Sanofi-Synthelabo v Lohmann Animal Health, GmbH & Co. KB
[2003] ATMO 68
•3 November 2003
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Sanofi-Synthelabo to registration of trade mark application 900394(5) - AVIPRO - filed in the name of Lohmann Animal Health, GmbH & Co. KG.
Delegate: Mary Skivington Representation: Opponent: Andrew Lockhart, Partner, of Baldwin Shelston Waters, Patent and Trade Mark Attorneys
Applicant: Written submissions from Geoff Habel of Collison & Co, Patent and Trade Mark Attorneys.Decision: Section 52 opposition - section 44 ground established - registration refused. Costs awarded against the applicant. Background
On 12 October 2001, Lohmann Animal Health, GmbH & Co KG, ('the applicant'), filed trade mark application number 900394. This application seeks to extend the protection of an International Registration, granted under the Madrid Protocol, to Australia. The trade mark is, AVIPRO, in class 5, for goods described as,
Veterinary preparations, especially poultry vaccines.
The application claims a convention priority date of 19 July 2001, based on a German trade mark application. Acceptance of the application was advertised in the Official Journal of Trade Marks on 19 September 2002.
Sanofi-Synthelabo, ('the opponent'), filed notice of opposition on 19 December 2002, listing eleven grounds of opposition, under the Trade Marks Act 1995, ('the Act'). The opponent applied for and was granted an extension of time within which to file and serve evidence in support, however, on 2 May 2003, Baldwin Shelston Waters, Patent and Trade Mark Attorneys acting on behalf of the opponent, advised that the opponent did not intend to rely on evidence in support of its opposition.
On 4 August 2003, Collison & Co, Patent and Trade Mark Attorneys acting on behalf of the applicant advised that the applicant would not rely on evidence in answer to the opposition. The opponent requested a hearing on 26 August 2003. As a delegate of the Registrar of Trade Marks, I heard the matter in Canberra, on 3 October 2003. The opponent was represented by Andrew Lockhart, a Partner at Baldwin Shelston Waters. Geoff Habel of Collison & Co filed written submissions on behalf of the applicant.
Grounds of opposition
At the hearing Mr Lockhart said that the opponent would rely only on section 44 of the Act to establish its opposition. For the sake of completeness I now find that the remaining ten grounds of opposition have not been established. Mr Lockhart reported that the opponent is the owner of a registered trade mark, details of which are shown below.
Trade Mark No. Priority Date Trade Mark Goods 663592
20 December 1994
AVAPRO
Pharmaceutical products (class 5)
Submissions and the law
Section 44 of the Act provides that a trade mark application must be rejected if the trade mark is substantially identical with or deceptively similar to another trade mark which has an earlier priority date and which is in respect of similar goods or closely related services.
It is not in dispute that the opponent's registered trade mark has an earlier priority date than the subject application.
Section 10 of the Act states that a deceptively similar trade mark is one that so nearly resembles another trade mark that it is likely to deceive or cause confusion. The term substantially identical is not defined in the Act, but Gummow J, in Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) AIPC 91-049, observed that it required 'a total impression of similarity to emerge from a comparison between the two marks'.
Substantially Identical
Mr Lockhart submitted that the tests for determining substantial identity are described in Shell Co of Australia v Esso Standard Oil, (1963) 109 CLR 407, where 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
Mr Lockhart said that visually the marks are substantially identical as both marks consist of six letters beginning with the same two letters, AV, and ending with the same suffix, PRO, so that the only difference is in a single letter which, he said, is an immaterial variation. He argued that the fact that the registered trade mark is rendered in uppercase letters and the subject trade mark is not, is not significant. He said it is accepted law that trade marks represented in block capitals can be regarded as covering other script forms, as shown in Morny Ltd's Trade Marks, 68 RPC 55.
Mr Lockhart said that both trade marks have three syllables, AV-I-PRO and AV-A-PRO and both trade marks have the same phonetic pattern, as the relative lengths and strengths of the three syllables in each word are essentially the same.
In support of his arguments Mr Lockhart cited two cases, Kendall v Mulsyn Paint and Chemicals (1963) 109 CLR 300, where the trade marks in dispute were POLYKIN and POLYKEN, and Warner-Lambert Company v Harel, (1955) 32 IPR 189 where the trade marks were DERMOFILM and DERMAFILM. In both cases the respective trade marks were found to be substantially identical.
Mr Habel argued that that the two words AVIPRO and AVAPRO are quite dissimilar because of differences in the prefix of each word, that is AVI and AVA and because the suffix PRO is a descriptive word and is the abbreviation for the word 'professional'. He also submitted that phonetically there is a distinct pronunciation difference.
I find that I am in agreement with Mr Lockhart. There is very little to differentiate the two marks. The only differences are the substitution of the third letter 'A' in the opponent's AVAPRO with the third letter, 'I' in the applicant's AVIPRO. These letters occur in the middle of each word and there is nothing in particular about them that strikes the eye or would fix them in the memory. The difference between upper case and lower case lettering is a negligible difference and can be disregarded in a comparison of the trade marks. Regardless of whether or not the suffix, PRO, in the trade marks is derived from a descriptive word, it does not follow that in a comparison of the two trade marks it should be ignored. In this case the suffix is fifty percent of each of the trade marks and this, combined with the similarities in the prefixes, results in visually very similar trade marks.
In the ordinary course of business it is not usual for customers to clearly and carefully pronounce each syllable of a trade mark in an atmosphere devoid of other sounds while commanding the undivided attention of the assistant. In such a situation it might be possible to detect phonetic differences between AVAPRO and AVIPRO, even though the third letter in each word is not strongly stressed. However, this is by no means certain given that English in Australia is spoken by Australians from many different ethnic backgrounds so that inevitably there are variations in pronunciation. Phonetically, I find that these trade marks are so similar, that under the circumstances of the markets in which goods are bought and sold, any differences in the pronunciation of AVAPRO and AVIPRO would be undetectable.
I find that AVAPRO and AVIPRO are substantially identical. It therefore follows that they are also deceptively similar.
Similar Goods
I must now consider if the goods are similar. Section 14 of the Act provides a definition for similar goods and similar services and, so far as it is relevant to this decision, it reads:
For the purposes of this Act, goods are similar to 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
Mr Lockhart submitted that the opponent's registration covers pharmaceutical products which, he said, includes products for human and animal use. He referred to Merck & Co v Syntex Corp, 11 IPR 318, where the Chief Assistant Registrar noted that a pharmaceutical was defined under 'Drug, Pharm', in The Random House Dictionary of the English Language, as, 'A chemical substance administered to a person or animal to prevent or cure disease or otherwise enhance physical or mental welfare'. He said that the applicant's goods are 'veterinary preparations, especially poultry vaccines' and that the word 'especially' in this specification does not have a limiting effect. The specification encompasses any veterinary preparation including those that may be purchased over the counter. He also noted that the World Health Organisation's website contains the following reference, 'Vaccines are generally included in the legal definition of pharmaceutical products .....'. Thus, as pharmaceutical products include veterinary products, the goods specified in the opponent's registration cover those in the subject application.
Mr Habel submitted that although the goods of both parties are in class 5 they are directed at different markets. He submitted that it is the applicant's understanding that AVAPRO is a drug prescribed by doctors to treat high blood pressure in humans whereas AVIPRO is in respect of veterinary preparations, especially poultry vaccines. He said the goods are sold in different markets to different customers.
While it may be the case, and I must stress that I have no evidence of this, that the opponent uses AVAPRO only in respect of medications for the treatment of high blood pressure, its specification is not so limited. The opponent's registration covers pharmaceuticals without qualification of any kind. I must therefore assume that the opponent uses its trade mark on all goods covered by that description just as I must assume that the applicant intends to use AVIPRO in respect of all goods covered by the description 'veterinary preparations'.
The 13th Edition of Hawley's Condensed Chemical Dictionary defines the word pharmaceutical as follows:
Pharmaceutical. A broad term that includes not only all types of drugs and medicinal and curative products but also ancillary products such as tonics, dietary supplements, vitamins, deodorants, and the like.
As noted above, The Random House Dictionary of the English Language, defines a drug as, 'A chemical substance administered to a person or animal to prevent or cure disease or otherwise enhance physical or mental welfare'. This definition accords with the definition in the Macquarie Dictionary which reads, 'A chemical substance given with the intention of preventing or curing disease or otherwise enhancing the physical or mental welfare of humans or animals. Clearly veterinary preparations are a subset of the broader term pharmaceuticals and thus the applicant's goods are the same kind of goods as the opponent's.
As the applicant's trade mark is substantially identical with the opponent's trade mark which has an earlier priority date, and is intended for use in respect of the same goods, I find that the section 44 ground of opposition has been established.
Decision
The opponent has established the ground of opposition on which it relied so that the opposition as a whole has been successful. In accordance with the provisions of section 55 of the Act I refuse to register application number 900394.
Costs
The opponent has sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.
Mary Skivington
Hearing Officer
Trade Marks Hearings
3 November 2003
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