Schering Aktiengesellschaft v the Upjohn Company

[1994] ATMO 39

TRADE MARKS ACT 1955

DECISION OF THE REGISTRAR OF TRADE MARKS

Re: s49 opposition by The Upjohn Company to the registration of trade mark application number A558936(5), NUVELLE, a mark filed in the name of Schering Aktiengesellschaft.

On 3 July 1991, Schering Aktiengesellschaft applied under trade mark application number A558936, to register the word NUVELLE in class 5 for, amongst other things, pharmaceutical products; namely preparations for the treatment of climacteric diseases. In the course of examination the application was restricted to these goods,  and on 12 November 1992 acceptance of the mark was advertised in the Official Journal of Trade Marks.

The Upjohn Company, under the provisions of section 49 of the Trade Marks Act, opposed the registration. Evidence was duly served by both sides, and the matter came to a hearing before me in Sydney on 3 March 1994. The opponent, The Upjohn Company, was represented by Mr Gerard Skelly of the Sydney firm of Spruson & Ferguson. The applicant, Schering Aktiengesellschaft, was represented by Mr Trevor Stevens also of Sydney and from the firm of Davies Collison Cave.

The Notice of Opposition cites a number of grounds but, in commencing his submissions, Mr Skelly said he relies only on section 33 and the ground that the applicant's trade mark, NUVELLE,  is deceptively similar to The Upjohn Company's trade mark PROVELLE (A553727) which is registered in class 5 for pharmaceutical preparations.  I therefore do not think it is necessary to quote the grounds in full.

The evidence in support of the opposition is a declaration made by Ms Patricia Lorraine Kennedy a solicitor with Spruson & Ferguson. The applicant's evidence in answer is a declaration by Ms Gillian Hourigan, a trade mark searcher with Davies Collison Cave.  In reply, the opponent filed  a second declaration by Ms  Kennedy.

The Upjohn Company's trade mark, PROVELLE, is registered as of 12 April 1991.  It is common ground that the pharmaceutical preparations and  goods of the subject applicant, as mentioned,  pharmaceutical products; namely preparations for the treatment of climacteric diseases, are the same goods.  The question for me to settle in deciding whether NUVELLE contravenes the terms of section 33,  is therefore simply the question of whether or not NUVELLE and PROVELLE, used in relation to pharmaceutical preparations, are deceptively similar trade marks.

Mr Skelly argued that the marks were deceptively similar.  He first drew attention to the well known directives handed down by Lord Parker (then Parker J.) in An Application by the Pianotist Company Ltd. for the Registration of a Trade Mark (1906) 23 RPC 774 at 777,

... you must take the two words.  You must judge of them, both by their look and by their sound.  You must consider the goods to which they are to be applied.  You must consider the nature and kind of customer who would be likely to buy those goods.  In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks  is used in a normal way as a trade mark for the goods of the respective owners of the marks.

Mr Skelly's arguments dwelt on the two elements nu- and -velle  which form the word NUVELLE.  Nu-,  he pointed out, was a prefix which occurs very commonly on the Register of Trade Marks.  He drew my attention to marks such as NU-LAX, NU-CAP, NU-SKIN and NU-CLENZ all of which were discovered by Ms Hourigan and listed among some 140 other similar marks  in her declaration.  In these marks Mr Skelly said, in respect both of sound and meaning, the suffix nu- functioned in the same way as the word new.  He said  it was common practice to use the spelling nu- and that this trend existed well beyond the pharmaceutical trade.  He mentioned that he had recently been using a car wash product, and it was named NU-FINISH.  Overall he contended, the prefix nu- is in such common use it should simply be considered an alternative version of the word new.  This view, he said, was supported both by the evidence from the Register and by general knowledge.

By contrast  -velle, the "word stem" as he described it,  was not, said Mr Skelly,  in the least common.  Ms Kennedy declares to having located only three instances of words with this ending in class 5.  These marks are the application mark NUVELLE and the opponent's mark  PROVELLE,  and a later application for the word VIVELLE which, she declares, if accepted, will also be opposed by The Upjohn Company.  Ms Hourigan made similar enquiries on behalf of the applicant. She cast her net a little wider, however, and included words which end with the syllable -vel.  Her search disclosed a further eight marks including KEBROVEL, DETROVEL, HYPNOVEL and ST IVEL.    Mr Skelly took issue with Ms Hourigan's assumption that across these words and NUVELLE, PROVELLE and VIVELLE,   -velle and -vel are phonetic equivalents.     He submitted that both  in pronunciation and appearance -velle and ‑vel are dissimilar and in support put the proposition that -velle carries a French association which ensures a long soft pronunciation (as in caravel).  -Vel, on the other hand, had no French association and, he thought, could well be pronounced as per  novel.  He therefore wished me to dismiss as irrelevant Ms Hourigan's disclosure of the eight further pharmaceutical marks ending in -vel. 

The mainstay of Mr Skelly's argument, however, was the submission that it was common practice for  pharmaceutical manufacturers to adopt a mark and apply modifications to indicate variations in the product.  He said that the essential element of the mark NUVELLE was the stem -velle, and that purchasers confronted by the marks NUVELLE  and PROVELLE would expect the goods labelled NUVELLE to be a version of the PROVELLE product and, because of the prefix nu-, a more recent version.  In stating this argument he pointed out that the pharmaceuticals of both marks extend to non-prescription drugs, and submitted that I must consider situations where ordinary shoppers will be choosing the products unaided from pharmacy shelves.  He said that in this circumstance the rule enunciated in TRIPCASTROID (London Lubricants (1920) Limited's Application to Register a Trade Mark, (1925) 42 RPC 264 at 279)

[that] the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and ... the first syllable of a word is, as a rule, far the most important for the purpose of distinction,  

was in this instance, displaced.  Shoppers, he said,  being familiar with the common currency of nu- and pro- as descriptive prefixes, would recognise the suffix -velle as the essential part of the two trade marks and, as a result, be confused as to the origin of goods through assuming a common manufacturer.  

Mr Skelly made some further submissions regarding the often claimed notoriously bad handwriting of  medical practitioners, and said that this in itself could lead to confusion between written requests for NUVELLE and PROVELLE.  He also mentioned the doctrine of imperfect recollection. 

Lastly he turned to the directives of Dunn's Trade Mark (7 RPC 311 at 315 - 316) and reminded me that

[The applicant] is in petitorio, and must justify the registration of his trade mark by showing affirmatively that it is not calculated to deceive.

Should I find that the application is in dubio, then the application ought not to be allowed.  

Mr Stevens commenced his submissions with an alternative analysis of the effect of the syllables nu- and pro-.  He pointed out that their appearance, pronunciation and  meanings are quite different. In his view nu- was likely to be pronounced as per nuclear and, moreover, that it was likely to convey that meaning.  Taking pronunciation and meaning together, he said, there was no chance of people of ordinary intelligence mistaking nu for pro or vice versa.  TRIPCASTROID (supra) he said was good law, which had been applied consistently in a number of decisions involving pharmaceuticals, running from JARDEX - JARDOX (Edward's Application (1946) 63 RPC 19) through to MOBILAN - MOVELAT  (Galen Limited's application, IPD 7108, 1984). The principles of TRIPCASTROID, said Mr Stevens,  provided the first fundamental test in deciding whether or not NUVELLE and PROVELLE are deceptively similar, and where the first syllables were so remarkably different,  I should be led to the conclusion that there was no deceptive similarity.

Mr Stevens then turned to a consideration of what he termed the second fundamental question for me to address, and that was the effect of the common occurrence of the second syllable -velle.  He directed my attention to the Hourigan declaration and to Ms Hourigan's disclosure of 11 registered or pending Class 5 trade marks, three of which terminated with the syllable -velle  and eight with the syllable -vel.   Mr Stevens submitted, contrary to Mr Skelly's argument,  that these endings had to be seen as phonetic equivalents and then put the proposition that, taken altogether, the Hourigan evidence showed that -velle, as an ending, is common to the trade.  As outlined in Shanahan, D.R, Australian Law of Trade Marks and Passing Off  2nd ed.  p178

Where an element which is common to marks under comparison is descriptive or in common use in the trade, the presence must be to some extent discounted in considering whether the marks are deceptively similar (Holmes -v- Finn Blinds (1987) AIPC 90-454, and many others).

Mr Stevens submitted that in line with this well established approach, the significance of the common occurrence of -velle in the two marks here under consideration, should be discounted by virtue of the common use disclosed in the Hourigan declaration.  

Combining the conclusions of these two tests, that is first, the significant difference in the first syllable of the words NUVELLE and PROVELLE,  and second, the evidence that the suffix -velle is in common use, Mr Stevens submitted there was no case for deceptive similarity.

In relation to the surrounding circumstances, he disagreed with Mr Skelly's assessment that written prescriptions are likely to create an additional source of deception and confusion.  He said that in as much as the first syllable assisted in separating the spoken word, so too would they assist in preventing confusion in the written forms.   Nu- and pro- he said were very unlikely to be written in a way which would lead to them looking alike.

Finally, turning to Mr Skelly's claim that  the descriptive functions of the syllables nu- and pro-, and the commonality of the suffix -velle,  would lead buyers to assume a common origin for goods marked NUVELLE and PROVELLE, Mr Stevens asserted that it was not at all clear that nu- would be seen as an equivalent for the word new. It was therefore, he said, not at all likely to occur to purchasers that a NUVELLE product was a new PROVELLE product.  He then pressed this point a little further with the comment that in his view, only NUVELLE (being close to nouvelle) conveyed a distinct French flavour and that idea in itself would engage the buyers' minds and preclude any association between it and the opponent's mark PROVELLE.

DISCUSSION
The first question for me to determine  is  the effect of the first syllables of the marks NUVELLE and PROVELLE.

As submitted by Mr Stevens, nu- and pro-  are manifestly different. It could not seriously be argued otherwise and Mr Skelly made no attempt to do so.  He said  that nu- was common to the trade, and in support pointed to the applicant's own evidence in answer (that is, the Hourigan declaration) and the 143 Class 5 marks listed therein which commence with the syllable nu-.  I am not persuaded by Mr Stevens' argument that nu- will be pronounced like and will mean nuclear.  Reassured by my own knowledge, moreover, I have no difficulty in agreeing with Mr Skelly that in these marks  nu-, in all likelihood, will be read and pronounced as new.  I also agree with him that this use of nu- as an alternative spelling for new- is a relatively common practice plainly occurring  both within and far beyond the bounds of the pharmaceuticals trade.  This follows a trend in commercial use of shortened and simplified words such as lite, lo, hi and  pac.  These are not listed in the Oxford dictionaries but nevertheless are to be found crowded onto pharmacy and supermarket shelves.   Pro- does have a presence in dictionaries where it is most relevantly listed as meaning for.

Turning next to the suffix or word stem -velle,  the discovery that there are only three active class 5 marks with this ending clearly supports Mr Skelly's contention that  the element has trade mark value.  This position, I think, is not seriously affected by the Hourigan evidence of another eight marks ending with -vel. Nothing conclusive has been established regarding  the pronunciations of -velle and ‑vel,  but I do agree with Mr Skelly that on a visual comparison the words ending with -velle  carry an idea of a French connection which is entirely absent from the ‑vel words.  In general terms, and in appearance, NUVELLE and PROVELLE have very little visual similarity with KEBROVEL, DETROVEL, HYPNOVEL and ST IVEL.  This difference is heightened by the French association imparted by -velle.  On balance, and in respect of trade usage, I find that -velle  and -vel are not equivalent endings,  and therefore I agree with Mr Skelly that the additional eight -vel marks do not reduce the distinctiveness quantum of the word element -velle.   In relation to pharmaceuticals I find that -velle has significant trade mark value. Having come to this conclusion it follows that I reject Mr Stevens proposal that I should discount -velle as being a common trade suffix with little or  no significance in the comparison of marks. 

I conclude in sum  that pro- and nu- are common descriptive prefixes;  and that in the trade marks NUVELLE  and PROVELLE,  -velle is the essential trade mark component.  Mr Skelly submits that on this conclusion the doctrine of contextual confusion becomes relevant and that it supports the opponent's position.  The concern with contextual confusion, as clarified in  John Fitton & Co. Ltd's Application, (1949) 66 RPC 110, is that where a significant element is held in common, marks containing that element will appear to be related. In considering the broad issue of deception and confusion the Assistant Comptroller finds (at p113) that no limitation should be imposed on

the nature of the confusion or deception ... whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or confusion or deception as to the trade provenance of the goods.  

Mr Stevens would have me find that as a result of the significant difference between nu- and pro-,  I should apply the TRIPCASTROID (supra) test and dismiss the opposition because it is principally on the basis of the first syllable that marks are distinguished. I do find that these prefixes are different, but  I agree with Mr Skelly that in relation to the marks NUVELLE and PROVELLE , the TRIPCASTROID test is not the final word.  The test for contextual deception is also appropriate.    The character of the deceptive similarity in this case, said Mr Skelly, is the prospect that purchasers will ascribe a common origin and assume that NUVELLE is a new or related version of the product PROVELLE.  I agree with Mr Skelly.  The   two words are very similar in structure. They are built on a distinctive element.  I think it is likely that buyers will assume a common origin. 

In addition to interpreting NUVELLE as a variation of the PROVELLE trade mark, there is also, to my mind,  a real prospect for imperfect recollection.   Certainly it is usual, as per TRIPCASTROID  (supra) for the first syllable to carry greatest weight in the comparison process.  But in addition to the considerations I have discussed above regarding the descriptive operation of the respective prefixes, I find on comparing the two words, that rather than being slurred, -velle  is more likely to emphasised. This prospect, added to the distinctive qualities which I have found to exist in that commonly held element, satisfies me that there is a real  risk of confusion through imperfect recollection.

For the sake of completeness I mention that I do not see any further confusion arising from handwriting.   Pro-  and nu-,  to my mind,  are not easily mistaken,  one for the other,  and in written format I think the directives of TRIPCASTROID are likely to operate in the applicant's favour.  This, however, is only one factor among many, and on balance does not save the application. 

DECISION
Taking into account the fact that goods comprehended by the two marks will generally be available to purchasers who have no special knowledge of pharmaceuticals,  and considering the strong similarities between NUVELLE and the opponent's mark PROVELLE,  I consider that the evidence and submissions put to me on behalf of The Upjohn Company, raise concerns of deception and confusion, first through buyers being confused as to the trade provenance of the goods, and second, through imperfect recollection. The definition of sub-section 6(3) of the Act, establishes that deception and confusion of this kind amounts to deceptive similarity. In consideration of the nature of the marks and the surrounding circumstances, per the directives of PIANOTIST (supra), I find then that the ability of NUVELLE  to satisfy the criteria of section 33 is substantially in doubt.   The applicant, in answer, has failed to demonstrate to my satisfaction that deception and confusion will not result should the trade mark NUVELLE be used in relation to pharmaceuticals. Thus, in line with the directives of Dunn's Trade Mark (supra),  the application to register this word should not be allowed.

I therefore refuse trade mark application number A558936.

Mr Skelly sought costs for the opponent and the opponent has been successful. There is no reason why the costs should not follow the cause. I accordingly award them to The Upjohn Company.

Helen R. Hardie
Assistant Registrar
17 May 1994