, upon or in connection with their own goods

   [6] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 [at 514], referring to Lord Parker’s comments in Registrar of Trade Marks  v W & G du Cros Ltd [1913] AC 624 [at 634-635]:

10. The words “some mark nearly resembling” have been interpreted in some decisions to mean a trade mark which is of “close similarity” or is “confusingly similar’ to a particular INN.[7] Whether or not a trade mark which is “confusingly similar” to an INN is the same test as one which is “deceptively similar” as defined under section 10 of the Act, is a contentious issue.

    [7] See Glaxo Group Ltd v Pathstream Ltd (1987) 9 IPR 95.

11. While the Trade Marks Office Manual of Practice & Procedure provides some guidance, the manual consists of administrative guidelines only and lacks the force of legal precedent and legislation. With this in mind, the current office practice in relation to section 41 grounds and INNs is set out in Part 22.24 of the manual:

    Grounds for rejection under section 41 exist where a trade mark to be used in relation to pharmaceutical preparations and substances, veterinary substances or pesticides is substantially identical to a notified INN.

12. Hearing Officer Thompson in Sanofi-Aventis v Alphapharm Pty Ltd[8] was of the opinion that only considering whether the mark was substantially identical to the INN was perhaps appropriate for the examination stage. However he considered that in the opposition forum, (as the onus is on the opponent) a test of “close similarity” or “confusingly similar” was also applicable, with reference to the above comments of Lord Parker. While I agree with this approach, I am not convinced that this necessarily equates to the test for “deceptive similarity”, as argued by the opponent in this matter.

    [8] Sanofi-Aventis v Alphapharm Pty Ltd (2008) 78 IPR 379 [at 20-21]

13. In support of an argument that “deceptive similarity” (in addition to “substantial identity”) should be considered in this matter under section 41, Mr. Fitzpatrick focused on the following reasoning of Justice Stone in Kenman Kandy[9]:

    …That question must be answered bearing in mind that infringement would include using as a trade mark in relation to confectionery, not only the bug shape but also any “sign that is substantially identical with, or deceptively similar to” the bug shape; s 120 of the 1995 Act.

    And in Guylian, Justice Sundberg commented[10]:

    Putting the tail to one side, I agree that there will be ways to depict a seahorse other than that chosen by Guylian. However, the ultimate question I must consider is whether there is a likelihood that other traders, acting with proper motives, will think of the shape and wish to use the same shape or one substantially identical or deceptively similar.

    [9] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; (2002) 122 FCR 494 at [161] per Stone J

    [10] Supra at [77]

14. It is worth noting that the two main cases relied upon by the opponent (i.e. Kenman Kandy and Guylian) as authority for considering “deceptive similarity” when dealing with section 41 involve an analysis of the inherent adaptation of shape trade marks. I note that in Philmac Pty Ltd v Registrar of Trade Marks[11] Mansfield J stated that:

    …there are no special rules which apply to colour marks compared to other features of goods which come within the definition of "sign". Nevertheless, the application of the test in Clark Equipment to the context of colour marks itself raises difficulties peculiar to the application presently before the Court.

    [11] Philmac Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 452 [at 50] per Mansfield J

15. Mansfield J was referring to the oft-quoted test in Clark Equipment[12], formulated in relation to more familiar word and device trade marks, but which he needed to apply in the context of colour as a trade mark. However, it is likely that the application of the Clark Equipment test in relation to shape marks (such as those in Kenman Kandy and Guylian) would also raise particular difficulties that would not be evident for word marks. The differing application of this principle was discussed in Kenman Kandy where French J commented on Wilcox J’s initial judgment [at 14]:

    His Honour identified a major difference between words and shapes. Possibly concocted words are almost infinite in number. So a trader who used an undescriptive concocted word would take nothing away from traders.

    [12] Supra at [514]

16. Justice Lindgren in Kenman Kandy noted [at 97] that:

    …Clark Equipment concerned words. Of their nature, words are separate from goods and are necessarily used “in relation to” them, whether as descriptors or as trade marks.

    I do not think this is at odds with Justice Stone’s analysis of the application of the Clark Equipment test that [at 146]   

    …was referring to word trade marks because that was the issue before him, but there can be no doubt that his Honour’s test would equally apply to shapes or other signs forming “part of the common heritage.

    While the relevant test is still the same, the application of that test would need to take into account the nature of the mark, especially in relation to shape trade marks. Accordingly, I find that the “deceptively similar” considerations in Kenman Kandy and Guylian are not necessarily appropriate when determining the inherent registrability of word trade marks.

17. Mr. Fitzpatrick also argued that the reasoning followed by the hearing officers in Glaxo Group[13], and Aventis Pharma[14] regarding the requirement that an objection under section 41(5) would result from a trade mark which was determined to be “confusingly similar” to an INN) have now been superseded as a result of the above comments in the Kenman Kandy and Guylian cases. For the reasons given above, I am not satisfied that this conclusion can be drawn from the comments in those cases. 

    [13] Glaxo Group Ltd v Pathstream Ltd (1987) 9 IPR 95 supra

    [14] Aventis Pharma SA v Alphapharm Pty Ltd (2005) 65 IPR 634

18. In addition, regarding Justice Kitto’s statements of the test in both Clark Equipment and F.H. Faulding,[15] the hearing officer in Aventis Pharma[16] said:  

    I note that, in the later restatement, Kitto J felt no need to refer to marks “nearly resembling”. I therefore think that it puts too much stress on the words “some mark nearly resembling it” to say that this necessarily includes all cases of deceptive similarity.

    [15] See paragraphs 7 and 8 above.

    [16] Supra [at 11]

19. The comments made by various justices in the cases concerned with ‘shape’ trade marks are specific to their particular facts. Accordingly, I find that there is little to indicate that the section 41 test and the expression “some mark nearly resembling it” were intended to include “deceptively similar” comparisons akin to those applied under section 44 of the Act.

    International Non-Proprietary Names

20. Mr. Fitzpatrick referred to a document from the World Intellectual Property Organization (“WIPO”) dated July 2008 stating the aims of the INN program for trade mark offices around the world. Documents of this kind have been given some weight in the previous decisions made by this office.[17]

    [17] Glaxo Group Ltd v Pathstream Ltd, supra

21. The WIPO document highlights the issue of whether offices should refuse to register as trade marks those signs that are identical or similar to prior INNs. The document aims to discourage the use of names derived from INNs, and in the Fifth Report of the WHO Expert Committee on the Use of Essential Drugs (November 1991) it is stated:

    The procedure for selecting INNs allows manufacturers to contest names that are either identical or similar to their licensed trade-marks. In contrast, trade-mark applications are disallowed, in accordance with the present procedure, only when they are identical to an INN. A case for increased protection of INNs is now apparent as a result of competitive promotion of products no longer protected by patents.

22. WIPO recognises that many companies apply for a trade mark derived from an INN, which is what the applicant has done here. However, under section 55 of the Act, the establishment of a ground of opposition is to be determined by legislation and precedent, not policy. In the absence of a decision from the Federal Court on INNs, the other Trade Mark Office decisions to which I have referred have determined that it is not appropriate to interpret the test under section 41 in a broader fashion.

    Rights conferred by Registration

23. Mr. Fitzpatrick further submitted that the rights conferred by registration (under section 120) cover infringement by both substantially identical and deceptively similar trade marks, and it follows that a determination under section 41 should also take this into account.

24. Section 120 of the Act deals with the circumstances when a registered trade mark is infringed, namely when a “person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark…”. Justice Stone’s statement in Kenman Kandy [at 161] refers to the infringement of a registered trade mark under section 120, and I note that the wording refers to using the shape “as a trade mark.” I am not convinced by the opponent’s submissions that if the section 41 test were “limited to a consideration of substantially identical (or ‘confusingly similar’ marks) then this would be inconsistent with the rights conferred by registration which cover not only substantially identical marks, but also deceptively similar marks.” The consideration of potentially conflicting substantially identical or deceptively similar trade marks is effectively addressed under sections 44 and 60 of the Act prior to registration. It does not follow that matters under section 41 must be directly determined by the same analysis.

25. I am of the view that the similarities of the trade mark OXALATIN to the INN “Oxaliplatin” are not coincidence. However, in this matter, I find it unhelpful to determine whether or not the above trade mark is deceptively similar to an INN in the course of considering whether a trade mark is inherently adapted to distinguish. In any event, a decision on section 41 of the Act must not lose sight of the ultimate issue. As Justice Kitto stated in Clark Equipment (supra) [at 514] (My emphasis):

    …That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others …

    Relevant Test

1. On a side-by-side comparison, the differences between OXALATIN and OXALIPLATIN are quite obvious. The comments of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[18] are of assistance in determining this issue: 

   [the trade marks] 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

   [18] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at [414-415] per Windeyer J

2. The letters “IPL” in the centre of the INN (which are absent from the trade mark) create visual differences between the words. The pronunciation of the trade mark is also substantially changed which results in a phonetic variance. I find that the identity of the trade mark has been substantially affected by these differences, and as a consequence, the applicant’s trade mark and the INN cannot be substantially identical.   

3. While there are a number of examples provided by the applicant (in the statutory declaration of Melissa Preston, Annexures “A-E”) of trade marks on the Register containing elements of the INN such as “OXA” and “LATIN”, these marks do not have the combination of the prefix and suffix in the applicant’s trade mark, which are also present in the INN.

4. The expression “confusingly similar” does not have a definition in the Act, but the opponent submits that it must lie somewhere between substantial identity and deceptive similarity. Accepting this submission, I find that the decision in Aventis Pharma (supra) is analogous to the current matter. The trade mark in that case was ROXIMYCIN, and the relevant INN was ROXITHROMYCIN. The Hearing Officer in that case decided that they were neither substantially identical nor “confusingly similar.”

5. The Hearing Officer went on to find (under section 43 of the Act) that the extent of the resemblance between the trade mark and INN results in a connotation that would create confusion unless the goods covered by the application were restricted to accord with the INN in question. In other words, the decision in Aventis could support a proposition that a consideration of deceptive similarity could manifest in the conclusion that the trade mark was capable of distinguishing but, because of the resemblance in question, the application none the less required restriction to ensure that usage did not cause deception or confusion.

6. This is dealt with specifically in terms of s 43, and I will address that issue shortly. For the moment, it will suffice to say that while the resemblance between the applied-for trade mark and the INN is obvious, they are neither substantially identical nor confusingly similar. As a result, the opponent has not satisfied me that the extent of the resemblance is such as to render the applied-for trade mark not capable of distinguishing.

7. If any doubt is retained as to whether the trade mark OXALATIN is inherently adapted to distinguish the relevant goods, it should be noted that the opponent bears the onus of establishing the ground of opposition, and the ground on which it relies is a ground of rejection under Part 4 of the Act. Thus, the applicant has the initial benefit of a presumption of registrability under section 33 of the Act.[19]

   [19] Chocolaterie Guylian N.V. v Registrar of Trade Marks, supra at [20-21].

8. In summary, I am not satisfied that a trader actuated by proper motives would think of the word OXALATIN and want to use it in connection with similar goods in a manner which would infringe a registered mark granted in respect of it. On the balance of probabilities, I find that the ground of opposition under section 41 has not been established.

   Section 43: Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

9. In order for an opponent to establish the ground of opposition under section 43, there must be an inherent connotation within the trade mark likely to deceive or cause confusion, as addressed in Big Country Developments Pty Ltd.[20] A connotation inherent in the trade mark cannot be determined by external considerations, such as reputation. In this instance, any connotation contained within the applicant’s trade mark would be dependent on how similar it is to the INN “Oxaliplatin.”

   [20] Big Country Developments Pty Ltd v TGI Friday’s Inc [2000] FCA 720; 48 IPR 513 at 521.

10. Under the section 41 ground of opposition, I compared the elements of applicant’s trade mark to the INN. However, the relevant issues under section 43 differ, and include whether there is a connotation in the applicant’s trade mark, and whether that connotation is likely to deceive or cause confusion if used on the goods in the specification. Even so, to the extent that Mr. Fitzpatrick is right and deceptive similarity between an INN and the applicant’s trade mark is enlivened as an issue, it overlaps into section 43. This overlap arises because I am unable to determine if the applicant’s trade mark has a connotation that would establish that s43 ground without also considering if the extent of the resemblance between the trade mark and the relevant INN would deceive or cause confusion.

11. The pharmaceutical Oxaliplatin is encompassed within the applicant’s goods specification of “pharmaceutical preparations and substances”. The applicant’s trade mark is currently being used for the drug Oxaliplatin and it is unlikely to be used on anything other than Oxaliplatin in the future. These goods are clearly specialised, and the effect of the trade mark on the particular consumer should be considered. Gary Waters, the managing director of the applicant states that “Oxaliplatin powder would usually only be administered in hospitals under strict supervision by an oncologist (doctor)”[21] and “doctors and health professionals would be responsible for prescribing and administering Oxaliplatin products.”[22] Accordingly, the differences between the applicant’s trade mark and the INN would be evident to the person purchasing or administering the drug, particularly as they are head pharmacists or doctors.[23] This factor has an effect on whether a false connotation within the trade mark would be likely to deceive or cause confusion in the marketplace.   Despite these factors, a notional use of the trade mark on the claimed goods would result in confusion, if the goods did not contain this pharmaceutical.  

    [21] Waters declaration: Paragraph 6.

    [22] Waters declaration: Paragraph 14.

    [23] Waters declaration: Paragraph 15.

12. The applicant in this matter agreed that if this ground were established, it is willing to have a condition of registration restricting the use of the trade mark to the specific pharmaceutical goods in the same fashion as that deemed appropriate by the Hearing Officer in Aventis Pharma [at 32]. I am satisfied that the trade mark OXALATIN contains an inherent connotation (by virtue of its likeness to the INN “Oxaliplatin”) that would be likely to deceive or cause confusion in relation to goods which do not contain the drug. I therefore find that a condition of registration restricting the use of trade mark to these goods is appropriate to avoid any confusion.

13. On the balance of probabilities, I find that the ground of opposition under section 43 has been established (to a limited extent), and that a suitable restriction on its use (as addressed below) should be applied prior to registration.

    Decision

14. Section 55: Decision

    (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.

    Note:  For limitations see section 6.

15. The trade mark application may proceed to registration one month from the date of this decision, subject to the following condition: 

    It is a condition of registration that the trade mark will be used only on goods containing the pharmaceutical OXALIPLATIN.

    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.

    Costs

16. Costs ordinarily follow the event in these matters and as the opponent has only had token success under section 43, while failing to establish its primary s 41 argument, the applicant is entitled to an award of costs. As a result, I award costs against the opponent in accordance with the Official Scale contained within Schedule 8 of the Trade Marks Regulations 1995.

    Heath Wilson
    Hearing Officer
    Trade Marks Hearings
    30 November 2009