Schulke & Mayr GmbH v Ecolab USA Inc

[2016] ATMO 8

TRADE MARKS ACT 1995

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

Re:Opposition by Schulke & Mayr GmbH to registration of trade mark application 1496926 (3, 5) - MICROGUARD - in the name of Ecolab USA Inc.

Delegate:	Jock McDonagh
Representation:	Opponent: Sean McManus of Shelston IP Lawyers Applicant: Catherine Sedgley and Tracey Berger of Spruson and Ferguson patent and trade mark attorneys
Decision:	2016 ATMO 8 Section 52 opposition to registration – ss 44 and 60 grounds pressed – neither ground of opposition established – application to proceed to registration

Background

1. This is an opposition by Schulke & Mayr GmbH (“the Opponent”) pursuant to section 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Ecolab USA Inc. (“the Applicant”):

Application Number:             1496926

Trade Mark:  MICROGUARD                (“the Opposed Mark”)

Priority Date:    15 June 2012  (“the Priority Date”)

Good and services:                 Class 3: Skin care products, namely, hand soaps, hand washes, moisturizing lotions

Class 5: Skin care products, namely, antibacterial hand soaps, antibacterial skin cleansers and waterless antibacterial hand rinses; surgical scrubs

(“the Claimed Goods”)

1. The Opposed Mark was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 24 October 2013. Johnson & Johnson Inc filed Notice of Intention to Oppose the registration of the Opposed Mark on 23 December 2013, followed by a Statement of Grounds and Particulars (‘the Statement’) on 23 January 2014.  Thereafter the Applicant filed Notice of Intention to Defend on 11 February 2014. The parties filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. On 21 September 2015, the Opponent’s legal representatives advised that Johnson & Johnson Inc had assigned its rights in its MICROSHIELD trade marks and business to the Opponent.

3. I heard the matter in Sydney on 13 October 2015 as a delegate of the Registrar of Trade Marks. Sean McManus of Shelston IP Lawyers represented the Opponent. The Applicant was represented by Catherine Sedgley and Tracey Berger of Spruson and Ferguson patent and trade mark attorneys.

Grounds of Opposition

1. The Opponent nominated two grounds of opposition in the Statement: under sections 44 and 60 of the Act. At the hearing, the Opponent pressed both grounds. The onus is upon the Opponent to establish at least one of these grounds on the ‘balance of probabilities’.[1]

   [1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 (4 November 2015), following Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39], Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, (2009) 82 IPR 13 at [22] – [27] and Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

2. The time at which the grounds of opposition must be established is the date of filing of the application[2].

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

Evidence

1. The evidence consists of the following declarations:

Declarant	Position	Date	Exhibits
Evidence in Support
Carey Button (‘Button 1’)	General Manager Advanced Sterilisation Products, Johnson & Johnson Medical Pty Ltd	19.05.14	1 to 7 (4 & 7 Confidential)
Evidence in Answer
Stephen Graham (‘Graham’)	Healthcare Director of Ecolab Australia	23.10.14	SG-1 to SG-5
Catherine Marie Sedgley (‘Sedgley’)	Associate of Applicant’s attorneys	24.10.14	CMS-1 and CMS‑2
Evidence in Reply
Carey Button (‘Button 2’)	As above	19.01.15	Annexes A and B
Tina Thi Thuy Cheng (‘Cheng’)	Employee of Shelston IP	16.01.15	Annexure A

1. Button 1 provides evidence of the Opponent’s predecessor in title’s use of THE registered trade mark MICROSHIELD in Classes 3 and 5, covering a range of antisepsis products including hand washes, hand gels, skin care cleansers, moisturizing lotions and topical antiseptics. It also provides evidence of the Opponent’s recognition as a market leader in such goods.

2. Button 2 exhibits a number of template questionnaires in the form of declarations that had been sent to a number of persons involved in purchasing the Opponent’s MICROSHIELD products in the hospital markets. Most identified MICROSHIELD as the most widely used antiseptic hand wash in their particular facility.

3. Button 2 also refers to exhibited advertising undertaken and advertising expenditure for the MICROSHIELD branded products. Button 2 comments that the declarant is unaware of competing products bearing the prefix MICRO.

4. Button 1 and Button 2 provide details as to the target market of the Opponent’s goods. The goods are sold by sales representatives to hospitals and other healthcare facilities, including day surgeries, GP clinics, dental practices, aged care facilities, and veterinary practices. The evidence also shows sales to the non-hospital market by distributors and online.

5. Cheng exhibited Confidential Exhibit 4 to Button 1 (which had been omitted during the filing of Evidence in Support), detailing extensive sales of the Opponent’s products.

6. Graham attests to the adoption of the Opposed Mark in 2011 and its use in Australia in respect of the Claimed Goods since July 2013. Graham attests to extensive promotion of the Opposed Mark by various means, and attests to not being aware of any instances of confusion between the Opposed Mark and goods bearing the MICROSHIELD mark.

7. Sedgley attests to the commonality of the prefix MICRO on the Australian Trade Marks Office Register for goods in classes 3 and 5.

Discussion

1. As mentioned, the Opponent relied on sections 44 and 60 of the Act as the grounds of opposition.

Section 44 – Identical etc. trade marks

1. Section 44 of the Act states:

(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.

Note 1:       For deceptively similarsee section 10.

Note 2:       For similar goodssee subsection 14(1).

Note 3:       For priority datesee section 12.

Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

             (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)  it is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)  a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:       For deceptively similarsee section 10.

Note 2:       For similar servicessee subsection 14(2).

Note 3:       For priority datesee section 12.

Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

             (3)  If the Registrar in either case is satisfied:

   (a)  that there has been honest concurrent use of the 2 trade marks; or

   (b)  that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:          For limitationssee section 6.

             (4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)  beginning before the priority date for the registration of the other trade mark in respect of:

   (i)  the similar goods or closely related services; or

   (ii)  the similar services or closely related goods; and

   (b)  ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:       An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:       For predecessor in titlesee section 6.

Note 3:       For priority datesee section 12.

1. Thus to found its ground under section 44 the Opponent relevantly has to establish to my satisfaction the existence of at least one trade mark registration or application for registration of a trade mark that is owned by a person other than the Applicant and which:

   ·        has   a priority date earlier than that of the Opposed Mark; and

   ·covers the same or similar goods/services or closely related services/goods; and

   ·is a trade mark substantially identical or deceptively similar to the Opposed Mark.

2. The registrations relied upon by the Opponent are as follows:

Trade Mark No. (Priority Date)	Trade Mark	Goods
487747 (25.05.88)	MICROSHIELD	Class 5: Products for use as antiseptic skin cleansers and antiseptic solutions for patients and hospital sites
596060 (15.02.93)	MICROSHIELD	Class 3: Cleaning preparations for the hands and body; soaps and cleansers; skin care creams and lotions
596061 (15.02.93)	MICROSHIELD	Class 5: Sanitary preparations for medical purposes; disinfectants; sterilizing preparations; bactericidal preparations

1. The above registrations have earlier priority dates, and there is no issue that the goods are not similar.  I will therefore now consider the similarity of the Opposed Mark. The Opponent does not assert that substantial identity is in issue, with which I concur.

2. The term deceptively similar is defined in section 10 of the Act as follows:

   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.

3. Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at paragraph 13 per Windeyer J:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two  marks  side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the  marks  clearly before him ... It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, 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 by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.

4. I am to estimate the effect of the trade marks on the minds of potential customers – in other words, the assessment is to take place in the context of the marketplace for the goods.  This contextual comparison was stressed in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380, where Parker J said: 

   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.

5. The standard which is applied to the assessment of whether the trade marks are deceptively similar was stated by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 45 IPR 411 at paragraph 50:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated 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.

   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.

   (iii) 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.

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

   (v) 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.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

6. Both parties’ attorneys stated that the respective word marks consisted of the prefix MICRO followed by a word that was an ordinary English word in its own right. Both parties submitted that the word MICRO meant small or very small, although the Opponent’s attorney also suggested that MICRO could allude to microbial, which could refer to anti-bacterial characteristics of each party’s goods. The Opponent, however, expressly rejected any descriptive aspect of the prefix.

7. The Opponent submitted that the MICRO prefix was a substantial, important and distinctive part of its trade mark and that the remaining suffixes, SHIELD and GUARD were synonyms. Thus an ordinary consumer would view products under the Opposed Mark as coming from the Opponent.

8. On the other hand, the Applicant argued that MICRO is a common English prefix that traders are likely to need to use and no single trader can claim a monopoly. Thus it should be disregarded in the comparison of marks and the differences in the respective suffixes render the competing marks quite distinguishable.

9. Having regard to the Opponent’s evidence in Buttons 1 and 2, I consider that the relevant market will be discerning, given that the purpose of antibacterial hand soaps, antibacterial skin cleansers, and waterless antibacterial hand rinses is to prevent the spread of infectious diseases. I consider that, at the least, the average consumer of the Claimed Goods is to be regarded as reasonably well-informed and reasonably observant.

10. Both marks appear to be compounds of MICRO, indicating small (often microscopic) or relatively small size. However, in the context of the goods covered by the marks, I consider that MICRO is not indicating that the GUARD or SHIELD part of each compound is small; but rather is referring to what the shield or guard is shielding or guarding against and possibly alluding to the microbes or bacteria from which the Claimed Goods provide protection.

11. Therefore, I consider that the antibacterial/antimicrobial characteristic of the Claimed Goods suggests a descriptive element to the prefix, which means that the visual and aural assessment of the marks will be more determinative in assessing overall similarity of the marks

12. I consider that MICROGUARD and MICROSHIELD are visually and aurally distinct, and that they will easily fix in the mind and will be readily recalled as such despite an element of conceptual similarity: Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536.

13. I am not satisfied that this ground of opposition has been established.

Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

1. Section 60 of the Act provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note:For priority date see section 12.

1. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion. Such a finding has not been found in this matter; however, that is not necessarily fatal to the section 60 ground.

2. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (2000) 51 IPR 102 by Kenny J at [81] – [82]:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

3. Further, at [86], Kenny J said:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

4. The Opponent has provided evidence of extensive sales, advertising undertaken and advertising expenditure, along with questionnaires from the Opponent’s customers who attest to the reputation of MICROSHIELD branded goods and most – but not all - answering that they would believe that goods bearing the Opposed Mark were a product of the Opponent.

5. I have examined the reputation evidence in detail and note that the vast majority of the exhibited product examples show not only MICROSHIELD, but also the Opponent’s predecessor in title’s trade mark JOHNSON & JOHNSON MEDICAL. Also, a number of the products also bore a subordinate identification as ‘ANGEL’.

6. In the exhibited questionnaires, likewise the (then) manufacturer Johnson & Johnson, along, with MICROSHIELD ANGEL, are referenced by the respondents.

7. It is difficult to attribute the reputation claimed to just the MICROSHIELD mark. Much of the reputation might also be that of the Opponent, or its predecessor in title.

8. Button 2 states that the Opponent’s products are primarily sold to the health-related market by sales representatives and by distributors to the non-hospital market. It seems to me that the relevant purchasers of the Claimed Goods would recognise that a sales representative or distributor that did not identify with the Opponent was unlikely to be selling the Opponent’s goods.

9. I do not consider that there is a real and tangible danger that the use of the Opposed Mark would be likely to cause confusion in light of such reputation as existed in the MICROSHIELD trade mark as at the Priority Date. This ground of opposition has not been established.

Decision

1. Section 55(1) of the Act provides:

   Unless subsection (3) applies to the proceedings, 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.

1. I find that the Opponent has not established either of its grounds of opposition. Trade mark application 1496926 may then 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 decided or discontinued.

Costs

1. Both parties submitted that costs should follow the event. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent in accordance with Schedule 8 of the Regulations.

Jock McDonagh
Hearings Officer
Trade Marks Hearings
1 February 2016