Schering Aktiengesellschaft v Bracco International B.V

[1999] ATMO 89

TRADE MARKS ACT 1995

DECISION OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:      Trade mark application 720369 – SONOVUE – in the name of Bracco International B.V. and opposition to the registration of 720369 in the name of Schering Aktiengesellschaft.

Trade mark application number 720369 was filed by Bracco International B.V. (Bracco International) of Amsterdam, The Netherlands, on 23 October 1996. The trade mark is the word sonovue and the goods nominated in the application are contrast media for in-vivo imaging.  These goods are in International class 5. The application was examined and in the Official Journal of Trade Marks of 5 June 1997, the Registrar advertised acceptance of 720369 for registration.

In accordance with the provisions of Part 5 of the Trade Marks Act 1995 Schering Aktiengesellschaft, a German corporation of Berlin, filed a notice opposing the registration of 720369.  The grounds of opposition are broadly stated and comprehend grounds specified under sections 41, 42, 43, 44, 58, 59 and 60 of the Act.  

In accordance with the provisions of Part 5 of the Trade Marks Regulations, the two parties filed evidence to support their respective positions, and the opposition then came to be heard.   I conducted the hearing, in Canberra, on 23 June 1999.  Ms Annette Freeman of Spruson & Ferguson, patent and trade mark attorneys of Sydney, represented the opponent, Schering Aktiengesellschaft.  Mr Cameron Harvey of the Melbourne office of Deacons Graham & James, a firm of lawyers, represented the applicant, Bracco International.

The evidence

The opponent, Schering Aktiengesellschaft, relies on two declarations.  The first is from its attorney, Annette Freeman, and a principal of Spruson & Ferguson. The second is a joint declaration from Joachim Trautschold and Rainer Breitfeld, procurists with Schering Aktiengesellschaft.

The applicant, Bracco International, relies on one joint declaration from Pietro Mascherpa and Tom Herbschelb. Both are directors of Bracco International.

The opposition case

Schering Aktiengesellschaft did not press any ground of opposition other than section 44 and, in support, Ms Freeman pointed to the state of the Register as evidenced by her declaration.  This records that a search was carried out for trade marks with the prefix sono in the pharmaceutical class, class 5. Eight marks were located. Two of them, sonor and sonotrast, never achieved registration.  Two others, sonogel and sonoprep, are marks which were previously registered but are now removed. The remaining four active trade marks, three of which are registered trade marks and one the presently pending application, are tabled below.

number	Trade mark	Owner	Class 5 goods	status
589780	Bracco International	Products in this class for ultrasonic imaging, including contrast agents therefor	registered
709183	SONOVIST	Schering Aktiengesellschaft	Pharmaceutical preparations namely contrast media	registered
718322	SONOGEN	Sonus Pharmaceuticals, Inc	Pharmaceuticals for use in ultrasonic scanning	registered
720369	SONOVUE	Bracco International	Contrast media for in-vivo imaging	pending

Schering Aktiengesellschaft’s claim is that the application trade mark sonovue is deceptively similar to its registered trade mark sonovist.

Background

There is not a lot of background relative to the issues.  

Schering Aktiengesellschaft holds registration rights in 709183, sonovist, from 22 May 1996 and the goods nominated in that registration, pharmaceutical preparations namely contrast media, include contrast media for ultrasound scanning. 

Enhanced imaging in ultrasound scanning is a relatively new field and it has brought about a relatively new market for a new family of pharmaceutical contrast agents. It was as recently as 1991 that Schering Aktiengesellschaft launched its first untrasound contrast media products, in Europe.  It intended to follow with a 1998 release in Australia but in February of that year it was still continuing with clinical trials. Its sonovist product, in particular, is designed as an investigational ultrasound contrast agent.   Physicians in ultrasound imaging procedures use agents of this kind.  The procedures are carried out in hospitals or clinics. The agents are administered by peripheral intravenous injection. A number of specialist professionals such as sonographers, radiologists, cardiologists and oncologists, are involved in the use and with the purchase of these agents. Schering Aktiengesellschaft produces its sonovist ultrasound contrast agent as a freeze dried powder, which must be reconstituted before use.   Products of this kind, say Mr Trautschold and Mr Breitfeld, are generally bought on the instruction of a specialist professional (such as a sonographer, a radiologist, a cardiologist or an on[c]ologist) but, they contend, decisions on orders and purchases are regularly and increasingly undertaken by administrative personnel.

Mr Mascherpa and Mr Herbschelb do not add significantly to the history and give little information about what led to Bracco International’s filing for the registration of the word sonovue. They confirm, however, that Bracco International intends to use the sonovue trade mark on an investigational medical contrast agent for utrasound imaging.  They say that this product will only be used by qualified medical professionals in the particular field of ultrasound imaging and in a ‘highly discreet environment’. The agent’s function is to enhance the quality and clarity of ultrasound images and it too, is administered by injection.  Messrs Mascherpa and Herbschelb agree with Messrs Trautschold and Breitfeld that ultrasound imaging equipment will only be purchased by a select target group, namely sonographers, radiologists, cardiologists, oncologists and certain hospital administration staff.

The law

Section 44, so far as it is relevant to this opposition, reads:

44. (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.

The Act defines deceptive similarity under section 10.

10.     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.

The case law Ms Freeman has referred me to commences with the oft cited Southern Cross case[1]:

[1]  Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

The onus must be discharged by the applicant in respect of all goods coming within the specification in the application … of the goods or class of goods in respect of which registration is desired, and not only in respect of those goods on which he is proposing to use the mark immediately.  And the onus is not discharged by proof only that a particular method of user will not give rise to confusion.  The test is, what can the applicant do if he obtains registration?

And again at 608:

Registration should be refused if it appears that there is a real risk that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source.

She also refers me to the following citations:

per the High Court in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd[2].

[2] (1937) 58 CLR 641 at 658

… the marks ought not, of course to be compared side-by-side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers; the effect of spoken description must be considered … the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass afford the standard. 

per Clark v Sharp[3]: 

[3] (1898) 15 RPC 141 at 146

One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.

and Edward’s Appn [4]

No one, in my opinion, can be a reader of the daily newspapers without being aware of how simply, even with experienced persons such as doctors and nurses, a disastrous mistake can be made.

Mr Harvey also referred to most of these precedents. In support of his contention that, in comparing sonovue and sonovist I should take account of the Register (and the numerous sono- trade marks that have been entered), he refers me to Konckier v Amco Wrangler[5].

It is necessary at this point, however, for me to cite a number of the relevant and very recent directives of the Federal Court which bear directly on the way the Registrar is to apply the provisions of section 44.  I refer to Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), the Metro case, which is currently available through the Internet site of and scaleplus.law.gov.au .  It has not yet been published in either the AIPC or IPR.  

The first point is a directive, under paragraph 24 of Justice French’s majority judgment, regarding the effect of section 33 on the findings under section 44.   His Honour says:

The mandatory language of s33 gives effect to the intention, expressed in the Second Reading Speech, that there is to be a presumption of registrability when the application is examined by the Registrar of Trade Marks.  This is a shift from the position under the previous law whereby the onus was on the applicant to establish registrability.

Further into the judgement, his Honour explains the effect of this shift on the application of old law precedent.  In reference to the Southern Cross case, he says:

[4] (1946) 63 RPC 18 at 23

[5] (1987) AIPC 90-385

46  …  [T]he [Registrar’s] submission implied that a mere possibility of confusion would be enough to justify rejection of registration.  … [T]hat, in effect, leaves the onus with the applicant.  The question for the Registrar and the Court is not whether consumers might be confused (in the sense of wondering about common origin or connection) but whether there is a reasonable likelihood that they will be confused.

Further in paragraph 47, Justice French comments generally on the policy of the Trade Marks Act 1995.   He says:

47… The policy of the 1995 Act can be said to some extent to have shifted the balance of the objectives of the trade mark law more towards the identification and protection of commercial products and services than the protection of consumers, although the latter remains an objective.  In respect of deceptive trade marks the interest of consumers are also protected by comprehensive Federal and State laws relating to conduct which is misleading or deceptive or likely to mislead or deceive.  The trade mark law concept of confusion in the sense of mere wonderment as to common origin or connection has little part to play in the consumer protection statutes.  That, no doubt, is because ‘confusion’ used in that sense, does not of itself lead to error or affect choices at the point of sale.

In respect of the Australian Woollen Mills case Justice French says that this test is a very practical one which, he confirms, has long been accepted as the proper approach for determining the likelihood of deception or confusion.  The question ultimately, he says,

49 …is not susceptible of much discussion:  “It depends on a combination of visual impressions and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.”

In respect of the long standing criteria established by Justice Kitto in the Southern Cross case, Justice French, in paragraph 50, re-casts them as follows

(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.

(iii)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.

(iv)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.

(v)The rights of the parties are to be determined as at the date of the application.

(vi)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.

Consideration of the section 44 ground of opposition

I now turn to consider the trade mark upon which the Schering Aktiengesellschaft section 44 ground depends.  The citation is the trade mark sonovist, registered in respect of pharmaceutical preparations namely contrast media.  The opposition claim is that, in terms of section 44, this mark constitutes grounds on which to reject the application trade mark sonovue which is filed in respect of contrast media for in-vivo imaging.

• The priority date for sonovist is 22 May 1996 and this is clearly earlier than 23 October 1996, the priority date accorded to sonovue.  

• The application goods and the goods of the citation were acknowledged by both Ms Freeman and Mr Harvey, as overlapping.

• There is no submission that the trade marks sonovue and sonovist are substantially identical.  And on the clear evidence that the words of those two marks are different in construction, appearance, meaning and phonetics, I hold that they are not substantially identical.

Accordingly, the section 44 issue comes down to an assessment of whether or not, in the contexts of the nominated goods, the trade mark sonovue is deceptively similar to the trade mark sonovist. 

Comparison of trade marks

The particulars of the two trade marks are as follows.

• Both words commence with the same prefix sono.

• The suffix of the application trade mark is -vue, and is phonetically equivalent to the word view. The suffix of the cited trade mark is -vist, which is much like and invokes the word vista.

• The words sonovue and sonovist are similar in length, they are quite similar phonetically, and they share  some elements of meaning.

• SONO, however is a prefix, which is regularly used to indicate sound.  Websters Third New International Dictionary defines sono- as a combining form [L sonus sound]: for sound, and gives as examples, sonic and sonogram.

• There are, moreover, a number of words connected with ultrasound technology, which commence with this prefix.  They include sonographer (a word used in the Schering Aktiengesellschaft evidence), sonogram, and sonography.

• Furthermore, the state of the Register, illustrated in Ms Freeman’s declaration, and pointed to by Mr Harvey, indicates that the sono- prefix has been used in a number of trade marks dealing with contrast media for medical purposes. As well as Schering Aktiengesellschaft’s sonovist, there are sonorx and sonogen; marks that failed to achieve registration include sonotrast; and removed marks include sonoprep.  

Onus - and the Southern Cross test

Ms Freeman argues that, as per Southern Cross[6], an onus lies with the applicant to show that its trade mark is fit for registration.  This, however, does not hold good under the Trade Marks Act 1995.  On the contrary, if the opposition is to succeed, then in line with Justice French’s ruling in the Metro case (supra), the opponent must demonstrate that there is a real tangible danger of deception or confusion occurring before a section 44 ground is made out.  Evidence that there is nothing more than a possibility of deception or confusion is not sufficient. 

[6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594 -5

Notional use

Ms Freeman argues that in applying the test for section 44 it is not appropriate to restrict considerations of deception and confusion to those goods on which the applicant is currently using its trade mark sonovue. I should look, instead, at what the applicant may do should it succeed in obtaining registration. 

Justice French has no argument with this proposition.  He agrees at point (vi) of paragraph 50 of his judgment[7].  The question is not limited to whether a particular use will give rise to deception or confusion; it is based on what can be done if registration is obtained.

[7] Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), the Metro case

In the present instance, however, the nominated goods, contrast media for in-vivo imaging, constitute a narrow range.  Ms Freeman points out that they include media for use in other procedures, in particular x-rays. sonovue applied to any contrast media for in-vivo imaging would, however, in my view, continue to convey a reference to ultrasound.  On balance, I think that the range of goods claimed by Bracco International is so specific that a consideration of notional use on goods other than ultrasound contrast agents, has little if any practical significance.

Comparison of the trade marks in the surrounding circumstances

Ms Freeman has referred me to the High Court judgment in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd[8] (supra). Justice French comments on the High Court’s judgment as to the likelihood of deception or confusion[9] and says that the test there applied is a very practical one and …has long been accepted as the proper approach. His Honour then goes on to recall the elements of the test — the assessment of the effect of the marks upon the minds of potential customers, the impression and recollection created, the effect of the spoken words and the behaviour of buyers and dealers.   However, as I have mentioned, he concludes[10]:

[8] (1937) 58 CLR 641

[9] Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), the Metro case -  paragraph 49

[10] ibid

The question ultimately is not susceptible of much discussion: "It depends on a combination of visual impressions and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs."[11]

[11] (1937) 58 CLR 641 at 659

Within the context of in vivo imaging agents the two marks sonovue and sonovist, in my estimation, clearly convey the impression that they are agents for use in ultra sound procedures (such as sonography) and that their purpose is to enhance the image produced under these procedures. This impression is first wrought by the prefix sono-.  As mentioned, sono- prefixes a number of technical terms connected with ultrasound practices.  It also prefixes a number of trade marks registered in respect of similar imaging agents. Their suffixes -vist and -vue, each of which implies an enhancement of image quality, further the impression that sonovue and sonovist are agents for ultra sound imaging.  The visual and aural impression, as it relates to imaging agents, is therefore strongly descriptive. Conversely, the impression of trade mark significance diminishes.  Thus, I find, on the face of it, that the impressions created by sonovue and sonovist favour descriptive reference rather than source of origin.

The general principle where trade marks coincide in material that is descriptive, or common to the trade, is that greater weight should be given to the part of the marks that is not held in common[12].  Thus, in the company of a number of other trade marks which ended with the suffix -sol  (lysol, phenol, hypol, mucol, nujol) the High Court, in comparing mulsol and monsol, gave greater weight to the prefixes mul and mon and decided that ordinary customers were not likely to be confused. The majority in that case commented that one is entitled to take into consideration the circumstance that the names of a number of these medicines and pharmaceutical preparations end with the suffix ‘sol’.

[12] Mond Staffordshire Refinery Company Limited v Ellis Harlem and Another [1929] 41 CLR 475 at 477

Here, the pharmaceutical preparations will only be used by qualified professionals who, as indicated by the evidence, will recognise the descriptive function of the prefix sono-. Further, I think it is clear that medical professionals such as sonographers, radiologists, cardiologists and oncologists, will appreciate the descriptive relevance of the suffixes ‑vist and –vue. In respect of diagnostic agents I would expect specialists of this kind to perceive the trade mark sonovue and sonovist as descriptive references to two image enhancing agents. Given the function of the component parts, however, and in particular the occurrence and relevance of the sono- prefix in technical terminology, and in a clutch of other trade marks, I do not think that these persons (or, for that matter, hospital or clinic administrative staff) will assume that the commonly held features of these trade marks indicate a common trade origin.

One further aspect of deception and confusion, however, is the question of imperfect recollection. Where the ordinary conduct of affairs includes uninformed and casual purchases and use without unwarranted caution, the imperfect recollection of words as similar as sonovue and sonovist could result in confusion and deception. But in the use, purchasing and ordering of diagnostic ultrasound agents, and in the delivery of ultrasound procedures, care and professional expertise will be the norm. I have been shown that, in the ordinary course of business, specialists in this area use and distinguish words as close as sonogram, sonographer and sonography. Moreover trade marks such as sonorx, sonovist and sonogen are already registered for sonography media.  And I note, as per Mr Harvey’s submission, that there is a string of similar trade marks, including sonoline, sonvet, sonoace and sonopsy, which are registered for ultrasonic equipment. Where, as in ultra sound diagnostics, the descriptive prefix sono- is in such frequent use, and where medical personnel and stores administrators are familiar with that use, and administer and order medication with professional care, I do not think that imperfect recollection of the words sonovue and sonovist is likely to cause confusion or deception. In these circumstances, I think it is probable that the words will be perceived and understood as two different words.  I am therefore not satisfied that the ordinary person (who, here, is a specialist dealing with specialist goods) is likely to mistake one mark for the other through imperfect recollection.

Risk of danger – discretion

Ms Freeman at the hearing wished me to take note of a recent press report dealing with an apparent mishandling of diagnostic preparations in an x-ray procedure.  This material, however, was not made a part of the evidence served on the applicant.  Nor was there any application for permission to serve further evidence.  Under the circumstances I will, therefore, not take it into any account.

I do take note, however, of Ms Freeman’s reference to Edward’s Application[13] and her submissions that, where medical products are concerned, there is strong public interest in precluding even small risks if there is a possibility of dangerous consequences.  

[13] Edward’s Appn (1946) 63 RPC 19 – the jardex - jardox case

Edward’s Application however, was decided not on the basis of a real likelihood of risk, but on an exercise of the Registrar’s discretion.  That discretion does not exist under the Trade Marks Act 1995.  The provisions of section 44 as analysed and explained by Justice French[14] require a positive finding that a risk of deception or confusion is likely. For the reasons set down above I have not come to a positive finding that, in the context of ultra sound diagnostic procedures, there is a real likelihood of confusion between the two trade marks sonovue and sonovist.

[14] Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), the METRO case - 46 and 47

Decision

I find that the application trade mark sonovue and the opponent’s citation sonovist both have a strong descriptive reference to the goods. Beyond that descriptive reference I find that the difference between the two words is plainly evident both in the visual and phonetic rendition of the marks. In the context of the nominated goods, I am not satisfied that these words will be perceived by practitioners or purchasing officers as indicating a common trade origin.  Nor do I expect, in the circumstances of clinics and hospitals, that imperfect recollection will operate to cause deception or confusion.

I find therefore that there is no ground for rejecting this trade mark in terms of section 44, and that the opposition ground is not made out.

This was the only ground supported.  In accordance with the provisions of section 55, I therefore dismiss the opposition.

Costs

Both sides sought costs, and indeed Mr Harvey claimed that, even if Bracco International was not successful, it was entitled to be compensated for the fact that it had prepared submissions for the string of grounds set out in the notice of opposition. It was not until the hearing commenced that Schering Aktiengesellschaft gave notice that it abandoned all but one ground. 

I have sympathy with this view.  In the event, however, Bracco International emerges as the successful party and I accordingly award it all of its costs as per the listing under Schedule 9. On application, the costs will be taxed, allowed and certified by an officer appointed by the Registrar for that purpose.

Helen R. Hardie

Deputy Registrar

31 August 1999